`
`Paper No.
`Filed: September 27, 2013
`
`
`Filed on behalf of: VirnetX Inc.
`By:
`Joseph E. Palys
`
`Naveen Modi
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
`Telephone: 571-203-2700
`Facsimile: 202-408-4400
`E-mail: joseph.palys@finnegan.com
`
` naveen.modi@finnegan.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
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`
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`
`
`
`
`
`
`
`NEW BAY CAPITAL, LLC
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2013-00375
`Patent 6,502,135
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 6,502,135
`
`
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`

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`Case No. IPR2013-00375
`Patent 6,502,135
`
`
`Table of Contents
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review ......................................................................................... 4
`
`A.
`
`The Petition Fails to Comply with 37 C.F.R. § 42.104(b)(4) ............... 5
`
`1.
`
`2.
`
`New Bay Does Not Apply Its Proposed Constructions .............. 6
`
`The Proposed Grounds Rely Heavily on Expert
`Testimony Rather Than the Cited References ............................ 9
`
`B.
`
`The Board Should Not Institute Based on the Petition’s
`Redundant Grounds .............................................................................12
`
`1.
`
`2.
`
`3.
`
`Grounds 1 and 5, Grounds 2 and 6, and Grounds 3 and 7
`Are Horizontally Redundant .....................................................15
`
`Grounds 4 and 8 Are Vertically Redundant..............................15
`
`Grounds 9-12 Are Vertically Redundant to Grounds 1-8 .........16
`
`III. The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected .........................................................................................................17
`
`A. Overview of the ’135 Patent ................................................................18
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`“Virtual Private Network (VPN)” (Claim 1) ......................................20
`
`“Domain Name” (Claims 1 and 3) ......................................................25
`
`“Domain Name Service” (Construe as Part of “Domain Name
`Service (DNS) Request”) ....................................................................27
`
`“Domain Name Service (DNS) Request” (Claims 1 and 3) ...............29
`
`“DNS Server” (Claim 8) .....................................................................30
`
`G.
`
`“DNS Proxy Server” (Claim 8) ...........................................................30
`
`H.
`
`“Secure [Target] Web Site” (Claims 1, 3, and 8) ................................32
`
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`Case No. IPR2013-00375
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`I.
`
`J.
`
`“Web Site” (Construe as Part of “Secure [Target] Web Site”) ...........35
`
`“Target Computer” (Claims 1 and 7) ..................................................36
`
`K.
`
`“Determining” (Claims 1 and 3) .........................................................37
`
`L.
`
`“Client Computer” (Claims 1, 3, and 7) ..............................................38
`
`M.
`
`“Transparently Creating a Virtual Private Network (VPN)”
`(Claim 1) ..............................................................................................41
`
`N.
`
`“Automatically Initiating the VPN” (Claim 1) ...................................42
`
`O.
`
`“Passes Through the Request to a DNS Server” (Claim 8) ................43
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`P.
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`“Gatekeeper Computer” (Claim 7) ......................................................44
`
`Q.
`
`“Allocates VPN Resources” (Claim 7) ...............................................45
`
`IV.
`
`If Trial Is Instituted, VirnetX Requests an 18-Month Schedule ...................46
`
`V.
`
`Conclusion .....................................................................................................47
`
`
`
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`ii
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`

`Table of Authorities
`
`Case No. IPR2013-00375
`
`Page(s)
`
`
`FEDERAL CASES
`
`Baldwin Graphic Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008) .......................................................................... 26
`
`Electro Sci. Indus., Inc. v. Dynamic Details, Inc.
`307 F.3d 1343 (Fed. Cir. 2002) .......................................................................... 42
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001 (Jan. 9, 2013) Paper No. 15 ................................................ 18, 24
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 24
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) ............................................................................ 17
`
`LaRose Indus., LLC v. Capriola Corp.,
`IPR2013-00120 (July 22, 2013) Paper No. 20 ................................................... 13
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003 (Oct. 25, 2012) Paper No. 7 ................................... 5, 12, 13, 16
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093 (Apr. 29, 2013) Paper No. 28 ............................................. 18, 24
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .............................................. 17, 28, 38
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co.,
`182 F.3d 1298 (Fed. Cir. 1999) .......................................................................... 42
`
`FEDERAL STATUTES
`
`35 U.S.C. § 311 .......................................................................................................... 3
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 316(a)(1) ............................................................................................... 46
`
`
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`Case No. IPR2013-00375
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`FEDERAL REGULATIONS
`
`37 C.F.R. § 42.100(b) .............................................................................................. 17
`
`37 C.F.R. § 42.100(c) ............................................................................................... 46
`
`37 C.F.R. § 42.104(b)(4) ....................................................................................... 5, 8
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`OTHER AUTHORITIES
`
`M.P.E.P. § 2111.01(I) .............................................................................................. 24
`
`
`
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`iv
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`Case No. IPR2013-00375
`Patent 6,502,135
`
`I.
`
`Introduction
`
`
`
`Patent Owner VirnetX Inc. (“VirnetX” or “Patent Owner”) respectfully
`
`submits this Preliminary Response in accordance with 35 U.S.C. § 313 and
`
`37 C.F.R. § 42.107, responding to the Petition for Inter Partes Review (Paper
`
`No. 4, the “Petition”) filed by New Bay Capital, LLC (“New Bay” or “Petitioner”).
`
`This Petition is one of eleven inter partes reviews requested recently by
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`Apple Inc. (“Apple”) and New Bay against VirnetX’s patents. Three of the inter
`
`partes review petitions challenge VirnetX’s U.S. Patent No. 6,502,135 (“the ’135
`
`patent”). But the ’135 patent is no stranger to validity challenges, as it has been
`
`tested numerous times in district court and in the Office.
`
`New Bay’s Petition marks the ninth challenge to the validity of the ’135
`
`patent. Microsoft Corporation (“Microsoft”) mounted the first two challenges.
`
`Microsoft made its first attempt during litigation in 2007 with VirnetX, but the jury
`
`found the asserted claims of the ’135 patent not invalid and infringed by Microsoft.
`
`(Ex. 2001 at 2, Jury Verdict Form in VirnetX, Inc. v. Microsoft Corp., Case No.
`
`6:07-CV-80 (E.D. Tex. Mar. 16, 2010).) In its second attempt, in 2009, Microsoft
`
`requested inter partes reexamination of the ’135 patent, but the Office confirmed
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`all challenged claims and issued a Reexamination Certificate. (See Control No.
`
`95/001,269; Ex. 1001.)
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`1
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`Case No. IPR2013-00375
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`Apple and Cisco Systems, Inc. (“Cisco”) raised the third and fourth
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`challenges to the ’135 patent in district court. Neither succeeded. The cases were
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`tried before separate juries, and both juries upheld the validity of the asserted ’135
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`patent claims. (Ex. 2002, Jury Verdict Form Against Apple in VirnetX, Inc. v.
`
`Apple Inc., Case No. 6:10-CV-417 (E.D. Tex. Nov. 6, 2012) (“the ’417
`
`Litigation”); Ex. 2003, Jury Verdict Form as to Cisco in the ’417 Litigation
`
`(E.D. Tex. Mar. 14, 2013).) The court later entered final judgments upholding the
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`validity of the ’135 patent. (Ex. 2004, Final Judgment Against Apple in the ’417
`
`Litigation (E.D. Tex. Feb. 28, 2013); Ex. 2005, Final Judgment as to Cisco in the
`
`’417 Litigation (E.D. Tex. Mar. 19, 2013).)
`
`In the fifth and sixth challenges, Apple and Cisco each requested inter partes
`
`reexamination of the ’135 patent (Control Nos. 95/001,679 and 95/001,682).
`
`Those reexaminations, later merged by the Office, are ongoing.
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`Apple recently sought the seventh and eighth challenges to the ’135 patent
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`by filing two inter partes review petitions.1 (See Case Nos. IPR2013-00348,
`
`
`1 New Bay’s Petition should not be joined with Apple’s petitions for the
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`’135 patent, if instituted, for the reasons discussed in VirnetX’s Opposition to
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`Apple’s Motion for Joinder, filed August 28, 2013, in matters IPR2013-00348 and
`
`-00349.
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`2
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`Case No. IPR2013-00375
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`“the ’348 Petition,” and IPR2013-00349, “the ’349 Petition.”) Those proceedings
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`are ongoing but not instituted.
`
`New Bay’s Petition represents the ninth challenge to the ’135 patent, and is
`
`now one of the five pending post-grant challenges before the Office concerning the
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`’135 patent (two reexaminations and three inter partes review petitions). These
`
`proceedings are largely duplicative of one another, and instituting New Bay’s
`
`Petition will only serve to duplicate and complicate efforts already undertaken in
`
`litigation and in reexamination of the ’135 patent.
`
`New Bay claims that “[t]he present Petition advances new arguments and
`
`evidence (not presented in the litigations or pending reexaminations) for
`
`invalidating claims 1, 3, 7 and 8.” (Petition at 3.) This statement ignores that
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`New Bay relies on the same references previously relied on by Cisco and Apple.
`
`The Petition asserts Kiuchi2 and Dalton,3 which are also asserted in Cisco’s
`
`ongoing reexamination of the ’135 patent. (Compare Petition with Ex. 2006,
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`Request for Inter Partes Reexamination Under 35 U.S.C. § 311, filed July 8, 2011,
`
`in Control No. 95/001,679.) Further, in the ’417 Litigation, Apple’s primary
`
`
`2 Ex. 1002, Takahiro Kiuchi and Shigekoto Kaihara, C-HTTP—The
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`Development of a Secure, Closed HTTP-based Network on the Internet (“Kiuchi”).
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`3 Ex. 1003, C. I. Dalton and J. F. Griffin, “Applying Military Grade Security
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`to the Internet,” published in the Proceedings of JENC8, May 1997 (“Dalton”).
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`Case No. IPR2013-00375
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`invalidity theory—and the only theory it elected to present at trial—was invalidity
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`of the asserted ’135 patent claims based on Kiuchi. (Ex. 2007 at 4:4-7, Transcript
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`of Trial Morning Session in the ’417 Litigation (Nov. 5, 2012).) Despite focusing
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`the jury on what Apple believed was its strongest reference, Apple failed to
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`persuade the jury that any asserted claim was invalid, and the court entered final
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`judgment upholding the validity of the asserted ’135 patent claims over Kiuchi.
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`(Exs. 2002, 2004.) Apple has appealed.
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`Since New Bay’s Petition is largely duplicative of Cisco’s ongoing
`
`reexamination of the ’135 patent and of Apple’s unsuccessful invalidity challenge
`
`in the ’417 Litigation, instituting it will serve only to harass VirnetX, contrary to
`
`Congress’s stated intentions in adopting the AIA. New Bay’s Petition is also
`
`defective in a number of ways described below. As one example, New Bay
`
`proposes several defective claim constructions that do not represent the broadest
`
`reasonable interpretation of the claims in light of the specification. Because its
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`proposed rejections are based on incorrect constructions, New Bay cannot
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`demonstrate a reasonable likelihood of prevailing for any claim of the ’135 patent.
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`Accordingly, the Board should not institute these proceedings.
`
`II. The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review
`
`New Bay’s Petition fails to comply with the requirements for instituting
`
`inter partes review. As explained in more detail below, in some cases, New Bay’s
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`Case No. IPR2013-00375
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`Petition fails to “specify where each element of the claim is found in the prior art
`
`patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
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`Additionally, New Bay proposes multiple parallel rejections that are redundant of
`
`one another. New Bay does not explain any differences between the parallel
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`anticipation and obviousness rejections based on Kiuchi, or why one proposed
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`rejection is better than the other. New Bay also fails to explain how the proposed
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`Dalton-Kiuchi obviousness rejection improves upon the proposed Kiuchi-only
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`anticipation and obviousness rejections, or vice versa. Addressing these redundant
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`grounds would significantly burden the Board and the Patent Owner, and it would
`
`cause unnecessary delay of the inter partes review proceedings, all without any
`
`added benefit. Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-
`
`00003 (Oct. 25, 2012) Paper No. 7.
`
`A. The Petition Fails to Comply with 37 C.F.R. § 42.104(b)(4)
`
`For a petition for inter partes review to be instituted, “[t]he petition must
`
`specify where each element of the claim is found in the prior art patents or printed
`
`publications relied upon.” 37 C.F.R. § 42.104(b)(4). New Bay has failed to
`
`provide the requisite specificity in its Petition, primarily in two ways: (1) by not
`
`applying its proposed claim constructions to explain how Kiuchi and/or Dalton
`
`allegedly satisfies the claim limitations; and/or (2) by relying on a 105-page
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`declaration (Ex. 1009), instead of citing Kiuchi and Dalton themselves, to support
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`Case No. IPR2013-00375
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`its unpatentability positions. Inter partes review thus should not be instituted on
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`the basis of the Petition. Some examples are identified below.
`
`1.
`
`New Bay Does Not Apply Its Proposed Constructions
`
`“Transparently.” Independent claim 1 is directed to “[a] method of
`
`transparently creating a virtual private network (VPN) between a client computer
`
`and a target computer.” New Bay construes “transparently” to mean that “the user
`
`need not be involved in creating the secure link,” relying on the ’135 patent
`
`specification and the district court’s Markman Order in the Microsoft litigation for
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`support. (Petition at 11, 18, citing Exs. 1001, 1011.) But in its analyses of claim 1
`
`for Grounds 1, 5, and 9, New Bay skips over the “transparently” recitation and
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`does not explain what in Kiuchi or Dalton discloses that a user need not be
`
`involved in creating a secure link. (Id. at 28-29, 40-41, 51-52.) As a result,
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`New Bay does not specify where this recitation is allegedly found in the cited
`
`references.
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`“Automatically.” New Bay similarly does not identify the specific aspects
`
`of Kiuchi that allegedly disclose “automatically” initiating the VPN, as recited in
`
`claim 1. According to New Bay, “automatically” means “initiating the VPN
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`without involvement of a user.” (Id. at 11, 17.) In its analyses of claim 1 for
`
`Grounds 1, 5, and 9, New Bay identifies two alterative aspects of Kiuchi that
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`allegedly disclose initiating a VPN: (1) the C-HTTP name server sending a name
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`Case No. IPR2013-00375
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`service response to the client-side proxy; and (2) the client-side proxy sending a
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`request for connection to the server-side proxy. (See id. at 31, 43, 51.) But
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`New Bay never applies its claim construction and explains how Kiuchi’s user has
`
`no involvement in those particular steps. As a result, New Bay does not specify
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`how the “automatically” recitation is allegedly satisfied by the cited references.
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`“Virtual Private Network (VPN).” As another example, the ’135 patent
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`claims all require a “virtual private network (VPN).” New Bay argues that “VPN”
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`means “a private network that is configured within a public network.” (Id. at 11,
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`17.) But New Bay never applies its construction to identify what, exactly, in
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`Kiuchi constitutes the purported VPN. As discussed above, in its claim 1 analyses,
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`New Bay identifies one of two aspects of Kiuchi as allegedly initiating a VPN—the
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`C-HTTP name server sending the C-HTTP name service response to the client-side
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`proxy and, alternatively, the client-side proxy sending a request for connection to
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`the server-side proxy. But New Bay’s analyses stop short at identifying what
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`purportedly discloses initiating the VPN and do not explain what is the alleged
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`“private network configured within a public network” that is initiated by those
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`steps. (See id. at 31, 43, 51.)
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`In the discussions of Kiuchi leading into the analyses of the claims,
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`New Bay suggests that a “secure communication connection” between the client-
`
`side proxy and the server-side proxy is a VPN. (See id. at 24.) But there, too, New
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`Case No. IPR2013-00375
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`Bay never applies its “VPN” construction and explains how a single connection
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`between a client-side proxy and a server-side proxy in Kiuchi constitutes a
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`network, much less a private network configured within a public network.
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`Ground 9, combining Dalton and Kiuchi in a proposed rejection, is similarly
`
`flawed. According to New Bay, it would have been obvious to combine Kiuchi
`
`and Dalton “so that a VPN is automatically initiated between an ‘internal’ client
`
`computer [on Dalton’s LAN] and an ‘internal’ target computer [also on Dalton’s
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`LAN] (i.e., a ʻsecure target web site’) . . . .” (Id. at 54.) But, again, New Bay
`
`never applies its “VPN” claim construction and explains how a connection
`
`between two “internal” devices on the same private LAN in Dalton constitutes a
`
`private network configured within a public network. Accordingly, New Bay does
`
`not identify the alleged VPN in the cited references according to its proposed
`
`construction.
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`Because New Bay does not apply its claim constructions to the cited
`
`references to show how the claimed features are allegedly satisfied, New Bay’s
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`Petition does not “specify where each element of the claim is found in the prior art
`
`patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). The
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`Petition is therefore defective, and the Board should not institute inter partes
`
`review.
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`8
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`Case No. IPR2013-00375
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`2.
`
`The Proposed Grounds Rely Heavily on Expert Testimony
`Rather Than the Cited References
`
`As discussed above, a compliant petition for inter partes review must,
`
`among other things, “specify where each element of the claim is found in the prior
`
`art patents or printed publications relied upon.” Id. (emphasis added). But New
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`Bay bases some of its proposed rejections almost entirely on a declaration
`
`(Ex. 1009) from New Bay’s expert, Russell Housley, rather than on the Kiuchi or
`
`Dalton references themselves. For this additional reason, inter partes review
`
`should not be instituted based on the Petition.
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`Grounds 5-8, for example, which New Bay collectively calls “Request 2,”
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`are based on a largely fictional description of Kiuchi that finds almost no support
`
`in Kiuchi itself. (Petition at 37-40.) In its description of Kiuchi prefacing
`
`Grounds 5-8, New Bay alleges that Kiuchi’s client-side proxy contains components
`
`like a “resolver function,” a “Client Module,” and a “DNS Proxy Server Module”
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`that perform various functions. (See id.) New Bay even provides a “functional
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`diagram” of Kiuchi’s client-side proxy containing these fictitious functions and
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`Modules:
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`9
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`Case No. IPR2013-00375
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`
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`(Id. at 38, Fig. 4.) None of these components is actually disclosed in Kiuchi. It is
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`no wonder that New Bay’s description of Kiuchi cites exclusively to Mr. Housley’s
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`declaration and fails to cite to Kiuchi even once. (See id. at 37-40.) Because
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`Grounds 5-8 are premised on a fictitious description of Kiuchi that cites
`
`exclusively to Mr. Housley’s declaration (which also does not cite to Kiuchi in its
`
`description of Kiuchi that supports his opinions), Grounds 5-8 lack the requisite
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`specificity to institute inter partes review.
`
`Grounds 1-8 lack the requisite specificity in additional ways. For instance,
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`all of the Grounds rely on Figure 2, New Bay’s “functional diagram of Kiuchi,”
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`which is reproduced below.
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`10
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`Case No. IPR2013-00375
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`
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`(Id. at 23, Fig. 2.) The figure contains a function block “[e]xtract domain name
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`from http request” that flows into a function block “[s]end domain name resolution
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`request to C-HTTP Server,” which are highlighted above. (Id.)
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`Based on the discussion that follows these figures, New Bay arranges the
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`two function blocks this way from Kiuchi’s statement that “the client-side proxy
`
`takes off the connection ID and forwards the stripped, the original resource name
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`to the server in its request, as described in Figure (c).” (Ex. 1002 at 65; see
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`Petition at 24.) But “the server” in that passage does not refer to the C-HTTP
`
`name server as New Bay indicates in its Figure 2—it refers to the origin server
`
`behind the server-side proxy. This is because “the request” that contains that
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`“resource name” is the “GET” request described in Kiuchi’s Figure (c), which is a
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`request sent to the origin server to get the resource (i.e., web page) stored on it.
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`11
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`Case No. IPR2013-00375
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`(Ex. 1002 at 66.) The “GET” request is not sent to the C-HTTP name sever as
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`New Bay’s Figure 2 suggests. Indeed, the C-HTTP name server does not even
`
`have the resource—the origin server does. Thus, New Bay’s Figure 2 is not an
`
`accurate representation of Kiuchi. And since Grounds 1-8 are based on this figure
`
`and not on Kiuchi itself, they lack the requisite specificity to institute inter partes
`
`review.
`
`Grounds 9-12 combine Kiuchi and Dalton in a proposed rejection of the
`
`claims. However, similar to Grounds 5-8, the description of Dalton on which New
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`Bay bases Grounds 9-12 contains scant citations to Dalton itself. (See Petition at
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`49-51.) Accordingly, Grounds 9-12 also lack the requisite specificity to institute
`
`inter partes review.
`
`B.
`
`The Board Should Not Institute Based on the Petition’s
`Redundant Grounds
`
`The Board should also reject this Petition because it raises grounds of
`
`rejection that are internally redundant. The Board has held that it will not consider
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`redundant grounds of rejection like New Bay’s because the Board must issue a
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`final written decision in inter partes review proceedings within one year of
`
`institution (or 18 months for good cause). Liberty Mut., CBM2012-00003 Paper
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`
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`12
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`Case No. IPR2013-00375
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`No. 7.4 Redundant grounds place a significant burden on the Board and the
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`patent owner, and they cause unnecessary delay that jeopardizes completing the
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`inter partes review by the statutory deadline. Id.
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`In Liberty Mutual, the Board identified two types of redundant rejections:
`
`(1) “horizontally” redundant rejections and (2) “vertically” redundant rejections.
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`Id. at 3. The Board explained that horizontally redundant rejections apply
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`“a plurality of prior art references . . . not in combination to complement each other
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`but as distinct and separate alternatives.” Id. In this type of redundancy, the
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`references “provide essentially the same teaching to meet the same claim
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`limitation, and the associated arguments do not explain why one reference more
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`closely satisfies the claim limitation at issue in some respects than another
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`reference, and vice versa.” Id.
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`Vertical redundancy “exists when there is assertion of an additional prior art
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`reference to support another ground of unpatentability when a base ground already
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`has been asserted against the same claim without the additional reference and the
`
`
`4 Although Liberty Mutual is a decision in a covered business method
`
`review, the Board has applied its reasoning to inter partes reviews based on the
`
`similar considerations that apply in both types of proceedings. See, e.g., LaRose
`
`Indus., LLC v. Capriola Corp., IPR2013-00120 (July 22, 2013) Paper No. 20 at 4
`
`(citing Liberty Mut., CBM2012-00003 Paper No. 7 at 2-12).
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`Case No. IPR2013-00375
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`Petitioner has not explained what are the relative strength and weakness of each
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`ground.” Id. at 12. Thus, an example of vertical redundancy is when a proposed
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`rejection is based on one reference alone while another proposed rejection against
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`the same claim is based on that same reference plus another reference. New Bay’s
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`petition contains both types of redundancy.
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`New Bay proposes twelve (12) grounds of rejection:
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` Ground 1. Kiuchi allegedly anticipates claim 1.
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` Ground 2. Kiuchi allegedly anticipates claim 3.
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` Ground 3. Kiuchi allegedly anticipates claim 7.
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` Ground 4. Kiuchi allegedly renders obvious claim 8.
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` Ground 5. Kiuchi allegedly anticipates claim 1.
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` Ground 6. Kiuchi allegedly anticipates claim 3.
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` Ground 7. Kiuchi allegedly anticipates claim 7.
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` Ground 8. Kiuchi allegedly anticipates claim 8.
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` Ground 9. Dalton/Kiuchi allegedly render obvious
`claim 1.
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` Ground 10. Dalton/Kiuchi allegedly render obvious
`claim 3.
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` Ground 11. Dalton/Kiuchi allegedly render obvious
`claim 7.
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` Ground 12. Dalton/Kiuchi allegedly render obvious
`claim 8.
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`Case No. IPR2013-00375
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`(See Petition at ii, 19-59.) As explained below, the proposed Grounds are
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`horizontally and/or vertically redundant, and the Board should not consider them.
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`1. Grounds 1 and 5, Grounds 2 and 6, and Grounds 3 and 7
`Are Horizontally Redundant
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`Grounds 1 and 5 are horizontally redundant. In both Grounds, New Bay
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`alleges that Kiuchi discloses the same features of claim 1. (Compare id. at 19-32
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`with id. at 37-44.) In Ground 5, New Bay refers to its fictional “Client Module”
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`and “Resolver (DNS Proxy Server Module),” but otherwise the discussion of how
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`Kiuchi purportedly satisfies the features of claim 1 is essentially the same
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`substantively as in Ground 1. New Bay does not explain how Ground 5 more
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`closely satisfies claim 1 than Ground 1 and vice versa, so Grounds 1 and 5 are
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`horizontally redundant and should not be considered. The same is true for
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`Grounds 2 and 6 addressing claim 3 (compare id. at 32 with id. at 44), and Grounds
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`3 and 7 addressing claim 7 (compare id. at 32-34 with id. at 44-45).
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`2. Grounds 4 and 8 Are Vertically Redundant
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`Grounds 4 and 8 are vertically redundant. Claim 8 recites that “step (2) is
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`performed in a DNS proxy server that passes through the request to a DNS server
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`if it is determined in step (3) that access is not being requested to a secure target
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`web site.” In Ground 8, New Bay contends that Kiuchi anticipates this feature by
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`the client-side proxy running a “conventional” DNS lookup when it receives an
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`error status from the C-HTTP name server. (Id. at 46-47, citing Kiuchi 65, § 2.3.)
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`Case No. IPR2013-00375
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`Earlier, in Ground 4, New Bay hedges its anticipation theory by contending that
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`Kiuchi (alone) renders the claim 8 feature obvious as a matter of “design choice.”
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`(Id. at 34-37.) However, New Bay never explains why Ground 4 provides a better
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`unpatentability position than Ground 8 or vice versa. Thus, compared to Ground 4,
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`Ground 8 is just an “assertion of an additional prior art reference to support another
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`ground of unpatentability when a base ground already has been asserted against the
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`same claim without the additional reference,” and “the Petitioner has not explained
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`what are the relative strength and weakness of each ground.” Liberty Mut.,
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`CBM2012-00003 Paper No. 7 at 12. As a result, Grounds 4 and 8 are vertically
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`redundant and should not be considered.
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`3. Grounds 9-12 Are Vertically Redundant to Grounds 1-8
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`Grounds 9-12 are vertically redundant to Grounds 1-4, respectively, and also
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`to Grounds 5-8, respectively. In Grounds 1-4, New Bay contends that claims 1, 3,
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`7, and 8, respectively, are all unpatentable in view of Kiuchi alone. In Grounds
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`5-8, New Bay again contends that claims 1, 3, 7, and 8, respectively, are all
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`unpatentable by Kiuchi alone.
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`In Grounds 9-12, New Bay proposes yet another rejection of claims 1, 3, 7,
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`and 8, respectively, which combines Dalton and Kiuchi, and relies on Dalton as the
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`base reference. But New Bay never explains why the Kiuchi-Dalton obviousness
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`combination (Grounds 9-12) makes a better proposed rejection than the
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`Case No. IPR2013-00375
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`Kiuchi-only rejections (Grounds 1-4 and Grounds 5-8), or vice versa. Thus,
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`relative to Grounds 1-8, Grounds 9-12 are just an “assertion of an additional prior
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`art reference to support another ground of unpatentability when a base ground
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`already has been asserted against the same claim without the additional reference,”
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`and “the Petitioner has not explained what are the relative strength and weakness
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`of each ground.” Id. As a result, Grounds 9-12 are vertically redundant to
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`Grounds 1-4, respectively, and to Grounds 5-8, respectively, and should not be
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`considered.
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`III. The Petition’s Claim Constructions Are Flawed and Should Be Rejected
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`In inter partes review, claims are to be given their “broadest reasonable
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`construction in light of the specification.” 37 C.F.R. § 42.100(b). In applying the
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`“broadest reasonable construction” or interpretation (“BRI”) standard, the words of
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`the claims must be given their plain meaning unless the plain meaning is
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`inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
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`The ordinary meaning of a term may be evidenced by a variety of sources,
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`including “the words of the claims themselves, the remainder of the specification,
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`the prosecution history, and extrinsic evidence concerning relevant scientific
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`principles, the meaning of technical terms, and the state of the art.” Phillips v.
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`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (citation omitted).
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`Additionally, the prosecution history is part of the intrinsic record and
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`should be considered when construing the claims. Id. at 1317. In inter partes
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`review proceedings, the Board has consistently considered the prosecution history
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`when construing the claims. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
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`IPR2012-00001 (Jan. 9, 2013) Paper No. 15 at 8; see also Motorola Solutions, Inc.
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`v. Mobile Scanning Techs., LLC, IPR2013-00093 (Apr. 29, 2013) Paper 28 at 10.
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`As explained below, New Bay proposes several defective claim
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`constructions that do not represent the BRI of the claims. Because it is based on
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`incorrect claim constructions, the Petition cannot demonstrate a reasonable
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`likelihood of prevailing as to any claim of the ’135 patent.
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`A. Overview of the ’135 Patent
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`The ’135 patent discloses embodiments relating to initiating virtual private
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`networks (VPNs) and/or virtual private links between a user’s computer 2601 and
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`a target 2604 connected to a network.
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`Case No. IPR2013-00375
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`(Ex. 1001, FIGS. 26 and 27.) One embodiment includes methods and systems for
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`transparently creating/initiating a VPN between a user’s computer 2601—called a
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`“client computer” in the claims—and a target 2604. (Id. at 37:63-38:2, 47:20-22;
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`FIG. 26.) Because the creation/initiation of the VPN is transparent, the user need
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`not be involved in creating the VPN. (Id. at 39:27-29.)
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`Specifically, in the method, a user’s computer 2601 generates a Domain
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`Name Service (DNS) request that requests an IP address corresponding to a
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`domain name. (Id. at 38:23-24, 39:1-2, 47:23-26; FIG. 27, step 2701.) A
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`determination is made whether the DNS request is requesting access to a secure
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`target 2604. (Id. at 38:24-28, 39:2-3, 47:27-28; FIG. 27, step 2702.) In response
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`to determining that the DNS request in step (2) is requesting access