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`Case No. IPR2014-00238
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`Paper No.
`Filed: March 6, 2014
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`
`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
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2014-00238
`Patent 8,504,697
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`
`
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`
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`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 8,504,697
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`

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`I.
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`II.
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`Case No. IPR2014-00238
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`Table of Contents
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`Introduction ...................................................................................................... 1
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`The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review ......................................................................................... 2
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`A.
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`B.
`
`C.
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`The Petition Fails to Comply with 35 U.S.C. § 312(a)(3) and
`37 C.F.R. § 42.104(b)(4) ....................................................................... 3
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`The Proposed Grounds Treat Aventail as a Single Document
`Instead of Two Separate Documents ..................................................... 7
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`The Board Should Not Institute Based on the Petition’s
`Redundant Grounds .............................................................................10
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`III. The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected .........................................................................................................15
`
`A. Overview of the ’697 Patent ................................................................16
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`B.
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`C.
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`D.
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`E.
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`F.
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`Level of Ordinary Skill in the Art .......................................................18
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`“Domain Name” (Claims 1, 14, 16, and 28) .......................................19
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`“Secure Communication Link” (Claims 1-3, 11-13, 16-17, and
`24-27) ..................................................................................................20
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`“Secure Communications Service” (Claims 1, 4-5, 10, 13-14,
`16, 18-19, and 28-29) ..........................................................................26
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`“Intercept[ing] . . . a request to look up an internet protocol (IP)
`address” (Claims 1 and 16) .................................................................27
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`G.
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`“Modulation” (Claims 6, 7, 20, and 21) ..............................................31
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`IV.
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`If Trial Is Instituted, VirnetX Requests an 18-Month Schedule ...................32
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`V.
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`Conclusion .....................................................................................................32
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`i
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`Case No. IPR2014-00238
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`Table of Authorities
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`FEDERAL CASES
`Apple Inc. v. Int’l Trade Comm’n,
`725 F.3d 1356 (Fed. Cir. 2013) ............................................................................ 8
`
`Page(s)
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 21
`
`EMC Corp. v. Personal Web Techs.,
`IPR2013-00087 (June 5, 2013) Paper No. 25 ..................................................... 10
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001 (Jan. 9, 2013) Paper No. 15 ................................................ 15, 22
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .................................................................................................. 9
`
`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027 (June 11, 2013) Paper No. 26 ................................................... 10
`
`InterDigital Comms., LLC v. Int’l Trade Comm’n,
`690 F.3d 1318 (Fed. Cir. 2012) .................................................................... 24, 25
`
`LaRose Indus., LLC v. Capriola Corp.,
`IPR2013-00120 (July 22, 2013) Paper No. 20 ............................................. 10, 14
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003 (Oct. 25, 2012) Paper No. 7 ....................................... 10, 11, 14
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093 (Apr. 29, 2013) Paper No. 28 ............................................. 15, 22
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 15
`
`Tasco, Inc. v. Pagnani,
`IPR2013-00103 (May 23, 2013) Paper No. 6 ................................................... 3, 8
`
`ScentAir Techs., Inc. v. Prolitec, Inc.,
`IPR2013-00180 (Aug. 26, 2013) Paper No. 18 .................................................. 11
`
`ii
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`Wenger Mfg., Inc. v. Coating Mach. Sys., Inc.,
`239 F.3d 1225 (Fed. Cir. 2001) .......................................................................... 24
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`Case No. IPR2014-00238
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`Wowza Media Sys., LLC et al. v. Adobe Sys., Inc.,
`IPR2013-00054 (July 13, 2013) Paper No. 16 ..................................................... 3
`
`Xilinx, Inc. v. Intellectual Ventures I LLC,
`IPR2013-00112 (June 27, 2013) Paper No. 14 ................................................... 22
`
`ZTE Corp. & ZTE (USA) Inc. v. ContentGuard Holdings, Inc.,
`IPR2013-00134 (June 19, 2013) Paper No. 12 ................................................... 22
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) ............................................................................ 15
`
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`FEDERAL STATUTES
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`35 U.S.C. § 312 .................................................................................................. 2, 3, 7
`
`35 U.S.C. § 313 .......................................................................................................... 1
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`
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`FEDERAL REGULATIONS
`
`37 C.F.R. § 42.100(b) .............................................................................................. 15
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`37 C.F.R. § 42.100(c) ............................................................................................... 32
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`37 C.F.R. § 42.104(b)(4) ............................................................................... 2, 3, 7, 9
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`iii
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`I.
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`Introduction
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`Case No. IPR2014-00238
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`Patent Owner VirnetX Inc. respectfully submits this Preliminary Response
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`in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107, responding to the
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`Petition for Inter Partes Review of VirnetX’s U.S. Patent No. 8,504,697 (“the ’697
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`patent”) filed by Apple Inc. VirnetX requests that the Board not institute inter
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`partes review for several reasons.
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`First, the Petition proposes rejections that the Examiner considered during
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`prosecution of the ’697 patent and over which the Examiner allowed the claims.
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`Specifically, the Petition proposes rejections based on Wesinger (Ex. 1008), Kiuchi
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`(Ex. 1011), and a collection of documents it calls “Aventail” (Ex. 1007). (Pet. at
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`3.) During prosecution of the ’697 patent, however, VirnetX submitted these
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`references to the Examiner and the Examiner considered them. (See Ex. 1001 at 2,
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`4, 5, 7, 8, 16.) The Examiner also considered materials from reexaminations of
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`patents related to the ’697 patent, including claim charts applying Wesinger,
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`Kiuchi, and Aventail to the claims of those patents. (See id. at 9-12, 14, 15, 16.)
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`The Examiner had initially rejected the ’697 patent claims based on Wesinger, (Ex.
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`1002 at 591, 711), but later withdrew the rejection and allowed the claims in light
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`of VirnetX’s arguments in support of patentability and claim amendments, (id. at
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`1033-35.) And although the Examiner never rejected the ’697 patent claims over
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`Kiuchi, the Examiner discussed it in his statement of reasons for allowance. (Id. at
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`1034-35.) Accordingly, Apple asks the Board and VirnetX to divert resources to
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`Case No. IPR2014-00238
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`revisit issues that the Office has already considered.
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`Second, the Petition fails to comply with several rules and regulations
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`regarding the content of petitions. The Petition either never or rarely cites the
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`asserted prior art references, violating the particularity requirements of 35 U.S.C.
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`§ 312(a)(3) and 37 C.F.R. § 42.104(b)(4). The Petition also attempts to combine
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`two references (under the name “Aventail”) in an anticipation analysis, in violation
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`of Federal Circuit case law, and its backup obviousness argument lacks any
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`analysis, in violation of Supreme Court precedent. The Petition further proposes
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`horizontally and vertically redundant grounds without identifying how any one
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`ground improves on any other, violating Board precedent requiring petitioners to
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`identify differences in the proposed rejections.
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`Finally, Apple proposes unreasonable claim constructions. Because its
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`unpatentability challenges are premised on incorrect claim constructions, Apple
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`has not met its burden of demonstrating a reasonable likelihood of prevailing in
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`proving unpatentability of any ’697 patent claim.
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`II. The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review
`Trial should not be instituted because Apple’s Petition does not comply with
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`the statutes and regulations that must be satisfied for institution. The Petition fails
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`to comply with 35 U.S.C. § 312(a)(3)’s particularity requirement and 37 C.F.R.
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`2
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`§ 42.104(b)(4)’s requirement to “specify where each element of the claim is found
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`in the prior art patents or printed publications relied upon,” by citing almost solely
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`to an expert declaration, which often generalizes the references, as opposed to
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`citing the references themselves. The Petition impermissibly combines two
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`separate references in an anticipation rejection and offers a backup obviousness
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`position without any analysis. The Petition also proposes redundant grounds
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`without identifying how any one ground improves on any other.
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`A. The Petition Fails to Comply with 35 U.S.C. § 312(a)(3) and
`37 C.F.R. § 42.104(b)(4)
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`A petition must identify “in writing and with particularity, each claim
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`challenged, the grounds on which the challenge to each claim is based, and the
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`evidence that supports the grounds for the challenge to each claim[.]” 35 U.S.C.
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`§ 312(a)(3). It must also “specify where each element of the claim is found in the
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`prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
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`The “failure to point out where each element is found in the prior art is a
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`deficiency in the substantive requirements of the petition,” which results in denial
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`of the petition. Wowza Media Sys., LLC et al. v. Adobe Sys., Inc., IPR2013-00054,
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`Paper No. 16 at 3 (July 13, 2013). Accordingly, the Board has denied petitions for
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`failure to cite prior art references being asserted. See, e.g., Tasco, Inc. v. Pagnani,
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`IPR2013-00103, Paper No. 6 at 22 (May 23, 2013) (“Rather than providing
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`citations to supporting evidence in [a prior art reference] Petitioner provides
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`conclusory statements, such as ‘[s]ince each circuit of the circuit breaker receives a
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`signal from a distinct transmitter, the signals of all the circuits must be different or
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`unique.’ (Pet. at 42 (no citation to [prior art reference] provided).”)
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`Apple’s Petition fails to meet these requirements because the Petition cites
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`mainly to an accompanying declaration (Ex. 1003) rather than to the prior art
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`references themselves. The result is that, for many claim features, it is unclear
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`what feature in the prior art the Petition is attempting to refer to through the
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`declaration. Because of this flaw, the Board and VirnetX are forced to cobble
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`together and, in some instances, to simply speculate about what specific invalidity
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`theories are being asserted.1
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`For example, the Petition asserts that Wesinger anticipates claims 1-11, 14-
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`25, and 28-30, but the Petition cites Wesinger only for claims 1, 3, 8, 10, 16, 17,
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`22, and 29, and only for certain features of those claims. (Pet. at 15-29.) The
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`Petition also asserts that the Aventail documents anticipate claims 1-11, 14-25, and
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`28-30, yet the Petition cites the Aventail documents only for portions of claims 1,
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`2, 3, 8-10, 16, 17, 22- 24, and 29. (Id. at 32-45.) In short, the Petition fails to
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`1 Apple was on notice of these deficiencies based on VirnetX’s Preliminary
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`Responses to the petitions Apple filed against other VirnetX patents, but chose to
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`repeat them in this Petition. (See, e.g., Apple Inc. v. VirnetX Inc., IPR2013-00349,
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`Paper No. 10 at 13-16 (Sept. 17, 2013).)
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`identify where in the asserted prior art all of the features of any challenged claim
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`are found.
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`The issue is compounded by the length of the cited declaration, which spans
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`228 pages—nearly the length of four IPR petitions. (See Ex. 1003.) Apple asks
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`the Board and VirnetX to parse this large volume of material by (i) collecting the
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`Petition’s declaration citations for each claim feature, (ii) ascertaining the various
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`arguments the declarant makes for each feature, (iii) comparing those arguments to
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`the disclosure of the cited references, and (iv) determining whether referenced
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`portions of the prior art correspond to the features of the claims. This does not
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`meet the requirements for a petition, and it also circumvents the page limits for
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`petitions.
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`As an example of a critical deficiency, claim 1 recites, among other things,
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`“determining, in response to the request, whether the second network device is
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`available for a secure communications service.” The Petition does not explain how
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`Wesinger discloses that a second network device is “available” for a secure
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`communications service. Instead, the Petition generally discusses what resources
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`the client is permitted to access based on a configuration file for the remote host.
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`(See Pet. at 18 (“The firewall will evaluate the configuration file to determine if the
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`client is permitted to make the connection to the destination.”).) The Petition also
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`mimics the claim language, without specifying what feature of Wesinger is being
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`relied on. (See id. at 19 (“If the destination is available and the configuration file
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`specifies that traffic should be encrypted, the firewall determines that the remote
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`host is available for a secure communications service.”).) Nowhere does the
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`Petition attempt to explain how Wesinger discloses “determining, in response to
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`the request [from the first network device], whether the second network device is
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`available for a secure communications service,” as recited in claim 1. The Petition
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`is similarly deficient regarding independent claim 16. (See id. at 18-19, 21.)
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`As a further example, the Petition discusses the Aventail documents in
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`generalities and fails to explain what in the Aventail documents specifically
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`discloses “determining, in response to the request, whether the second network
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`device is available for a secure communications service,” as recited in independent
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`claim 1. (See id. at 35 (generally asserting that “Aventail shows that if the request
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`contains a domain name, that domain name will be evaluated to determine if the
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`destination specified in the connection request requires and can support a secure
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`communication with the client computer,” but never identifying what specific
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`features of the Aventail documents allegedly correspond to “determining” whether
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`a “second network device” is “available for a secure communications service,” as
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`recited in claim 1. The Petition is similarly deficient regarding independent claim
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`16. (See id. at 35-36, 38.)
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`Because the Petition fails to cite and identify the specific features of the
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`prior art references it relies on to challenge the specific elements of claims 1-11,
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`14-25, and 28-30, it fails to comply with the “particularity” requirement of 35
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`U.S.C. § 312(a)(3) and fails to “specify were each element of the claim is found in
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`the prior art patents or printed publications relied upon” as required by 37 C.F.R.
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`§ 42.104(b)(4). Due to these deficiencies, a trial should not be instituted.
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`B.
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`The Proposed Grounds Treat Aventail as a Single Document
`Instead of Two Separate Documents
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`Apple asks the Board to find anticipation based on a combination of
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`references that are not incorporated by reference into each other, which is contrary
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`to basic principles of anticipation law.2 What Apple calls “Aventail” (Ex. 1007) is
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`actually
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`two
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`separate documents:
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`(1) “Aventail Connect v3.01/v2.51
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`Administrator’s Guide” (Ex. 1007, pp. 1-120, “Aventail Connect”); and (2)
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`“Aventail ExtraNet Center v3.0 Administrator’s Guide” (id., pp. 121-94, “Aventail
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`ExtraNet Center”). Indeed, Apple admits that these are “two discrete documents”
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`(Pet. at 32), and Apple’s declarant refers to them as “a set of two manuals.”
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`2 Apple was on notice of the fact that “Aventail” cannot be considered a
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`single reference but chose to repeat the mischaracterization in this Petition. (See
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`Apple Inc. v. VirnetX Inc., IPR2013-00349, Paper No. 10 at 20-21 (Sept. 17,
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`2013).)
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`(Ex. 1003 ¶ 243.) The Petition merges these two separate documents into a single
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`Case No. IPR2014-00238
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`PDF file, labels it “Aventail,” and argues that the merged PDF anticipates claims 1-
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`11, 14-25, and 28-30.
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`In combining the documents, the Petition violates a basic tenet of
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`anticipation: “For a prior art reference to anticipate a claim, the reference must
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`disclose each claim limitation in a single document.” Apple Inc. v. Int’l Trade
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`Comm’n, 725 F.3d 1356, 1362 (Fed. Cir. 2013) (emphasis added). Apple’s
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`declarant acknowledges this rule despite not applying it. (Ex. 1003 ¶ 31.) Though
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`the Petition contends the two documents were “distributed together” (see Pet. at
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`32), the fact remains that the documents were two separate manuals, neither of
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`which incorporates the other by reference.
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`As a fallback argument, Apple contends that “if the Board concludes the two
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`documents are discrete printed publications,” the Board should find “that a person
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`of ordinary skill in would have considered the relevant provisions of the Aventail
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`Extranet Server v3.0 Administrator’s Guide to have been incorporated by reference
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`by the Aventail Connect v3.01/2.51 Administrator’s Guide.” (Pet. at 33.)
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`Incorporation by reference, however, is a legal question with specific requirements
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`that do not turn on whether one skilled in the art would consider a document
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`incorporated by reference.
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`Case No. IPR2014-00238
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`If Apple is asking the Board to find claim 1-11, 14-25, and 28-30 obvious,
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`Apple’s obviousness position fails because it neglects to consider or explain the
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`differences between the Aventail references and the ’697 patent claims. (See Pet.
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`at 32-33, 45-49.) As the Board has explained, even if a petition explains where in
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`the prior art the features of a challenged claim are found, a finding of obviousness
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`is improper if the petition’s “obviousness analysis is deficient.” See Tasco, Inc. v.
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`Pagnani, IPR2013-00103, Paper No. 6 at 19 (May 23, 2013) (“Petitioner has failed
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`to establish prerequisites for demonstrating obviousness under KSR Int’l Co. v.
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`Teleflex, Inc., 550 U.S. 398 (2007).”).
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`In stating that certain claims are obvious based on “Aventail” alone or in
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`combination with RFC 2543, the Petition leaves the Board and VirnetX with no
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`guidance as to how to combine the references Aventail Connect, Aventail Extranet
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`Center, and RFC 2543. (See, e.g., Pet. at 46-47.) This approach fails to assess “the
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`differences between the subject matter sought to be patented and the prior art,” as
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`required by Supreme Court precedent. Graham v. John Deere Co. of Kansas City,
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`383 U.S. 1, 17-18 (1966) (the analysis must ascertain the differences between the
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`claimed invention and the prior art).
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`Accordingly, Apple has not established a prima facie case of obviousness
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`for any of claims 1-11, 14-25, and 28-30 based on the Aventail documents. The
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`Petition’s lack of analysis also dooms it under 37 C.F.R. § 42.104(b)(4) by failing
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`to “specify where each element of the claim is found in the prior art patents or
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`printed publications relied upon.”
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`C. The Board Should Not Institute Based on the Petition’s
`Redundant Grounds
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`The Board should reject this Petition because it raises grounds of rejection
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`that are both internally redundant and also redundant in view of the proposed
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`grounds in Apple’s ’237 Petition. The Board has held that it will not consider
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`redundant grounds of rejection like Apple’s because the Board must issue a final
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`written decision in inter partes review proceedings within one year of institution
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`(or 18 months for good cause). Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
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`CBM2012-00003, Paper No. 7 (Oct. 25, 2012).3 Redundant grounds place a
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`significant burden on the Board and the patent owner, and they cause unnecessary
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`delay that jeopardizes completing the inter partes review by the statutory deadline.
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`Id.
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`3 Although Liberty Mutual is a decision in a covered business method
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`review, the Board has applied its reasoning to inter partes reviews based on the
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`similar considerations that apply in both types of proceedings. See, e.g., LaRose
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`Indus., LLC v. Capriola Corp., IPR2013-00120, Paper No. 20 at 4 (July 22, 2013)
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`(citing Liberty Mutual, CBM2012-00003, Paper No. 7 at 2-12).
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`Case No. IPR2014-00238
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`Because “[t]he Board seeks to streamline and converge issues at all phases
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`of the proceeding . . . at [the] time of institution the Board analyzes the petition on
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`a claim-by-claim, ground-by-ground basis, to eliminate redundant grounds.” Idle
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`Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper No. 26 at 3 (June 11,
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`2013). As explained by the Board, the redundancy inquiry does not focus on
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`“whether the applied prior art disclosures have differences, for it is rarely the case
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`that the disclosures of different prior art references, will be literally identical.”
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`EMC Corp. v. Personal Web Techs., LLC, IPR2013-00087, Paper No. 25 at 3 (June
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`5, 2013). Instead, the Board considers “whether the petitioner articulated a
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`meaningful distinction in terms of relative strengths and weaknesses with respect
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`to application of the prior art disclosures to one or more claim limitations.” Id. at
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`3-4. The onus is on the petitioner to articulate that “meaningful distinction.” See
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`ScentAir Techs., Inc. v. Prolitec, Inc., Case IPR2013-00180, Paper No. 18 at 3
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`(Aug. 26, 2013) (“To avoid a determination that a requested ground of review is
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`redundant of another requested ground, a petitioner must articulate a meaningful
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`distinction. . . .”).
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`In Liberty Mutual, the Board identified two types of redundant rejections:
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`(1) “horizontally”
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`redundant
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`rejections and
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`(2) “vertically”
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`redundant
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`rejections. Liberty Mutual, CBM2012-00003, Paper No. 7 at 3. The Board
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`explained that horizontally redundant rejections apply “a plurality of prior art
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`references . . . not in combination to complement each other but as distinct and
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`separate alternatives.” Id. In this type of redundancy, the references “provide
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`essentially the same teaching to meet the same claim limitation, and the associated
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`arguments do not explain why one reference more closely satisfies the claim
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`limitation at issue in some respects than another 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
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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. Apple’s
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`petitions contain both types of redundancy.
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`In the ’237 Petition, Apple proposes six grounds of rejection against the ’697
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`patent claims, including the following:
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`P1-1.
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`P1-2.
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`Beser allegedly anticipates claims 1-11, 14-25, and 28-30;
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`Beser in view of RFC 2401 allegedly renders obvious claims 1-
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`11, 14-25, and 28-30;
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`Case No. IPR2014-00238
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`P1-3.
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`Beser in view of RFC 2401 and the knowledge of a person of
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`ordinary skill in the art allegedly renders obvious claims 1-11, 14-25,
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`and 28-30;
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`P1-4.
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`P1-5.
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`RFC 2453 allegedly anticipates claims 1-11, 14-25, and 28-30;
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`RFC 2453 in view of RFC 1889 and RFC 2327 allegedly
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`renders obvious 1-11, 14-25, and 28-30; and
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`P1-6.
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`RFC 2453 in view of Mobility Support Using SIP allegedly
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`renders obvious claims 8-9 and 22-23.
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`Here, Apple proposes five grounds of invalidity, including the following:
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`P2-1. Wesinger allegedly anticipates claims 1-11, 14-25, and 28-30;
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`P2-2. Wesinger in view of RFC 2543 allegedly renders obvious
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`claims 4-7 and 18-21;
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`P2-3.
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`P2-4.
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`Aventail allegedly anticipates claims 1-11, 14-25, and 28-30;
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`Aventail in view of RFC 2543 allegedly renders obvious claims
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`4-7 and 18-21; and
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`P2-5.
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`Kiuchi allegedly anticipates claims 1-3, 8-11, 14-17, 22-25, and
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`28-30.
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`These examples demonstrate horizontal
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`redundancy by proposing
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`anticipation rejections of common claims based on Beser, RFC 2453, Wesinger,
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`Aventail, and Kiuchi, (P1-1, P1-4, P2-1, P2-3, and P2-5). In another instance of
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`horizontal redundancy, Apple proposes parallel obviousness grounds for
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`overlapping claims (e.g., P1-2, P1-3, P1-5, P1-6, P2-2, and P2-4). Apple’s
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`petitions never explain which lead referenceBeser, RFC 2453, Wesinger,
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`Aventail, or Kiuchior which obviousness combination is better in any respect
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`compared to the others for any challenged claim.
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`The Petition also demonstrates vertical
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`redundancy by proposing
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`anticipation rejections based on Wesinger (P2-1), Aventail (P2-3), and Kiuchi (P2-
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`5) while simultaneously challenging common claims as obvious using Wesinger
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`and Aventail as the lead references (P2-2 and P2-4). Apple does not explain how
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`these proposed obviousness rejections are any better or different from the proposed
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`anticipation rejections based on Wesinger, Aventail, and Kiuchi alone. And neither
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`of Apple’s petitions explains how any of the proposed obviousness combinations
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`improves on any of the other combinations.4
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`As in Liberty Mutual, Apple simply proposes different references or
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`different combinations that “provide essentially the same teaching to meet the
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`same claim limitation, and the associated arguments do not explain why one
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`4 VirnetX highlighted similar deficiencies in the previous petitions filed by
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`Apple, and the deficiencies are repeated here. (See, e.g., Apple Inc. v. VirnetX Inc.,
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`IPR2013-00397, Paper No. 11 at 13-18 (Oct. 4, 2013).)
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`reference [or reference combination] more closely satisfies the claim limitation at
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`issue in some respects than another reference [or reference combination], and vice
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`versa.” Liberty Mutual, CMB2012-00003, Paper No. 7 at 3. Although “the focus
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`of redundancy is on whether a petitioner articulated a meaningful distinction in
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`terms of the relative strengths and weaknesses with respect to [the] application of
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`the prior art reference disclosures to one or more claim limitations,” Apple has
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`identified no distinctions whatsoever. LaRose, IPR2013-00120, Paper No. 20 at 4
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`(“Petitioner has not explained any such strengths and weaknesses . . . .”).
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`Accordingly, the Board should deny the Petition because it presents internally
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`redundant grounds and grounds redundant to those in the ’237 Petition.
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`III. The Petition’s Claim Constructions Are Flawed and Should Be Rejected
`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 claim 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, Paper No. 15 at 8 (Jan. 9, 2013); Motorola Solutions, Inc. v.
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`Mobile Scanning Techs., LLC, IPR2013-00093, Paper No. 28 at 10 (Apr. 29,
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`2013).
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`As explained below, Apple proposes several defective claim constructions
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`that do not represent the BRI of the claims. Because it is based on incorrect claim
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`constructions, the Petition cannot demonstrate a reasonable likelihood of prevailing
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`for any claim of the ’697 patent.
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`A. Overview of the ’697 Patent
`The ’697 patent discloses embodiments relating to initiating a secure
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`communication link between a user’s computer 2601 (e.g., a “first network device”
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`in the claims) and a target 2604 (e.g., a “second network device” in the claims)
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`over a network.
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`(Ex. 1001, FIGS. 26 and 27.) In one embodiment, a request to look up an internet
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`protocol (IP) address of the second network device based on a domain name
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`associated with the second network device is intercepted by being received for an
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`evaluation related to establishing the secure communication link. (See id. at 40:31-
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`37; 41:6-19; FIG. 27, 2701, 2702, 2704.) A determination is made, in response to
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`the request, whether the second network device is available for a secure
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`communications service. (See id.) Additionally, the request is resolved into an
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`address that is returned to the first network device. (See id. at 40:44-46.) A secure
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`communication link is initiated between the first network device and the second
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`network device based on a determination that the second network device is
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`available for the secure communications service. (See, e.g., id. at 40:37-49, 41:30-
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`39, 41:47-56; FIG. 27.) The secure communications service uses the secure
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`communication link to communicate at least one of video data and audio data
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`between the first network device and the second network device. (See, e.g., id. at
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`21:52-62.) The secure communication link is a direct link between the first and
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`second network devices, using encryption to provide data security.
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`Level of Ordinary Skill in the Art
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`B.
`A person of ordinary skill in the art at the relevant time would have had a
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`master’s degree in computer science or computer engineering and approximately
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`two years of experience in computer networking and computer security. In
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`litigation related to VirnetX’s patents, this level of skill was adopted by Petitioner
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`Apple Inc. and a host of other companies, including Cisco Systems, Inc.; NEC
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`Corporation; NEC Corporation of America; Aastra USA, Inc.; Aastra Technologies
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`Ltd.; Mitel Networks Corp.; Mitel Networks, Inc.; Siemens Enterprise
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`Communications GmbH & Co. KG; Siemens Enterprise Communicat