`
`)
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner,
`
`V.
`
`VIRNETX INC.,
`Patent Owner.
`
`Case IPR2014-00238
`
`Patent 8,504,697
`
`PATENT OWNER VIRNETX INC.’S NOTICE OF APPEAL
`
`
`
`
`
`
`
`Case No. IPR2014—0023 8
`
`Patent No. 8,504,697
`
`Director of the United States Patent and Trademark Office
`
`c/o Office of the General Counsel
`
`Madison Building East, l0B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Patent Owner
`
`VirnetX Inc. (“VirnetX”) appeals to the United States Court of Appeals for the
`
`Federal Circuit from the Final Written Decision entered on May 1 1, 2015 (Paper
`
`41) (the “Final Written Decision”) by the United States Patent and Trademark
`
`Office, Patent Trial and Appeal Board. (the “Board”), and from all underlying
`orders, decisions, rulings, and opinions. A copy ofthe Final Written Decision is
`
`attached.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), VirnetX indicates that the
`
`issues on appeal include, but are not limited to, the Board’s determination of
`
`unpatentability of claims 1-3, 8-11, 14-17, 22-25, and 28-30 of U.S. Patent No.
`
`8,504,697 under 35 U.S.C. § 102, the Board’s determination of unpatentability of
`
`claims 4-7 and 18-21 of U.S. Patent No. 8,504,697 under 35 U.S.C. § 103, and any
`
`findings or determinations supporting or related to those rulings including, Without
`
`limitation, the Board’s application and use of the broadest reasonable interpretation
`
`standard, the Board’s interpretation of the claim language, and the Board’s
`
`interpretation of the prior art.
`
`
`
`Case No. IPR20l4—0O238
`
`Patent No. 8,504,697
`
`Simultaneous with this submission, a copy of this Notice of Appeal is being
`
`filed with the Board and three copies of this Notice of Appeal and the required fee
`
`are being filed with the Clerk of Court for the United States Court of Appeals for
`
`the Federal Circuit.
`
`Respectfully submitted this 10th day of July, 2015.
`
`By
`
`Naveen Modi
`
`Registration No. 46,224
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, DC 20005
`(202) 551-1700
`naVeenmodi@paulhastings.com ’
`
`Counselfor Vz'rnetXInc.
`
`
`
`Case No. IPR20 l 4-0023 8
`
`Patent No. 8,504,697
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that in addition to being filed electronically
`
`through the Patent Trial and Appeal Board’s Patent Review Processing System
`
`(PRPS), the original Version of this Notice of Appeal was filed by hand on July
`
`10th, 2015 with the Director of the United States Patent and Trademark Office, at
`
`the following address:
`
`Director of the United States Patent and Trademark Office
`
`c/o Office of the General Counsel .
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`The undersigned also certifies that three true and correct copies of this
`
`Notice of Appeal were filed by hand on July 10th, 2015, with the Clerk of Court
`
`for the United States Court of Appeals for the Federal Circuit at the following
`
`address:
`
`Clerk of Court
`
`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W.
`Washington, DC 20439
`
`
`
`Case No. lPR20l4—00238
`
`Patent No. 8,504,697
`
`
`
`The undersigned also certifies that a true and correct copy of this Notice of
`
`Appeal was served on July 10th, 2015 on counsel of record for Petitioner Apple
`
`Inc. by electronic mail (by agreement of the parties) and by courier at the following
`
`addresses:
`
`Jeffrey P. Kushan (jlCushan@sidley.com)
`Joseph A. Micallef (jmicallef@sidley.corn)
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, DC 20005
`
`Date: July 10, 2015
`
`By: IJ’/‘l*
`
`
`
`Naveen Modi
`
`Registration No. 46,224
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, DC 20005
`(202) 551-1700
`naVeenmodi@paulhastings.com
`
`Counselfor Vz'rnetXInc.
`
`
`
`
`
`Trials@uspto. gov
`571-272-7822
`
`Paper 41
`Date: May 11, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC,
`
`Petitioner,
`
`V.
`
`VIRNETX INC.,
`Patent Owner.
`
`Case IPR2014—00238
`
`Patent 8,504,697 B2
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 US. C. § 3]8(a) and 37 C.F.R. § 42. 73
`
`I. BACKGROUND
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1) (“Pet”) seeking an
`
`inter partes review of claims 1-11, 14-25, and 28—30 of U.S. Patent No.
`
`8,504,697 B2 (Ex. 1001, “the ’697 patent”) pursuant to 35 U.S.C. §§ 311—~
`
`319. On May 14, 2014, the Board instituted an inter partes review of claims
`
`1-11, 14-25, and 28~30 (Paper 15) (“Dec. on Inst”).
`
`
`
`IPRZO 14-0023 8
`
`Patent 8,504,697 B2
`
`Subsequent to institution, VirnetX (“Patent Owner”) filed a Patent
`
`Owner Response (Paper 30) (“PO Respf’), and Petitioner filed a Reply
`
`(Paper 33) (“Pet Reply”). An Oral Hearing was conducted on February 9,
`
`201 5.
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`
`decision is issued pursuant to 35 U.S.C. § 3l8(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims l—1l, 14-25, and 28-30 of the
`
`’697 patent are unpatentable.
`
`A.
`
`The ’697 Patent (Ex. 100])
`
`The ’697 patent describes methods for communicating over the
`
`internet. EX. 1001, 10:7—8.
`
`B.
`
`Illustrative Claim
`
`Claim 1 of the ’697 patent is reproduced below:
`
`A method of connecting a first network device and
`1.
`a second network device, the method comprising:
`intercepting, from the first network device, a request to
`look up an internet protocol (IP) address of the second network
`device based on a domain name associated with the second
`
`network device;
`in response to the request, whether the
`determining,
`second network device is available for a secure communications
`
`service; and
`
`initiating a secure communication link between the first
`network device and the second network device based on a
`
`determination that the second network device is available for
`
`the secure communications service;
`
`
`
`IPR2014~00238
`
`Patent 8,504,697 B2
`
`wherein the secure communications service uses the
`
`secure communication link to communicate at
`
`least one of
`
`video data and audio data between the first network device and
`
`the second network device.
`
`C.
`
`Cited Prior Art
`
`Wesinger
`
`US 5,898,830
`
`Apr. 27,1999
`
`(EX. 1008)
`
`H. Schulzrinne, et al., SIP: Session Initiation Protocol, Network Working
`Group, Request for Comments: 2543, Bell Labs, March, 1999 (“RFC 2543”
`EX. 1012).
`
`D.
`
`instituted Grounds of Unpatentability
`
`-‘References:
`wesinger
`
`I it
`I
`
`4
`
`I
`
`i§102
`
`I
`
`
`
`8'].iClaims.Chpallenged 9.
`1—3,8-11,14—1i7,I22-255,
`and 28-30
`
`
`
`
`
`Wesinger and RFC 2543
`
`§103
`
`4-7 and 18-21
`
`E.
`Secure coinmunication link
`
`I Claimlnterpretation
`
`Patent Owner argues that the term “secure communication link” must
`
`include encryption. See, e. g., PO Resp. 11, 13-19. Patent Owner, however,
`
`does not demonstrate sufficiently that the construction of this term impacts
`
`any issue in this proceeding. Therefore, we decline to construe this term.
`
`Virtual Private Network
`
`In the Decision, we construed the term “Virtual Private Network” to
`
`include a secure communication link that includes a portion of a public
`
`network. Dec. on Inst. 9-10. Patent Owner argues that “the Board need not
`
`construe this term .
`
`.
`
`. and [the construction of this term] does not appear to
`
`impact any of the issues in this case.” PO Resp. 21. In View of Patent
`
`
`
`
`
`IPR2014—O0238
`
`Patent 8,504,697 B2
`
`Owner’s observation that the construction of this term does not impact any
`
`of the issues in this case, we decline to construe this term.
`
`Intercegting a reguest
`
`In the Decision, we construed the term “intercepting” a request as
`
`receiving a request pertaining to a first entity at another entity. Dec. on
`
`Inst. 12. Patent Owner states that “it does not appear that the construction of
`
`‘intercepting’ will bear on the outcome of the issues in this inter partes
`
`review.” PO Resp. 23. In View of Patent Owner’s observation that the
`construction of the term “intercepting” has no bearing on the issues in this H
`
`proceeding, we decline to construe this term.
`
`Determining in response to the request
`
`Patent Owner disputes the construction of this term in related
`
`IPR20l4-0023 7. Patent Owner does not specify how the construction of the
`
`term “determining” is relevant in the present proceeding. Because the
`
`relevance of the construction of this term with any particular issue in this
`
`proceeding has not been established, we decline to construe the term
`
`“determining” in this proceeding.
`
`Neither party has expressed disagreement with the constructions of
`
`other claim terms of the ’697 patent, and we see no reason to modify these
`
`constructions based on the evidence introduced during trial. We maintain
`
`these constructions for this Final Written Decision.
`
`
`
`
`
`IPR2014—iO0238
`
`Patent 8,504,697 B2
`
`11. ANALYSIS
`
`A.
`
`Wesinger
`
`For at least the foregoing reasons, we find that Petitioner has
`
`demonstrated that claims 1-3, 8-11, 14-17, 22—25, and 28—30 are
`
`anticipated by Wesinger under 35 U.S.C. § 102.
`
`Claim 1, for example, recites “determining, in response to the request,
`
`whether the second network device is available for a secure communication
`
`service.” Claim 16 recites a similar feature. Patent Owner argues that
`
`Wesinger fails to disclose this feature. PO Resp. 37.
`
`In particular, Patent Owner argues that Wesinger discloses “two
`
`distinct requests: a ‘DNS [query]’ and ‘an ensuing connection regues .” PO
`
`Resp. 40. Patent Owner further alleges that Wesinger discloses the “DNS
`
`query” is “for the network address of the destination D” but that “Wesinger ’s
`
`firewall decides whether to allow or deny a requested connection upon
`
`receiving a connection request” and “does not perform its firewall
`
`allow/disallow processing .
`
`.
`
`. in response to [the] DNS request [or query].”
`
`PO Resp. 38, 39. We are not persuaded by Patent Owner’s argument.
`
`Even if Patent Owner’s contention that Wesinger discloses a
`
`“connection request” is correct, Patent Owner does not demonstrate
`
`sufficiently that Wesinger fails to disclose that the “connection request” is,
`
`in fact, not associated with the “look up [of] an internet protocol (IP) address
`
`of the second network device based on a domain name associated with the
`
`second network device.” For example, Wesinger explicitly discloses that,
`
`responsive to the “connection request,” an IP address (e. g., “Virtual host
`
`X.X.X.X., where X.X.X.X. represents an IP address,” Ex. 1008, 10:60-61)
`
`
`
`IPR2014—0023 8
`
`Patent 8,504,697 B2
`
`of a network device is provided based on a domain name (e. g.,
`
`“homer.odyssey.com,” EX. 1008, 10:59, 10:64-65) that is included in the
`
`“connection request.” Hence, Wesinger discloses a request (e. g.,
`
`“connection request”) to look up an internet protocol (IP) address of a device
`
`based on a domain name associated with the device, as recited in claim 1.
`
`Wesinger also discloses “two mappings are required in order to handle
`
`a connection request” in which “a first mapping maps from the host name
`
`received in the connection request to the IP address of a virtual host.”
`
`EX. 1008, 10: 51——54. In other words, Wesinger discloses a “connection
`
`request” that contains a “host name” that is mapped to a corresponding “IP
`
`address of a virtual host.” Patent Owner does not explain sufficiently a
`
`difference between the “connection request” of Wesinger that contains a
`
`host name and is used to look up a corresponding IP address and the
`
`disputed claim feature of a request to look up an IP address of a device based
`
`on a domain name.
`
`Wesinger also discloses, for example, that the “connection request” is
`
`received (Ex. 1008, 16:22) and, in response, “[f]irst the address and name .
`
`.
`
`. are obtained of the virtual host for which a connection is requested .
`
`.
`
`.
`
`[and] identified .
`
`.
`
`. by IP address” (Ex. 1008, 16:29-31), that “[o]nce the
`
`process has determined which host it is .
`
`.
`
`. the process changes to a user
`
`profile .
`
`. .” (Ex. 1008, 16:43-44) and “[i]f the remote host satisfied the
`
`required level of access scrutiny .
`
`.
`
`. then the connection is allowed.”
`
`Ex. 1008, 16:57—58, 66-67. Hence, Wesinger discloses receiving a
`
`“connection request” (or “request”) to look up an IP address of a device
`
`based on a domain name (e.g., identified by an IP address), as recited in
`
`claim 1.
`
`
`
`iPR20l4—O023 8
`
`Patent 8,504,697 B2
`
`Patent Owner argues that-“the DNS query [of Wesinger] does not
`
`invoke the firewall allow/disallow decision” and “does not perform its
`
`firewall allow/disallow processing .
`
`.
`
`. in response to a DNS request.” PO
`
`Resp. 38, 39. To the extent that the so-called “DNS query” to which Patent
`
`Owner refers is the “request to look up an internet protocol (IP) address of”
`
`a device based on a domain name, as recited in claim 1, for example, we are
`
`not persuaded by Patent Owner’s contention that Wesinger fails to disclose
`
`this feature for at least the previously discussed reasons pertaining to
`
`Wesinger’s disclosure of the “connection request.”
`
`Wesinger discloses that “[i]f all the rules are satisfied, then the
`
`connection [with the virtual host] is allowed” and that “[o]nce the
`
`connection has been allowed, the Virtual host process .
`
`.
`
`. performs .
`
`.
`
`.
`
`connection processing.” EX. 1008, 16:66 — 17:3. Patent Owner argues that
`
`Wesinger discloses determining “whether the incoming connection request .
`.
`. is allowed,” but fails to disclose “determin[ing] whether the .
`.
`. ‘second
`
`device’ is available for a secure communications service,” as recited in claim
`
`1. PO Resp. 46-47.,
`
`Patent Owner does not explain sufficiently a difference between the
`
`determination of whether a requested connection with a device is “allowed”
`or not and the determination of whether a device is “available” for a
`
`connection. One of ordinary skill in the art would have understood that if a
`
`connection with a virtual host is determined to be allowed if all rules are
`
`satisfied (as Wesinger discloses), then the virtual host would be determined
`
`to be “available” for the connection, the connection being formed with the
`
`virtual host based on the determination. Under an ordinary and customary
`
`construction of the term “available” as would have been understood by one
`
`
`
`IPR2014-0023 8
`
`Patent 8,504,697 B2
`
`of ordinary skill in the art in light of the Specification as being accessible for
`
`use, at hand, or usable,1 we do not discern a substantial difference between
`
`determining whether a device is allowed to connect (and connecting only if
`
`the device is allowed) and determining whether a device is available (or
`
`accessible for use, at hand, or usable) for a connection (and connecting only
`
`if the device is accessible for use, at hand, or usable). In both cases, a
`
`deterrnination is made as to whether a connection will be made with a device
`
`and the connection is created based on this determination.
`
`Patent Owner does not argue that the Specification provides a
`
`specialized definition of the term “available.” Nor do we identify a
`
`specialized definition of the term in the Specification. However, we note
`
`that the Specification discloses that “DNS proxy .
`
`.
`
`. determines whether the
`
`user has sufficient security privileges to access the site. If so, DNS proxy .
`
`.
`
`. request[s] that a virtual private network be created between user computer .
`
`.
`
`. and secure target site.” Ex. 1001, 40:31-42. In another embodiment in
`
`the Specification, a check is made “to determine whether the user is
`
`authorized to connect to the secure host” by “reference to an internally
`
`stored list” and “[i]f the user has sufficient security privileges, then .
`
`.
`
`. a
`
`secure VPN is established between the user’s computer and the secure target
`
`site.” EX. 1001, 41:14-27. In yet another embodiment in the Specification,
`
`a “[c]lient has permission to access target computer” and “the client’s DNS
`
`request would be .
`.
`. forward[ed] .
`.
`. to gatekeeper 2603 [which] would
`establish a VPN between the client and the requested target.” EX. 1001,
`
`41 :47—5 1. In another embodiment, the “[c]lient does not have permission to
`
`1 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 90
`
`(1975) (Ex. 3001).
`
`
`
`IPR2014—00238
`
`Patent 8,504,697 B2
`
`access target computer” and the “gatekeeper would reject the request.”
`
`Ex. 1001, 41:57-61.
`
`In each of the identified embodiments in the Specification, availability
`
`of the second network device (i.e., a secure target site) for a secure
`
`communication service is determined based on whether the user (of the first
`
`networkdevice) has “sufficient security privileges” or “permission to
`
`access” the target computer. We do not identify, and Patent Owner does not
`
`point out, an embodiment in the Specification in which the availability of the
`
`second network device is determined by other methods or criteria. To the
`
`extent that determining whether the second network device is available for a
`
`secure communications service, as recited in claim 1, is determining that the
`
`user of the first network device has sufficient security privileges or
`
`permission to access the second network device (i.e., the criteria disclosed in
`
`the Specification), Wesinger discloses this feature. For example, Wesinger
`
`discloses that if “the remote host” (i.e., first network device) “satisfies the
`
`required level of access scrutiny,” is on an “Allow database,” and is not on a
`
`“Deny database,” then “the connection is allowed.” See, e.g., Ex. 1008,
`
`16:57-67.
`
`Patent Owner argues that Wesinger fails to disclose intercepting a
`
`request to look up an internet protocol (IP) address of the second network
`
`device, as recited in claim 1, for example. In particular, Patent Owner
`
`argues that Wesinger discloses “prompts from the firewall in the prior art
`
`‘custom’ embodimen ” but “does not disclose that they function as or result
`
`in a request to look up an IP address as claimed” and “does not disclose
`
`combining the name prompts .
`
`.
`
`. of the prior art embodiment with its
`
`allegedly inventive disclosed embodiments.” PO Resp. 49, 50. We are not
`
`
`
`
`
`
`
`IPR20 14-0023 8
`
`Patent 8,504,697 B2
`
`persuaded by Patent Owner’s argument. Even if the alleged “prompts” from
`
`the firewall of Wesinger do not “function as or result in a request to look up
`
`an IP address,” as Patent Owner contends, Patent Owner does not
`
`demonstrate that the request from the user also does not “function as or
`
`result in a request to look up an IP address.” As previously discussed above,
`
`Wesinger discloses that “the firewall .
`
`.
`
`. receives from the user a request
`
`pertaining to a first entity.” For at least the previously discussed reasons, we
`
`are not persuaded by Patent Owner that the request from the user in
`
`Wesinger materially differs from the claimed “request.”
`
`Patent Owner argues that Wesinger fails to disclose “intercepting”
`
`under the construction that “intercepting” must include “evaluating the
`
`request in relation to establishing a secure communication link.” PO
`
`Resp. 51. Claim 1 recites intercepting a request to look up an internet
`
`protocol (IP) address of the second network device based on a domain name
`
`associated with the second network device and determining (in response to
`
`the request) whether the second network device is available for a secure
`
`communications service. Patent Owner appears to re—iterate arguments that
`
`Wesinger fails to disclose -intercepting a request to look up an IP address of
`
`the second network device based on a domain name and determining, in
`
`response to the request, whether the second network device is available for a
`
`secure communications service, as recited in claim 1, for example. For at
`
`least the previously discussed reasons, we are not persuaded by Patent
`
`Owner’s argument.
`
`Regarding claims 8, 9, 22, and 23, Patent Owner argues that Wesinger
`
`discloses devices that “need not be a mobile device, such as the claimed
`
`notebook computer.” PO Resp. 53. Thus, Patent Owner argues that
`
`10
`
`
`
`IPR20l4‘—00238
`
`Patent 8,504,697 B2
`
`Wesinger fails to disclose a notebook computer. We are not persuaded by
`
`Patent Owner’s argument. Patent Owner does not contest that Wesinger
`
`discloses a “computer.” One of ordinary skill in the art at the time of the
`
`invention would have understood that a “notebook computer” is a
`
`“computer” and immediately would have envisioned Wesigner as describing
`
`both desktop and notebook computers as both types of computers would
`
`have been used to connect to networks.
`
`Regarding claims 10 and 29, Patent Owner argues that Wesinger fails
`
`to disclose receiving the request to determine whether the second network
`
`device is available for secure communications service, the request being the
`
`request to look up an internet protocol (IP address of the second network).
`
`PO Resp. 53-54. Patent Owner also argues that “the DNS query [of
`
`Wesinger] is not received .
`
`.
`
`. ‘to determine whether the second network
`
`device is available for the secure communications service.”’ PO Resp. 54.
`
`Regarding claims 14 and 28, Patent Owner argues that Wesinger discloses a
`
`“firewall [that] makes the .
`
`.
`
`. determination as a function of an ‘ensuing’
`
`connection request following the DNS query and resolution process” but that
`
`the determination “is not a function of a domain name look up.” PO
`
`Resp. 55. We are not persuaded by Patent Owner’s arguments for at least
`
`the previously discussed reasons.
`
`B.
`
`Wesinger and RFC 2543 — Claims 4—7 and ]8—2I
`
`Patent Owner argues that it would not have been obvious to one of
`
`ordinary skill in the art to have combined the teachings of Wesinger and
`
`RFC 2543 because “Wesinger teaches away from .
`
`.
`
`. RFC 2543.” PO Resp.
`
`56-57.
`
`ll
`
`
`
`IPR20 14-0023 8
`
`Patent 8,504,697 B2
`
`As previously discussed, Wesinger discloses a system in which a
`
`client sends a connection request for connection with a device and, if access
`
`is granted and “[i]f all the rules are satisfied, then the connection [with the
`
`device] is allowed.” EX. 1008, 16:66-67. Petitioner does not indicate that
`
`Wesinger discloses a specific type of connection or session between devices.
`
`The RFC 2543 reference discloses a similar system in which a client
`
`“send[s] a request” in order to “establish .
`
`.
`
`. multimedia sessions or calls.”
`
`Ex. l0l2 at 7, 13. Thus, RFC discloses that one of ordinary skill in the art
`
`would have known that different types of connections or sessions that may
`
`be established between devices include, for example, multimedia session or
`
`calls. We agree with Petitioner that the combination of such known features,
`
`performing their known functions, would have resulted in the mere
`
`predictable result of a system in which a connection or session is established
`
`between devices (Wesinger and RFC 2543), the connection or session being,
`
`for example, a multimedia session or call (RFC 2543).
`
`Patent Owner argues that it would not have been obvious to one of
`
`ordinary skill in the art to have combined Wesinger and RFC 2543 because,
`
`according to Patent Owner, Wesinger discloses a “firewall [that] should
`
`ideally .
`
`.
`
`. not have any other user-accessible programs running on it” to
`
`avoid “security risks.” PO Resp. 56, 57 (citing EX. 1008', 322541, 7:l—5).
`
`As an initial matter, Wesinger discloses one possible scenario in
`
`which the firewall “ideally” does not have other user-accessible programs
`
`running on it. EX. 1008, 7:2. Wesinger merely discloses one potential
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`option but does not disclose that the firewall must not have any other user-
`
`accessible programs running on it. For at least this reason, we are not
`
`persuaded by Patent Owner’s arguments.
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`12
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`IPR2014—0023 8
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`Patent 8,504,697 B2
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`Also, Patent Owner does not demonstrate sufficiently that the
`
`established session between devices in Wesinger requires “any other user-
`accessible programs running on it” beyond applications needed to establish
`
`the desired connection or that if the session in Wesinger is a known
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`“multimedia session or call,” that such a session would require such
`
`additional “user-accessible programs.” One of ordinary skill in the art
`
`would have understood that a “multimedia session or call” connection
`
`between devices established in Wesinger would involve applications needed
`
`for the establishment of the desired connection and not include extraneous,
`
`unnecessary applications because, at least, the non—inclusion of unnecessary
`
`elements would be a matter of common sense, the unnecessary elements not
`
`being of any use. Hence, even if Wesinger discloses that the firewall must
`
`not have “other user-accessible programs running on it” (Patent Owner does
`
`not demonstrate or allege that Wesinger discloses or suggests this alleged
`
`requirement, however), Patent Owner does not show persuasively that a
`
`firewall for establishing a specifically desired type of connection between
`
`devices requires such “other user-accessible programs.”
`
`Patent Owner argues that there an “express teaching in Wesinger that
`
`merging these applications [of RFC 2543] with Wesinger’s architecture or
`
`system is undesirable because it may lead to further security risks.” PO
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`Resp. 57 (citing Ex. 2025 ‘ll 69). While Patent Owner points out that
`
`Wesinger discloses that the firewall “ideally” does not have other user-
`
`accessible programs running on it (Ex. 1008, 7:2), Patent Owner does not
`
`demonstrate persuasively that Wesinger, in fact, also provides an “express
`
`teaching” that “merging” applications is undesirable, that such “merging”
`
`actions would lead to “further security risks,” or that “merging applications”
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`13
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`IPR2O 14-0023 8
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`Patent 8,504,697 B2
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`is necessary to provide for a multimedia connection between devices, for
`
`example.
`
`C.
`
`Declaration ofMichael Fratio
`
`Patent Owner argues that the Declaration of Michael Fratto Regarding
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`U.S. Patent No. 8,504,697 (EX. 1003) should not be given any weight. See,
`
`e, g. , PO Resp. 1-8. We did not rely on the testimony of Mr. Fratto in this
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`decision. Therefore, Patent Owner’s argument is moot.
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`ORDER
`
`Petitioner has demonstrated, by a preponderance of the evidence, that
`claims 1-3, 8-11, 14-17, 22-25, and 28-30 are anticipatediby Wesinger,
`
`under 35 U.S.C. § 102, and that claims 4-7 and 18-21 are unpatentable over
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`Wesinger and RFC 2543, under 35 U.S.C. § 103(a).
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that claims 1-1 1, 14-25, and 28-30 of the ’697 patent
`
`have been shown to be unpatentable;
`
`This is a final decision. Parties to the proceeding seeking judicial
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`review of the decision must comply with the notice and service requirements
`
`of 37 C.F.R. § 90.2.
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`14
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`IPR2O 14-00238
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`Patent 8,504,697 B2
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`PETITIONER:
`
`Jeffrey P. Kushan
`Joseph A. Micallef
`SIDLEY AUSTIN LLP
`
`jkushan@sid1ey.com
`jmical1ef@sidIey.com
`
`PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`
`PAUL HASTINGS LLP
`
`josephpa1ys@pau1hasti1gs.com
`naveenmodi@pau1hastings.com
`
`Jason B. Stach
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`ias0n.stach@finnegan.c0m
`
`15