IPR2014-00403
`
`
`
`
`Paper No. 34
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`MICROSOFT CORP. and APPLE INC.,
`Petitioner
`
`v.
`
`VIRNETX, INC.,
`Patent Owner
`___________________
`
`Case IPR2014-00403
`Patent 7,987,274
`____________________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`__________________________________________________________________
`
`Petitioner’s Reply
`
`
`
`
`
`
`
`
`
`
`
`Paper No. 34
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`MICROSOFT CORP. and APPLE INC.,
`Petitioner
`
`v.
`
`VIRNETX, INC.,
`Patent Owner
`___________________
`
`Case IPR2014-00403
`Patent 7,987,274
`____________________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`__________________________________________________________________
`
`Petitioner’s Reply
`
`
`
`
`
`
`
`
`IPR2014-00403
`
`Table of Contents
`
`I.
`
`Claim Construction ....................................................................................... 1
`
`
`
`A.
`
`B.
`
`The Broadest Reasonable Interpretation Applies ............................ 1
`
`The Reexamination Prosecution Histories and Specification Do
`Not Contain the Alleged Disclaimers of Claim Scope ...................... 2
`
`C.
`
`The Board Should Maintain Its Claim Constructions ..................... 3
`
`1. VPN Communication Link ............................................................. 3
`
`2. Tunnel Packeting ............................................................................. 5
`
`3. Client Computer .............................................................................. 5
`
`II. Ground 1: Provino Anticipates Claims 1, 7, 8, 10, 12, 13, 15, and 17 ....... 6
`
`Provino’s Nameserver 32 is a Secure Domain Name Service ......... 6
`
`Provino’s Message Packets Seek Information From Server 31(s) 10
`
`Provino Discloses Use of Tunneling and Tunnel Packeting .......... 12
`
`A.
`
`B.
`
`C.
`
`D.
`
`Secure Server 31(s)’s Address Is Registered With Nameserver 32
` ............................................................................................................. 13
`
`
`III. Ground 2: Provino In View of Kosiur Renders Obvious Claims 2-5 ..... 14
`
`IV. Conclusion .................................................................................................... 15
`
`
`
`
`i
`
`
`
`IPR2014-00403
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Adams Respiratory Therapeutics, Inc. v. Perrigo Co.,
`616 F.3d 1283 (Fed. Cir. 2010) .........................................................................................3
`
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) .......................................................................................14
`
`Apple Inc. v. SightSound Techs., L.L.C., CBM2013-00023 ...........................................10
`
`Denso Corp. & Clarion Co. v. Beacon Navigation, IPR2013-00026 ..........................11
`
`Geo M. Martin Co. v. Alliance Machine Sys. Int’l LLC,
`618 F.3d 1294 (Fed. Cir. 2010) .......................................................................................14
`
`Grober v. Mako Prods., Inc.,
`686 F.3d 1335 (Fed. Cir. 2012) .........................................................................................5
`
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2004) .........................................................................................9
`
`In re Cuozzo Speed Techs., LLC,
`2015 WL 44866 (Fed. Cir. Feb. 4, 2015) ........................................................................1
`
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) ...........................................................................................6
`
`In re Swanson,
`540 F.3d 1368 (Fed. Cir. 2008) .........................................................................................1
`
`Marine Polymer Techs., Inc. v. Hemcon, Inc.,
`672 F.3d 1350 (Fed. Cir. 2012) (en banc) ......................................................................3
`
`SAP Am., Inc. v. Versata Dev. Group, Inc., CBM2012-0001 ..........................................9
`
`Smith & Nephew v. Convatec Tech., IPR2013-00102 .....................................................11
`
`Standard Havens Products, Inc. v. Gencor Indus., Inc.,
`953 F.2d 1360 (Fed. Cir. 1991) .......................................................................................11
`
`i
`
`
`
`IPR2014-00403
`
`Tempo Lighting Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) .......................................................................................2, 3
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) .........................................................................................7
`
`
`
`
`
`ii
`
`
`
`IPR2014-00403
`
`
`
`
`Petitioner’s Reply (Paper 34)
`
`The Board correctly found Provino to anticipate claims 1, 7, 8, 10, 12, 13, 15
`
`and 17. Paper No. 13 (“Dec.”) at 12-21. It also correctly found Provino in view of
`
`Kosiur to render claims 2-5 obvious and, in view of Xu, to render claim 18
`
`obvious. Id. These findings are supported by more than substantial evidence and
`
`should be maintained.
`
`I.
`
`Claim Construction
`
`A. The Broadest Reasonable Interpretation Applies
`
`Patent Owner challenges the Board’s determinations as being based on an
`
`improper use of the broadest reasonable interpretation standard (BRI), because its
`
`ability to amend the claims was “severely restricted.” Patent Owner Response,
`
`Paper No. 26 (Resp.) at 2-3. But Patent Owner never sought to amend its claims,
`
`and the Federal Circuit has recently rejected that precise theory as a reason for the
`
`Board to not employ BRI in IPR proceedings. In re Cuozzo Speed Techs., LLC,
`
`2015 WL 44866, *7 (Fed. Cir. Feb. 4, 2015). Patent Owner also contends the
`
`Board erred by not employing constructions adopted by a district court in related
`
`litigation, but those constructions rest on a different claim construction standard
`
`and are not binding on nor are entitled to deference by the Board. See In re
`
`Swanson, 540 F.3d 1368, 1377-78 (“considering an issue at the district court is not
`
`equivalent to the PTO having had the opportunity to consider it”). Patent Owner’s
`
`attack on the Board’s use of the BRI standard is a transparent attempt to import
`
`
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`unclaimed limitations into its claims, and must be rejected.
`
`B.
`
`The Reexamination Prosecution Histories and Specification Do
`Not Contain the Alleged Disclaimers of Claim Scope
`
`Patent Owner contends it made “disparagements” and prosecution
`
`disclaimers that limit the scope of its claims. Resp. at 9, 16-18, 27-30, 33-34.
`
`What these arguments reveal is that the claims, based on their actual language,
`
`squarely encompass what is disclosed in or rendered obvious by the prior art.
`
`Moreover, even if they were relevant under the BRI (which they are not), Patent
`
`Owner’s actions plainly do not satisfy the requirements for an effective disclaimer.
`
`First, the putative disclaimers are all based on statements made during
`
`reexamination proceedings — some of which are still pending—and none was
`
`accompanied by a claim amendment. Under Tempo Lighting Inc. v. Tivoli, LLC,
`
`742 F.3d 973 (Fed. Cir. 2014), which Patent Owner cites, this means these putative
`
`prosecution disclaimers have no legal effect. In Tempo, the Federal Circuit
`
`confirmed “the PTO is under no obligation to accept a claim construction
`
`proffered as a prosecution history disclaimer.” Id. at 978. It then affirmed the
`
`Board’s finding of a disclaimer, but only because it was based on statements made
`
`at the examiner’s request and in conjunction with claim amendments during the
`
`original examination of the patent. Id. at 977. Tempo thus confirms the Board
`
`has no obligation to recognize a putative prosecution disclaimer in these
`
`proceedings. More importantly, it makes clear that statements made during
`
`
`
`2
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`reexamination are not equivalent to those made during original examination,
`
`especially when unaccompanied by a claim amendment. Id.; see Marine Polymer
`
`Techs., Inc. v. Hemcon, Inc., 672 F.3d 1350, 1364 (Fed. Cir. 2012) (en banc) (“if,
`
`in reexamination, an examiner determines that particular claims are invalid and
`
`need amendment to be allowable, one would expect an examiner to require
`
`amendment rather than accept argument alone”).
`
`C. The Board Should Maintain Its Claim Constructions
`
`Patent Owner’s challenges to specific claim constructions are unwarranted,
`
`and Board should maintain the constructions in its institution decision.
`
`1.
`
`VPN Communication Link
`
`Patent Owner argues a “VPN communication link” must: (i) be “in a VPN,”
`
`(ii) involve a “network” of computers, and (iii) allow two computers to have
`
`“direct communication.” Resp. at 4-5. These limitations have no basis in the
`
`claim language and are inconsistent with the specification. For example, adding
`
`first two limitations to the meaning of the term “VPN communication link” would
`
`exclude a preferred embodiment, which is plainly improper. See Adams
`
`Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir.
`
`2010) (“A claim construction that excludes the preferred embodiment ‘is rarely, if
`
`ever, correct and would require highly persuasive evidentiary support.’”). Also,
`
`Figure 33 depicts a point-to-point connection between two computers, which
`
`
`
`3
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`Patent Owner and its expert identify as a “VPN communication link.” See Resp. at
`
`6-7 (“VPN communication link 3321 travers[es] the unsecure public network,
`
`Internet 3302 to connect computer 3301 with secure server 3320.”); Ex. 2041
`
`¶¶ 16-17; Ex. 1090 at 11:7-12:1 (agreeing the depicted link originates at Computer
`
`3301 and ends at Server 3320). Because a point-to-point connection can be a
`
`“VPN communication link” according to Patent Owner and its expert, adding
`
`requirements for additional unspecified computers on a network and limiting point-
`
`to-point connections to those within a VPN is improper under BRI.
`
`Patent Owner next asserts, based on prosecution history statements, a VPN
`
`communication link requires “direct” communications. Resp. at 9. This argument
`
`must be rejected because it was not accompanied by a claim amendment.
`
`Moreover, there is no clear explanation in the prosecution history or the
`
`specification of what “direct” means. For example, the ’274 specification
`
`describes VPN communication links that traverse firewalls, edge routers, and
`
`proxies between the end devices in a connection. Ex. 1001 at 33:30-61, 45:22-23,
`
`49:18-59, 51:34-36; Ex. 1011 at ¶ 21. The specification and prosecution history do
`
`not indicate which, if any, of these configurations would render communications
`
`“indirect” rather than “direct.” See Ex. 1090 at 12:8-13:19. Without a clear
`
`explanation of what is or is not being excluded by use of the term “direct”
`
`communication, there can be no clear and unequivocal disavowal of “indirect”
`
`
`
`4
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`communications. See Grober v. Mako Prods., Inc., 686 F.3d 1335, 1343
`
`(“prosecution history limits claim meaning when an applicant ‘clearly and
`
`unmistakably’ disclaims scope or meaning”). The Board should not read a
`
`nebulous “direct” limitation into the claims in these proceedings based on the BRI
`
`standard.
`
`The Board correctly found that an “access request message” sent as part of
`
`the process of establishing a secure connection can be sent via a VPN
`
`communication link, as claim 11 specifies the VPN communication link is initiated
`
`in response to the access request message. Dec. at 8-9. Patent Owner now
`
`contends (Resp. at 7-8) that claim 11 concerns “re-initiating” a connection, not
`
`“initiating” one, citing an unrelated portion of the specification that addresses load
`
`balancing. See Ex. 1090 at 27:15-32:19. Nothing in the claim supports limiting
`
`the claim in this manner – even Patent Owner’s expert admitted that claim 11 does
`
`not refer to “reinstating” or “load balancing.” Id. at 28:7-8, 32:18-19.
`
`2.
`
`Tunnel Packeting
`
`Patent Owner argues the Board’s construction of “tunnel packeting” is
`
`flawed, but then advances a detailed and highly conditional construction that is
`
`inconsistent with term’s plain language. Resp. at 18-20. The Board should
`
`maintain its construction. Dec. at 10-11; Ex. 1011 ¶ 38.
`
`3.
`
`Client Computer
`
`
`
`5
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`Patent Owner attempts to narrow the meaning of the term “client computer”
`
`to a “user’s computer,” arguing that the ’274 specification “repeatedly and
`
`consistently” “equates the user’s computer 2601 with the ‘client computer’ in
`
`claim 15.” Resp. at 21-22. The ’274 patent disclosure does no such thing – the
`
`language Patent Owner quotes to support its argument is from a different patent
`
`and is not present in the ’274 specification. Id. at 21 (quoting Ex. 1025). The
`
`’274 specification uses the term “user’s computer” only twice, including once to
`
`describe prior art systems. Ex. 1001 at 38:61-62, 42:28-29. This is far from a
`
`repeated and consistent use of the term, and plainly does not operate to redefine
`
`“client computer” with the “reasonable clarity, deliberateness, and precision”
`
`necessary. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Because a
`
`person of ordinary skill in the art would understand a “client” is any “application
`
`program that establishes connections for the purpose of sending requests,” the
`
`Patent Owner’s new definition must be rejected. Ex. 1021 at 5.
`
`II. Ground 1: Provino Anticipates Claims 1, 7, 8, 10, 12, 13, 15, and 17
`
`The Board correctly found Provino to anticipate claims 1, 7, 8, 10, 12, 13, 15
`
`and 17. Dec. at 12-19. The record fully supports the Board’s determination.
`
`A.
`
`Provino’s Nameserver 32 is a Secure Domain Name Service
`
`Patent Owner argues that because it “disparaged” use of “conventional”
`
`domain name services, its claims should now be read as excluding any systems or
`
`
`
`6
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`processes that include or make use of such name services. Resp. at 27-36. The
`
`basis of this supposed disclaimer is illusory – the ’274 patent itself shows systems
`
`that use standard domain name services as being part of the supposed invention.
`
`See Ex. 1001 at Fig. 33; 46:52-58; 48:50-63. The specification’s comments about
`
`“conventional” domain name service functions – as “provid[ing] a look-up
`
`function that returns the IP address of a requested computer or host” or “allow[ing]
`
`hosts to retrieve automatically the public keys of a host that the host is to
`
`communicate with” (Ex. 1001 at 38:54-39:22) – plainly do not amount to a
`
`disavowal of a specific feature of the claimed systems and methods. Resp. at 29-
`
`31; see Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed.
`
`Cir. 2012) (“Mere criticism of a particular embodiment encompassed in the plain
`
`meaning of a claim term is not sufficient to rise to the level of clear disavowal.”).
`
`More directly, the Provino systems are not “conventional” domain services,
`
`but, like the SDNS described in the ’274 patent, are systems that employ
`
`“unconventional” domain name functionality. Ex. 1011 ¶¶ 35-36; Ex. 1001 at
`
`46:52-58. In fact, the ‘274 patent explains that, like Provino’s nameserver 32,
`
`“SDNS 3313 contains a cross-reference database of secure domain names and
`
`corresponding secure network addresses. That is, for each secure domain name,
`
`SDNS 3313 stores a computer network address corresponding to the secure
`
`domain name.” Id. at 47:15-19. And, as Patent Owner’s expert admits, this is the
`
`
`
`7
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`key difference between a “conventional” domain service and a SDNS – only the
`
`latter receives “a query message [] requesting a secure computer address and
`
`returns a secure computer address for the requested secure domain name,” using
`
`a cross-reference database of secure domain names. Ex. 1090 at 21:14-22:1, 23:16-
`
`26:15, 16:9-17:17; Ex. 1011 ¶ 15.
`
`This key defining feature the ’274 patent consistently uses to define the
`
`SDNS—its ability to query a database of secure network addresses based on a
`
`secure domain name—similarly describes Provino’s nameserver 32. Patent
`
`Owner’s expert admitted as much when explaining that one of the functions of
`
`Provino’s nameserver 32 is “to try to resolve addresses within [VPN] 15,”
`
`including for server 31(s), which may be a secure computer with a secure network
`
`address. Ex. 1090 at 38:22-40:18. He also agreed that, once authorized by
`
`firewall 30, device 12(m) connects through firewall 30 to request and receive the
`
`secure network address of server 31(s) from nameserver 32 by providing the
`
`corresponding human readable internet address of server 31(s). Ex. 1090 at 38:5-
`
`21; Ex. 1003 at 9:56-60, 13:63-14:24. Thus, Provino’s nameserver 32 receives
`
`queries for secure devices and returns secure network address—just like the SDNS
`
`described in the ’274 patent. Ex. 1001 at 45:8-10.
`
`Patent Owner nonetheless asserts that nameserver 32 behaves just like
`
`Provino’s nameserver 17, which it alleges is “conventional.” Resp. at 35. Patent
`
`
`
`8
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`Owner ignores that Provino distinguishes nameserver 32 from public nameserver
`
`17, which cannot resolve queries for secure network addresses because they do not
`
`have network addresses for secure devices behind firewall 30 of VPN 15. Ex.
`
`1003 at 10:45-55, 11:11-14; compare with Ex. 1001 at 46:41-44; Ex. 1011 ¶ 14.
`
`Thus, in a transparent attempt to exclude Provino’s nameserver 32, Patent
`
`Owner and its expert ask the Board to import the nebulous limitation “conventional
`
`DNS functions” into its claims, citing In re Abbott Diabetes Care Inc., 696 F.3d
`
`1142, 1149-50 (Fed. Cir. 2004); Resp. at 30-31; Ex. 1090 at 17:11-18:8, 22:2-18.
`
`Abbott bears no resemblance to this case. In Abbott, every embodiment disclosed
`
`in the specification “repeatedly, consistently, and exclusively” showed the same
`
`feature, which led the court to equate the meaning of the claim term with that
`
`single feature. See Abbott, 696 F.3d at 1149-50 (explaining it was “not an instance
`
`where the specification would necessarily have to disavow an embodiment that
`
`would otherwise be covered by the plain language of the claims—rather claim
`
`terms [in Abbott were] entirely consistent with and even support[ed] the
`
`specification’s exclusive depiction.”). Here, by contrast, Patent Owner and its
`
`expert rely on different, alternative embodiments, rather than “repeatedly
`
`consistently, and exclusively” describing the same technique or feature. Resp. at
`
`30-31; Ex. 1090 at 17:5-18:8, 21:14-22:18; see SAP Am., Inc. v. Versata Dev.
`
`Group, Inc., CBM2012-0001, Paper 36 (Jan. 9, 2013) at 16. And, critically, the
`
`
`
`9
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`claims plainly encompass what it seeks to exclude. See Apple Inc. v. SightSound
`
`Techs., L.L.C., CBM2013-00023, Paper 101 (Oct. 7, 2014) at 13-14.
`
`As explained in § I.B, Patent Owner’s reliance on its own statements during
`
`reexaminations of related patents is equally unavailing. Self-serving statements
`
`regarding Provino in pending reexamination proceedings made without
`
`accompanying claim amendments are not legally effective disclaimers. Nor is
`
`there any precedent for Patent Owner’s position that it can somehow disclaim prior
`
`art encompassed by its claims by “disparaging” that prior art. And even these
`
`prosecution histories were legally relevant, what they show actually supports the
`
`Board’s and Petitioner’s mapping of Provino’s nameserver 32 to the claims. For
`
`example, in the prosecution history of U.S. Patent No. 7,188,180, Patent Owner
`
`argued to the PTO that its disclosure “explicitly states that a [SDNS] can resolve
`
`addresses for a secure domain name; whereas, a conventional domain name
`
`service cannot resolve addresses for a secure domain name.” Ex. 2040 at 7.
`
`B.
`
`Provino’s Message Packets Seek Information From Server 31(s)
`
`Patent Owner asserts the message packets sent to server 31(s) in Provino
`
`cannot be “access request messages” because Provino does not describe what the
`
`message packets contain, and thus they cannot possibly “seek communication,
`
`information, or services” from server 31(s). Resp. at 37-38. See also Dec. at 8.
`
`But when its expert was questioned about this feature of Provino, he agreed that
`
`
`
`10
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`“request[ing] access to whatever information is stored on server 31S . . . could be
`
`one reason to connect to 31S.” Ex. 1090 at 42:12-43:10. Likewise, Petitioner’s
`
`expert—whose substantive findings were never challenged during his deposition—
`
`similarly understood that “requests sent to server 31(s) by device 12(m) may be
`
`requests for information stored at the server 31(s).” Ex. 1011 ¶ 40; see Ex. 1090
`
`at 42:12-43:10 (discussing Ex. 1003 at 6:19-28).
`
`Patent Owner also fails to appreciate that an anticipatory reference need not
`
`duplicate word-for-word what is in the claims. Anticipation may be found “when a
`
`claimed limitation is . . . implicit in the relevant reference.” Standard Havens
`
`Products, Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991).
`
`Moreover, what an anticipatory reference teaches must be analyzed from the
`
`perspective of a person of ordinary skill: “[t]here must be no difference between
`
`the claimed invention and the reference disclosure, as viewed by a person of
`
`ordinary skill in the field of the invention.” Smith & Nephew v. Convatec Tech.,
`
`IPR2013-00102, Paper 87 at 14-15 (May 19, 2014). And when considering what a
`
`reference discloses, “it is proper to take into account not only specific teachings of
`
`the reference but also the inferences which one skilled in the art would
`
`reasonably be expected to draw therefrom.” Denso Corp. & Clarion Co. v.
`
`Beacon Navigation, IPR2013-00026, Paper 34 at 19-20 (Mar. 14, 2014). Contrary
`
`to Patent Owner’s assertions, a person of ordinary skill in the art would understand
`
`
`
`11
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`Provino’s message packets to seek information from server 31(s), and thus
`
`constitute “access request messages”. Ex. 1011 ¶ 40; Ex. 1003 at 6:19-63.
`
`C.
`
`Provino Discloses Use of Tunneling and Tunnel Packeting
`
`Patent Owner challenges the Board’s finding that Provino anticipates claims
`
`12 and 13 without explaining why Provino fails to disclose “tunneling” (claim 12)
`
`or “tunnel packeting” (claim 13). Resp. at 41-42. But Provino states that
`
`“[c]ommunications between devices external to the [VPN] 15, such as device
`
`12(m), and a device, such as server 31(s), . . . may be maintained over a secure
`
`tunnel.” Ex. 1003 at 9:32-45. Patent Owner does not contend that Provino or the
`
`’274 patent use special definitions for the term “tunneling” – both use the ordinary
`
`meaning of this term. In fact, Patent Owner expert used the term “tunnel” to
`
`describe the communication established between device 12(m) and firewall 30 in
`
`Provino. See Ex. 1090 at 42:1-4; Ex. 2041 ¶¶ 31-32. Provino plainly discloses
`
`“tunneling” according to claim 12.
`
`Patent Owner contends that Provino does not show “tunnel packeting”
`
`because Provino merely places “the integer Internet address inside the data portion
`
`of a packet.” Resp. 42. But this falls squarely within the Board’s construction of
`
`“tunnel packeting.” See Dec. at 10-11. Patent Owner also contends “Provino’s
`
`placement of a device Internet address inside the data or other portion of the packet
`
`that is not the normal address portion” (id. at 18) does not constitute “tunnel
`
`
`
`12
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`packeting” but entirely fails to explain how this differs from how the ’274 patent
`
`describes “tunnel packeting.” In reality, it does not. Compare Ex. 1003 at 10:13-
`
`44, 13:63-14:38, with Resp. at 18-19 (citing Ex. 1001 at 49:28-36, 50:44-52), Ex.
`
`1090 at 34:21-35:19.
`
`D.
`
`Secure Server 31(s)’s Address Is Registered With Nameserver 32
`
`The Board correctly found Provino to teach that registration of the secure
`
`network address of server 31(s) with nameserver 32 occurs before device 12(m)
`
`sends a query message seeking to obtain the secure address of server 31(s), as
`
`required by claim 17. Dec. at 19. Indeed, this flows logically from statements in
`
`Provino, such as the observation that “[i]f the nameserver 32 has an integer
`
`Internet address associated with the human-readable Internet address in the request
`
`message packet provided by the device 12(m), it will provide the integer Internet
`
`address.” Ex. 1003 at 11:16-25, 8:67-9:5, 11:46-53, 14:39-46; Ex 1011 ¶¶ 22, 32-
`
`36. Despite this, Patent Owner theorizes that associations maintained by
`
`nameserver 32 may be made dynamically (i.e., in response to the request). Resp. at
`
`43-44. That theory about how the Provino scheme might be configured cannot be
`
`reconciled with the evidence or Provino’s disclosure, which speaks of the
`
`nameserver 32 responding to queries using previously established associations.
`
`Ex. 1011 ¶ 33; Ex. 2041 ¶ 38. Indeed, Patent Owner’s expert took no issue with
`
`Dr. Guerin’s description of how registration of devices with secure nameserver 32
`
`
`
`13
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`occurs based on Provino’s disclosure (Id.), and Patent Owner posed no questions
`
`of Dr. Guerin about his characterization of how this feature is described in Provino
`
`at his deposition.
`
`III. Ground 2: Provino In View of Kosiur Renders Obvious Claims 2-5
`
`Patent Owner complains that Kosiur’s “aspirational disclosures” are
`
`insufficient to establish obviousness of claims 2-5 because they do not enable use
`
`of VPNs for video conferencing. Resp. at 45-46. To establish a reference is not
`
`enabling, Patent Owner must do more than make a conclusory allegation – it must
`
`show why the Kosiur scheme could not be adapted to work with Provino’s scheme
`
`in view of the abilities of a person of ordinary skill. Moreover, “[u]nder § 103, …
`
`a reference need not be enabled; it qualifies as a prior art, regardless, for whatever
`
`is disclosed therein.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
`
`1357 (Fed. Cir. 2003); Geo M. Martin Co. v. Alliance Machine Sys. Int’l LLC, 618
`
`F.3d 1294, 1302-03 (Fed. Cir. 2010). The Board properly considered Kosiur as
`
`providing a “background on VPN technologies and products,” Ex. 1006 at 9, and
`
`explaining that VPNs can support “newer applications, such as interactive
`
`multimedia and videoconferencing,” id. at 254, as well as “file transfers, Web
`
`browsing, and e-mail,” id. at 249. Ex. 1011 ¶ 42. Although Provino does not
`
`specifically address these applications, it does describe device 12(m) as a system
`
`unit having the requisite capabilities, including a video display “to display
`
`
`
`14
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`processed data,” and explains that message packets received “contain information
`
`such as web pages or the like, . . . to be displayed on the device’s video display
`
`unit.” Ex. 1003 at 4:35-49, 5:28-35. Even Patent Owner’s expert admitted that
`
`“[Provino is] generally saying that you can send data, and one such type of data is
`
`video;” and could not identify any reason why sending video data on the Provino
`
`system would present insoluble problems. Ex. 1090 at 46:12-13, 48:2-7. In other
`
`words, Patent Owner offers nothing other than attorney argument to support its
`
`contention that a person of ordinary skill in the art would have not been able to
`
`incorporate adapt the Provino system to support the applications and techniques
`
`described in Kosiur.
`
`IV. Conclusion
`
`Petitioner respectfully requests the Board maintain its constructions and find
`
`that Provino anticipates, or, in combination with Kosiur or Xu, renders obvious the
`
`challenged claims.
`
`Dated: February 11, 2015
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/ Jeffrey P. Kushan /
`Jeffrey P. Kushan
`Registration No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`(202) 736-8914
`Attorney for Petitioner Apple
`
`
`
`
`
`15
`
`
`
`IPR2014-00403
`
`
`
`Petitioner’s Reply (Paper 34)
`
`Certificate of Service
`
`I hereby certify that on this 11th day of February, 2015, a copy of this
`
`Petitioner’s Reply has been served in its entirety by email on the following counsel
`
`of record for Patent Owner:
`
`
`Joseph E. Palys
`E-mail: josephpalys@paulhastings.com
`
`Naveen Modi
`E-mail: naveenmodi@paulhastings.com
`
`Jason E. Stach
`E-mail: Jason.stach@finnegan.com
`
`
`
`Dated:
`
`February 11, 2015
`
`
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Attorney for Petitioner Apple
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
