Paper 13
`Date: July 31, 2014
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00404
`Patent 7,987,274 B2
`____________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Date: July 31, 2014
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00404
`Patent 7,987,274 B2
`____________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
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`IPR2014-00404
`Patent 7,987,274 B2
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`I.
`
`BACKGROUND
`
`Background
`A.
`Microsoft Corp. (“Petitioner”) requests inter partes review of claims 1-5, 7,
`8, 10, 12, 15, and 17 of U.S. Patent No. 7,987,274 B2 (“the ’274 Patent,” Ex. 1001)
`pursuant to 35 U.S.C. §§ 311 et seq.1 VirnetX Inc. (“Patent Owner”) filed a
`Preliminary Response (“Prelim. Resp.”) on May 19, 2014. Paper No. 9.
`We have jurisdiction under 35 U.S.C. § 314. The standard for instituting
`inter partes review is set forth in 35 U.S.C. § 314 (a) which provides:
`THRESHOLD -- The Director may not authorize an inter partes review
`to be instituted unless the Director determines that the information
`presented in the petition filed under section 311 and any response
`filed under section 313 shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.
`
`
`
`We determine based on the record that Petitioner has demonstrated, under 35
`U.S.C. § 314(a), that there is a reasonable likelihood of unpatentability with
`respect to all of the challenged claims, claims 1–5, 7, 8, 10, 12, 15, and 17.
`Petitioner relies on the following prior art:
`US 6,225,993 B1 (Lindblad) May 1, 2001
`US 8,200,837 B1 (Bhatti)
`June 12, 2012
`
`Takahiro Kiuchi and Shigekoto Kaihara, “C-HTTP – The
`Development of a Secure, Closed HTTP-based Network on the Internet,”
`PROCEEDINGS OF THE SYMPOSIUM ON NETWORK AND DISTRIBUTED SYSTEM
`SECURITY, IEEE, 1996 (Ex. 1004, “Kiuchi”).
`
`
`(Ex. 1009)
`(Ex. 1010)
`
`
`1 We cite to Petitioner’s Revised Petition for Inter Partes Review, filed February
`20, 2014, Paper 4.
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`2
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`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 102 and/or § 103 based on the following specific grounds (Pet. 4, 15-
`60):
`
`
`
`Claims challenged
`
`1-4, 7, 8, 10, 12, 15, and 17
`5
`1-4, 7, 8, 10, 12, 15, and 17
`5
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`Basis
`
`§ 102
`§ 103
`§ 103
`§ 103
`
`
`Reference(s)
`
`Kiuchi
`Kiuchi and Lindblad
`Kiuchi and Bhatti
`Kiuchi, Bhatti and Lindblad
`
`
`
`The ’274 Patent
`B.
`The ’274 Patent describes a system and method for establishing a secure
`communication link between a first computer and a second computer over a
`computer network. Ex. 1001, 6:40-42, 45:8-10. A user obtains a URL for a secure
`top-level domain name by querying a secure domain name service that contains a
`cross-reference database of secure domain names and corresponding secure
`network addresses. Ex. 1001, 46:44-47, 47:15-16. When the user queries the
`secure domain name service for a secure computer network address, the secure
`domain name service determines the particular secure computer network address
`and returns the network address corresponding to the request. Ex. 1001, 39:29-33,
`38:66-39:3, 47:33-37.
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`Claim 1, the sole independent claims, follows:
`
`
`1. A method of accessing a secure network address,
`comprising:
`sending a query message from a first network device to a secure
`domain service, the query message requesting from the secure domain
`service a secure network address for a second network device;
`receiving at the first network device a response message from
`the secure domain name service containing the secure network
`address for the second network device; and
`sending an access request message from the first network
`device to the secure network address using a virtual private network
`communication link.
`
`We note that the ’274 Patent is presently the subject of a co-pending case,
`VirnetX Inc. v. Microsoft Corporation, Docket No. 6:13cv351 (E.D. Tex.). See
`Pet. 1-2.
`
`
`C.
`
`Claim Interpretation
`
`
`Consistent with the statute and the legislative history of the Leahy-Smith
`America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329 (Sept. 16, 2011)
`(“AIA”), the Board interprets claim terms by applying the broadest reasonable
`interpretation in the context of the specification in which the claims appears. 37
`C.F.R. § 42.100(b); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,766 (Aug. 14, 2012).
`Under the broadest reasonable interpretation standard, claim terms are given
`their ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc.,
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term
`must be set forth in the specification with reasonable clarity, deliberateness, and
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`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Claim terms
`typically do not include limitations from embodiments described in a patent
`specification if the claim language is broader than the embodiment. See In re Van
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`1. Access Request Message
`The parties do not propose a construction for this term, and it appears only in
`the claims of the ’274 Patent. Claim 1 recites “sending an access request message
`from the first network device to the secure network address using a virtual private
`network communication link.” This step appears after the first-listed step of
`“sending a query message” for a “secure network address.” In other words,
`“sending an access request message” reasonably appears to be a query to
`communicate for information, services, or otherwise, which may occur after an
`initial step of sending a query for address information.
`The ’274 Patent supports this construction, for example, disclosing that
`“software module 3309 accesses secure server 3320 through VPN communication
`link 3321” at step 3411. Ex. 1001, 47:66–67. Here, access refers to further
`communication using a hopping regime with the desired server, for example, a
`securities trading website, server 3320. See id. at 47:26–29, 38–41; 48:4–6.
`Patent Owner’s citation implicitly refers to what appears to be a step that
`occurs relatively early in the disclosed process, step 3409, cited in a related portion
`of the ’274 Patent as an example of an access request message. Prelim. Resp. 10
`(citing Ex. 1001, 47:37–51). In that step, “SDNS 3313 accesses VPN gatekeeper
`3314 for establishing a VPN communication link.” Ex. 1001, 47:38–39. It is not
`clear how that passage relates to the recited access request message, which the first
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`network device (i.e., not SDNS 1313) sends to the secure network address (i.e., not
`to gatekeeper 3314) using a VPN communication link.
`Under the broadest reasonable construction, in light of the claim language
`and disclosure, the “access request message” includes a signal in a packet or other
`message format that signifies that the first network device seeks communication,
`information, or services, with a second network device associated with the secure
`network address.
`
`2. VPN Communication Link
`
`As noted above, claim 1 recites the term “access request message” in terms
`of the VPN communication link, thereby, to a certain extent, informing the
`meaning of the latter term based on our construction of the “access request
`message.” Claim 11 depends from claim 1 and, although not challenged here, it
`further informs that “initiating the virtual private network communication link
`[occurs] after the access request message,” at least in some embodiments. Ex.
`1001, claim 11 (emphasis added). If the VPN communication link is initiated after
`the access request message in claims 1 and 11, then in claim 1, using a virtual
`private network communication link reasonably embraces using a link that merely
`connects to a virtual private network. Otherwise, it is not clear how the method of
`claim 1 uses a VPN communication link that has not been “initiated.”
`A VPN communication link appears to employ different levels of security,
`ranging from employing hopping techniques on VPN communication link 3319 for
`initial access to, for example, secure portal 3310 and VPN gatekeeper 3314, then to
`authentication for that access, and then later, to other secure connections
`established by the gatekeeper, which securely connects device 3301 to server 3320
`over the Internet, thereby establishing VPN communications between PC 3301 and
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`server 3320, even though neither device is “behind” VPN gatekeeper 3314 or
`secure portal 3310. See Ex. 1001, 46:58–48:4; Figs. 33, 34. The ’274 Patent states
`that “[o]ther types of VPNs can alternatively be used.” Id. at 47:11.
`The parties appear to agree that a VPN communication link is a
`communication path or link between two devices in a VPN. See Prelim. Resp. 17–
`18 (discussing agreement). The parties also appear to agree that a VPN requires
`encryption. See Prelim. Resp. 13 (discussing agreement). Nonetheless, as
`explained above, the ’274 Patent employs various levels of security that do not
`require encryption, for example, information or address hopping, as noted above.
`On this record, the broadest reasonable interpretation of a VPN
`communication link is a transmission path between two devices that restricts
`access to data, addresses, or other information on the path, generally using
`obfuscation methods to hide information on the path, including, but not limited to,
`one or more of authentication, encryption, or address hopping.2
`
`3. Secure Network Address
`As noted above, claim 1 recites “sending an access request message from the
`first network device to the secure network address using a virtual private network
`communication link.” The parties agree that a “secure network address” at least
`requires “authorization for access.” See Prelim. Resp. 20; Pet. 9. For purposes of
`this Decision, a “secure network address” is an address that requires authorization
`for access.
`
`
`2 The Board applied a similar definition in Apple Inc. v. VirnetX, Case IPR2014-
`00237, Paper 15, slip op. at 9–11 (PTAB May 14, 2014) and Apple Inc. v. VirnetX,
`Case IPR2014-00238 (PTAB May 15, 2014), which challenge related VirnetX
`patents.
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` The parties also appear to agree that the secure network address must be
`associated with a computer and a virtual private network. Prelim. Resp. 21; Pet. 6.
`The term, “secure network address,” apart from the qualifying phrase, “using a
`virtual private network communication link,” does not necessarily require a
`computer “capable of virtual private network communications,” as Patent Owner
`urges, or “configured to be accessed through a virtual private network,” as
`Petitioner urges. See Prelim. Resp. 21; Pet. 6. The “virtual private network
`communication link” phrase does appear to qualify, to some extent, the secure
`network address. Nevertheless, at this stage, no need exists to resolve any dispute
`over “capable” or “configured.”
`
`4. Tunnel Packeting
`Claim 13 depends from claim 1 and recites “using tunnel packeting over the
`[VPN] communication link.” Petitioner argues that “tunnel packeting” should be
`broad enough to encompass “encapsulating a first packet of a first protocol in a
`second packet of a second protocol.” Pet. 15.
`Petitioner cites a portion of the ’274 Patent that describes an embodiment
`that “tunnels the unencrypted, unprotected communication packets through a new
`protocol.” Pet. 14. (citing Ex. 1001, 49:31–34.) Petitioner’s declarant, Dr. Guerin,
`notes that it was well-known that “tunneling generally [was understood] to include
`implementations at different layers.” Ex. 1011 ¶ 26.
`Patent Owner contends that a customary definition of “tunneling,” which
`apparently includes tunnel packeting, is “transmitting data structured in one
`protocol format within the format of another protocol.” Prelim. Resp. 29 (citing
`Ex. 2026, 7.) Patent Owner explains that in one example of the ’274 Patent, “data
`structured in a first protocol format is placed into the payload of a packet in a
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`second protocol format.” Prelim. Resp. 29 (discussing Ex. 1001, 50:44–52). In
`context, according to Patent Owner’s apparent position, a first protocol format
`includes a part of a packet or frame, such as a header (e.g., an address), and a
`second protocol format includes another part of a packet or frame, such as the
`payload (e.g., the data). See Prelim. Resp. 29 & n. 8.
`Patent Owner characterizes the dispute about the term as follows: “Under
`[Petitioner’s] construction, the payload of a first protocol is stripped out and is
`encapsulated in a second protocol. The patent, however, teaches that a first
`protocol’s entire packet (not just its payload) can become the payload of a second
`protocol’s packet.” Prelim. Resp. 29–30.
`On this record, the broadest reasonable interpretation of the term does not
`limit it to what “can” occur in a specific embodiment. The term reasonably
`supports encapsulating one packet portion or an entire packet inside of another
`packet. Therefore, for purposes of this decision, “tunnel packeting” means placing
`data or information in one protocol format (or packet portion), into another
`protocol format (or portion) of a packet.
`
`5. Remaining Claim Terms
`The parties do not disagree materially about other claim terms involved in
`this proceeding. It is not necessary to construe explicitly other claim terms at this
`juncture of the proceeding.
`
`
`II. ANALYSIS
`A. Cited References
`
`
`
`
`
`1) Overview of Kiuchi
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`Kiuchi discloses a closed HTTP-based network (C-HTTP) for a closed
`group of institutions, in which each member is protected by its own firewall. Ex.
`1004, 64, cols. 1-2. Communication is made possible with a client-side proxy (for
`one institution), a server-side proxy (for another institution), and a C-HTTP name
`server that provides both client-side and server-side proxies with each peer’s public
`key and nonce values for both request and response. Id., 64-65.
`The client-side proxy asks the C-HTTP name server whether it can
`communicate with the host specified in a given URL. If the connection is
`permitted, the C-HTTP name server sends the IP address and public key of the
`server-side proxy and both request and response Nonce values, which are
`encrypted and certified using asymmetric key encryption and digital signature. Ex.
`1004, 65, col. 2.
`The client-side proxy then sends an encrypted request (including the client-
`side proxy’s IP address, hostname, request Nonce value and symmetric data
`exchange key for request encryption) to the server-side proxy, which then asks the
`C-HTTP name server if the query from the client-side proxy is legitimate. Ex.
`1004, 65, col. 2. If the request is confirmed to be legitimate and access is
`permitted, the C-HTTP name server sends the IP address and public key of the
`client-side proxy and both request and response Nonce values to the server-side
`proxy. After receiving the client-side proxy’s IP address, hostname and public
`key, the server-side proxy generates and sends a connection ID to the client-side
`proxy. After the client-side proxy accepts the connection ID from the server-side
`proxy, the connection is established. Ex. 1004, 66, col. 2.
`
`
`2) Overview of Lindblad
`
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`Lindblad discloses a “multimedia document 206 [that] is an HTML
`document.” Ex. 1009, 4:65-66. A motion video image is included as “part of [the]
`multimedia document,” that also contains an “applet tag” that “specifies . . . [a]
`particular bit stream to request from [the] video server.” Ex. 1009, 3:34-35, 38-40.
`
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`3) Overview of Bhatti
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`
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`
` Bhatti discloses user terminals that access, via a network, services provided
`by a data service system. Ex. 1010, 3:11-12. Content files are stored as “Hyper-
`Text Markup Language (HTML) web pages, gif images, video clips, etc.” Ex.
`1010, 3:60-61. These content files may be accessed by user terminals by sending
`access requests. Ex. 1010, 4:2-3, 46.
`
`B.
`
`Preliminary issues
`
`Patent Owner maintains that the Petition is defective because 1) it presents
`redundant grounds and 2) the Petition lacks requisite statutory and rule specificity
`about where claimed elements are found in the prior art; and 3) the Petition is
`redundant to a related petition. See Prelim. Resp. 1–9.
`Notwithstanding Patent Owner’s arguments, even if one petition may be
`considered redundant to another, or a petition internally presents redundant
`grounds, the Board has discretion to go forward or not go forward on redundant
`grounds in the interests of expediency. See 37 C.F.R. §§ 42.5(a), 42.108(a); 35
`U.S.C. § 315(d) (discretion to consider current proceedings before the office).
`Notwithstanding Patent Owner’s other assertions, the record does not show that the
`Petition is statutorily or by rule deficient for a lack of clarity or particularity. The
`Board may not institute unless there are “[s]ufficient grounds.” See 37 C.F.R. §
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`42.108(c). We determine, based on the record, that Petitioner establishes
`“sufficient grounds” with requisite specificity, as the discussion below shows.
`
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`Anticipation by Kiuchi
`
`C.
`
`Petitioner asserts that claims 1-4, 7, 8, 10, 12, 15, and 17 are anticipated
`under 35 U.S.C. § 102 by Kiuchi. Pet. 4, 22-42. In support of this asserted ground
`of unpatentability, Petitioner provides explanations as to how each claim limitation
`recited in claims 1-4, 7, 8, 10, 12, 15, and 17 is disclosed by Kiuchi. Upon
`consideration of Petitioner’s analysis and supporting evidence, and taking into
`account Patent Owner’s preliminary response, we are persuaded that Petitioner has
`demonstrated there is a reasonable likelihood that it would prevail with respect to
`anticipation of claims 1-4, 7, 8, 10, 12, 15, and 17 over Kiuchi.
`Claim 1 recites sending a query message from a first network device to a
`secure domain service, the query message requesting from the secure domain
`service a secure network address for a second network device. Petitioner argues
`that Kiuchi discloses that a “[c]lient-side proxy asks C-HTTP name server whether
`it can communicate with the host specified in a given URL” and that “the C-HTTP
`name server sends the IP address and public key of the server-side proxy and both
`request and response Nonce values.” Pet. 24, 34, 35 (citing Ex. 1004, 65). In other
`words, Kiuchi discloses a first network device (i.e., “client-side proxy”) that sends
`a query message to a secure domain service (i.e., “asks C-HTTP name server
`whether it can communicate with the host”) and also discloses that the query
`message requests from secure domain service (i.e., “C-HTTP name server”) a
`secure network address for a second network device (i.e., “the IP address and
`public key of the server-side proxy . . .”).
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`Claim 1 recites receiving at the first network device a response message
`from the secure domain name service containing the secure network address for the
`second network device. Petitioner explains that Kiuchi discloses that “the C-HTTP
`name server sends the IP address” to the “client-side proxy” in response to the
`client-side proxy asking the C-HTTP name server whether it can communicate
`with the host. Pet. 35-36 (citing Ex. 1004, 65). On this record, we are persuaded
`that Kiuchi discloses a first network device (i.e., a “client-side proxy”) receiving a
`response message from the secure domain name server (i.e., the “C-HTTP name
`server”) and that the message contains the secure network address for the second
`network device (i.e., the IP address for the host).
`Claim 1 recites sending an access request message from the first network
`device to the secure network address using a virtual private network
`communication link. Petitioner explains that Kiuchi discloses that “[o]nce the
`connection is established, a client-side proxy forwards HTTP/1.0 requests from the
`user agent in encrypted form using C-HTTP format.” Pet. 36 (citing Ex. 1004, 66).
`Hence, Kiuchi discloses sending an “access request message” (i.e., an “HTTP/1.0
`request”) from the first network device (i.e., the “client-side proxy”) to the secure
`network address (i.e., the IP address corresponding to the host) using a virtual
`private network communication link, i.e., the HTTP/1.0 request signifies that the
`client-side proxy (i.e., “first network device”) seeks communication with the
`“server-side proxy” (i.e., a second network device associated with the secure
`network address).
`In the alternative, Kiuchi also discloses that “a client-side proxy sends a
`request for connection to the server-side proxy, which is encrypted . . .” and that
`“[w]hen a server-side proxy accepts a request for connection from a client-side
`proxy . . . [the C-HTTP name server] examines whether the client-side proxy is
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`permitted to access to the server-side proxy.” Ex. 1004, 65, col. 2 – 66, col. 2.
`Under this alternative, Kiuchi also discloses sending an access request message
`from a first network device (i.e., the “request” from the “client-side proxy”
`signifying that the client-side proxy (or first network device) to seek
`communication with the server-side proxy (or second network device associated
`with the secure network address)), to which the C-HTTP name server determines if
`the client-side proxy is permitted to access the server-side proxy. The “request”
`from the client-side proxy is sent using a virtual private network communication
`link because the “request” from the client-side proxy is sent over a transmission
`path between devices that restricts access to information on the path (i.e., is
`encrypted, as disclosed by Kiuchi), corresponding to a broad but reasonable
`construction of the term to include a transmission path between devices that
`restricts access to information on the path (see above).
`Patent Owner argues that “it is unclear from the Petition[er] why . . .
`[Kiuchi] satisfies the claim language [of access request message].” Prelim. Resp.
`4. We disagree with Patent Owner on the present record for at least the reasons
`discussed above.
`Further, as described above in the alternative, Kiuchi also discloses a client-
`side proxy (i.e., first network device) sending an encrypted (i.e., “private”) request
`for connection to a server-side proxy. Based on the request, the C-HTTP name
`server determines if the client-side proxy is permitted to access the server-side
`proxy. Because the determination of whether the client-side proxy is permitted to
`access the server-side proxy, one of ordinary skill in the art would have understood
`such a request to be an “access” request message (or a message that signifies that
`the first network device seeks communication with a second network device). In
`addition, the “access request message” is sent over a “virtual private network
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`communication link” (i.e., over a transmission path between devices that restricts
`access to information on the path – e.g., data is encrypted).
`Claim 2 recites supporting a plurality of services over the virtual private
`network communication link. Petitioner argues that Kiuchi discloses that the
`system “supports . . . file transfer and electronic mail.” Pet. 37 (citing Ex. 1004,
`67). Hence, Petitioner argues that file transfer and electronic mail, at least, are
`“services” that are supported by the system.
`Claim 3 recites that the plurality of services comprises a plurality of
`communication protocols, a plurality of application programs, multiple sessions, or
`any combination thereof. Petitioner argues that Kiuchi discloses a “C-HTTP
`system” in which “various kinds of user agents and servers are available on almost
`all platforms.” Pet. 37 (citing Ex. 1004, 67). Hence, Petitioner demonstrates that
`Kiuchi discloses, at least, a “plurality of application programs,” as recited in
`claim 3.
`Claim 4 recites that the plurality of application programs comprises video
`conferencing, e-mail, a word processing program, telephony or any combination
`thereof. Petitioner argues that Kiuchi discloses that “the C-HTTP supports a user
`agent application that provides e-mail.” Pet. 38 (citing Ex. 1004, 67). Kiuchi
`discloses “electronic mail services are available with an HTTP-based graphical
`user interface” and “[e]lectronic mail services within a given group of institutions.”
`Ex. 1004, 67. We agree with Petitioner that Kiuchi discloses, at least, “e-mail,” as
`recited in claim 4.
`Claim 7 recites that the secure network address is encrypted. Petitioner
`argues that Kiuchi discloses a “response that contains the IP address of the server-
`side proxy . . . is encrypted.” Pet. 38. As Petitioner explains, Kiuchi discloses that
`“[b]oth the request to and response [containing the IP address of the server-side
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`proxy] from the C-HTTP name server are encrypted.” Ex. 1004, 65. Hence,
`Kiuchi discloses that the secure network address is encrypted, as recited in claim 7.
`Claim 8 recites decrypting the encrypted secure network address. Claim 10
`recites that the secure network address is an IP address belonging to the second
`network device. Claim 12 recites using tunneling over the virtual private network
`communication link. Claim 15 recites a client computer connected to a
`communication network. Claim 17 recites that the secure network address is
`registered with the secure domain service prior to the step of sending a query
`message to a secure domain service. Petitioner argues that Kiuchi discloses these
`features. Pet. 39-42. Patent Owner does not dispute Petitioner’s contentions with
`respect to claims 8, 10, 12, 15, or 17, and based on the information provided in the
`Petition, we are persuaded that Kiuchi discloses the relevant limitations.
` Based on the record presented, Petitioner has demonstrated that there is a
`reasonable likelihood that it would prevail with respect to anticipation of claims 1-
`4, 7, 8, 10, 12, 15, and 17 over Kiuchi.
`
`D.
`Obviousness over Kiuchi and Bhatti
`Petitioner asserts that claims 1-4, 7, 8, 10, 12, 15, and 17 are unpatentable
`
`under 35 U.S.C. § 103(a) over Kiuchi and Bhatti. Pet. 44-49. Claim 1 recites
`sending an access request message to the secure computer network address using a
`virtual private network communication link. Petitioner argues that Kiuchi
`discloses “that communications between its user agents and origin servers ‘are
`performed based on HTTP/1.0’” thereby disclosing “HTTP communications.” Pet
`45 (citing Ex. 1004, 64). Petitioner also indicates that Bhatti discloses a “specific
`framework . . . for HTTP communications between the user terminals and content
`server” in which “user terminals . . . can access the data service system . . . for the
`services provided,” and provides sufficient reasons with supporting factual
`16
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`IPR2014-00404
`Patent 7,987,274 B2
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`
`underpinnings to support the conclusion that the combination of Kiuchi and Bhatti
`would have been obvious to one of ordinary skill in the art. Pet. 44-45.
`On the present record Petitioner has demonstrated that there is a reasonable
`likelihood that it would prevail with respect to obviousness of claims 2-4, 7, 8, 10,
`12, 15, and 17 over the combination of Kiuchi and Bhatti.
`
`E. Obviousness over Kiuchi (alone or in combination with Bhatti) and Lindblad
`
`Petitioner asserts that claim 5 is obvious under 35 U.S.C. § 103(a) over
`Kiuchi (alone or in combination with Bhatti) and Lindblad. Pet. 42-44. In support
`of this asserted ground of unpatentability, Petitioner provides explanations as to
`how each claim limitation is disclosed or suggested by Kiuchi (alone or in
`combination with Bhatti) or Lindblad and, based on the current record, articulates
`sufficient reasoning with a rational underpinning to justify support for the
`conclusion of obviousness. See Pet. 42-44, 49-50. Upon consideration of
`Petitioner’s analysis and supporting evidence, and taking into account Patent
`Owner’s Preliminary Response, we are persuaded that Petitioner’s contentions
`have merit. On this record, we conclude that Petitioner has demonstrated that there
`is a reasonable likelihood that it would prevail with respect to obviousness of claim
`5 over Kiuchi (alone or in combination with Bhatti) and Lindblad.
`
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`For example, claim 5 recites that the “plurality of services comprises audio,
`video, or any combination thereof.” Petitioner asserts that Kiuchi discloses
`requests that are in HTML format and Lindblad discloses incorporating “motion
`video” into HTML pages. Pet. 42-43. Petitioner further provides sufficient
`reasons with supporting factual underpinnings to support the conclusion that the
`combination of Kiuchi and Lindblad would have been obvious to one of ordinary
`skill in the art. Pet. 42-43.
`Therefore, at this preliminary stage of the proceedings, Petitioner has
`demonstrated that there is a reasonable likelihood that it would prevail with respect
`to obviousness of claim 5 over the combination of Kiuchi and Lindblad or the
`combination of Kiuchi, Bhatti, and Lindblad.
`
`III. CONCLUSION
`
`
`We institute an inter partes review of claims 1-4, 7, 8, 10, 12, 15, and 17
`under 35 U.S.C. § 102 as anticipated by Kiuchi; claims 1-4, 7, 8, 10, 12, 15, and 17
`under 35 U.S.C. § 103 as obvious over Kiuchi and Bhatti; and claim 5 under
`35 U.S.C. § 103 as obvious over the combination of Kiuchi and Lindblad or the
`combination of Kiuchi, Lindblad, and Bhatti.
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that the petition is granted as to claims 1-5, 7, 8, 10, 12, 15, and
`
`
`17;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes
`
`review of the ’274 Patent is hereby instituted commencing on the entry date of this
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`IPR2014-00404
`Patent 7,987,274 B2
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`Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby
`given of the institution of a trial.
`
`FURTHER ORDERED that the trial is limited to the following grounds:
`claims 1-4, 7, 8, 10, 12, 15, and 17 under 35 U.S.C. § 102 as anticipated by Kiuchi;
`claims 1-4, 7, 8, 10, 12, 15, and 17 under 35 U.S.C. § 103 as obvious over Kiuchi
`and Bhatti; and claim 5 under 35 U.S.C. § 103 as obvious over the combination of
`Kiuchi and Lindblad or the combination of Kiuchi, Lindblad, and Bhatti. No other
`grounds are authorized as to these claims.
`
`
`For PETITIONER:
`W. Karl Renner
`Kevin E. Greene
`FISH & RICHARDSON P.C.
`axf@fr.com
`greene@fr.com
`
`For PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`19
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