IPR2014-00481
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`Paper No. 24
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
`
`
`APPLE INC.,
`Petitioner
`
`
`v.
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`VIRNETX, INC.,
`Patent Owner
`___________________
`
`Case IPR2014-00481
`Patent 7,188,180
`____________________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
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`__________________________________________________________________
`
`Petitioner’s Reply
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`
`
`
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`
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`
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`Paper No. 24
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`APPLE INC.,
`Petitioner
`
`
`v.
`
`VIRNETX, INC.,
`Patent Owner
`___________________
`
`Case IPR2014-00481
`Patent 7,188,180
`____________________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`__________________________________________________________________
`
`Petitioner’s Reply
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`
`
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`IPR2014-00481
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`Petitioner’s Reply (Paper 24)
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`Table of Contents
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`I.
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`Claim Construction ....................................................................................... 1
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`A.
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`B.
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`The Broadest Reasonable Interpretation Applies ............................ 1
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`The Reexamination Prosecution Histories and Specification Do
`Not Contain the Alleged Disclaimers of Claim Scope ...................... 1
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`C.
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`The Board Should Maintain Its Claim Constructions ..................... 3
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`1. VPN Communication Link………………………………….....3
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`2. Secure Computer Network Address…………………………..5
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`3. Client Computer………………………………………………..5
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`II. Ground 1: Provino Anticipates Claims 1, 10, 12-15, 17, 26, 28-31, and 33
` ......................................................................................................................... 6
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`A.
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`B.
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`C.
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`D.
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`Provino Discloses “Receiving a Secure Domain Name” .................. 6
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`Nameserver 32 is a “Secure Domain Name Service” ....................... 7
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`Provino’s Message Packets Seek Information From Server 31(s) 12
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`Provino’s VPN Includes The Internet ............................................. 13
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`III. Ground 2: Provino In View of Guillen Renders Obvious Claims 4, 6, 20,
`22, 35, and 37 ................................................................................................ 14
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`IV. Conclusion .................................................................................................... 15
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`IPR2014-00481
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`Petitioner’s Reply (Paper 24)
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`CASES
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`TABLE OF AUTHORITIES
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`Page(s)
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`Adams Respiratory Therapeutics, Inc. v. Perrigo Co.,
`616 F.3d 1283 (Fed. Cir. 2010) .........................................................................................4
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`Apple Inc. v. SightSound Techs., L.L.C., CBM2013-00023 ...........................................11
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`Denso Corp. & Clarion Co. v. Beacon Navigation, IPR2013-00026 ..........................13
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`Grober v. Mako Prods., Inc.,
`686 F.3d 1335 (Fed. Cir. 2012) ...................................................................................4
`
`In re Abbott Diabetes Care Inc.,
`696 F.3d 1142 (Fed. Cir. 2004) .................................................................................10, 11
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`In re Cuozzo Speed Techs., LLC,
`2015 WL 44866 (Fed. Cir. Feb. 4, 2015) ........................................................................1
`
`In re Paulson,
`30 F.3d 1475 (Fed. Cir. 1994) .......................................................................................5, 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) ......................................................................2
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`Standard Havens Products, Inc. v. Gencor Indus., Inc.,
`953 F.2d 1360 (Fed. Cir. 1991) .......................................................................................12
`
`Tempo Lighting Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) ...........................................................................................2
`
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) .........................................................................................8
`
`SAP Am., Inc. v. Versata Dev. Group, Inc., CBM2012-0001 ........................................11
`
`Smith & Nephew v. Convatec Tech., IPR2013-00102 .....................................................13
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`ii
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`IPR2014-00481
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`Petitioner’s Reply (Paper 24)
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`The Board correctly found Provino to anticipate claims 1, 10, 12-15, 17, 26,
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`28-31 and 33. Paper No. 11 (“Dec.”) at 11-19. It also correctly found Provino in
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`view of Guillen to render claims 4, 6, 20, 22, 35, and 37 obvious. Id. at 19-21.
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`These findings are supported by more than substantial evidence.
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`I.
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`Claim Construction
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`A. The Broadest Reasonable Interpretation Applies
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`Patent Owner challenges the Board’s determinations as being based on an
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`improper use of the broadest reasonable interpretation standard (BRI), because its
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`ability to amend the claims was “severely restricted.” Patent Owner Response,
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`Paper No. 20 (“Resp.”) at 2. But Patent Owner never sought to amend its claims,
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`and the Federal Circuit has recently rejected that precise theory as a reason for the
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`Board to not employ BRI in IPR proceedings. In re Cuozzo Speed Techs., LLC,
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`2015 WL 44866, *7 (Fed. Cir. Feb. 4, 2015). Patent Owner also contends (Resp. at
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`7-8, 10-11, 15) the Board erred by not employing constructions adopted by a
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`district court in related litigation, but those constructions rest on a different claim
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`construction standard and are not binding on nor are entitled to deference by the
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`Board. See In re Swanson, 540 F.3d 1368, 1377-78 (Fed. Cir. 2008). Patent
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`Owner’s challenge to the Board’s use of the BRI standard is a transparent attempt
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`to import unclaimed limitations into its claims, and must be rejected.
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`B.
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`The Reexamination Prosecution Histories and Specification Do
`Not Contain the Alleged Disclaimers of Claim Scope
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`IPR2014-00481
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`Petitioner’s Reply (Paper 24)
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`Patent Owner contends it made “disparagements” and prosecution
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`disclaimers that limit the scope of its claims. Resp. at 9, 16-18, 27-30, 33-34.
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`What these arguments reveal is that the claims, based on their actual language,
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`squarely encompass what is disclosed in or rendered obvious by the prior art.
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`Moreover, even if they were relevant under the BRI (which they are not), Patent
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`Owner’s actions plainly do not satisfy the requirements for an effective disclaimer.
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`First, the putative disclaimers are all based on statements made during
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`reexamination proceedings—some of which are still pending—and none was
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`accompanied by a claim amendment. Under Tempo Lighting Inc. v. Tivoli, LLC,
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`742 F.3d 973 (Fed. Cir. 2014), which Patent Owner cites, this means these putative
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`prosecution disclaimers have no legal effect. In Tempo, the Federal Circuit
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`confirmed “the PTO is under no obligation to accept a claim construction
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`proffered as a prosecution history disclaimer.” Id. at 978. It then affirmed the
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`Board’s finding of a disclaimer, but only because it was based on statements made
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`at the examiner’s request and in conjunction with claim amendments during the
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`original examination of the patent. Id. at 977. Tempo thus confirms the Board is
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`not obliged to give effect to a putative prosecution disclaimer, and that statements
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`made during reexamination are not equivalent to those made during original
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`examination, especially when unaccompanied by a claim amendment. Id.; see
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`Marine Polymer Techs., Inc. v. Hemcon, Inc., 672 F.3d 1350, 1364 (Fed. Cir.
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`Petitioner’s Reply (Paper 24)
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`2012) (en banc) (“if, in reexamination, an examiner determines that particular
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`claims are invalid and need amendment to be allowable, one would expect an
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`examiner to require amendment rather than accept argument alone”).
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`C. The Board Should Maintain Its Claim Constructions
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`Patent Owner’s challenges to specific claim constructions are unwarranted,
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`and Board should maintain the constructions it adopted in its institution decision.
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`1.
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`VPN Communication Link
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`Patent Owner argues a “VPN communication link” must: (i) be “in a VPN,”
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`(ii) involve a “network” of computers, and (iii) allow two computers to have
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`“direct communication.” Resp. at 3-13. These limitations have no basis in the
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`claim language and are inconsistent with the specification. E.g., Ex. 1001 at 6:63-
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`65, 55:9-11. Moreover, adding the first two limitations to the meaning of the term
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`“VPN communication link” would improperly exclude a preferred embodiment of
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`the patent disclosure from the claim scope. Specifically, Figure 33 depicts as a
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`“VPN communication link” a point-to-point connection that “traverses the
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`unsecure public network, Internet 3302 to connect computer 3301 with secure
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`server 3320.” See Resp. at 6 (“VPN communication link 3321”). This point-to-
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`point connection can be a “VPN communication link” according to Patent Owner
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`and its expert. Id.; Ex. 2024 ¶¶ 16-17; Ex. 1088 at 11:7-12:1 (in proceeding
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`involving a grandchild of the ’180 patent, agreeing the depicted link originates at
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`Computer 3301 and ends at Server 3320). Yet, reading in Patent Owner’s
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`proposed requirements for communications with additional unspecified computers
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`on a network and limiting point-to-point connections to those within a VPN would
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`exclude this embodiment. This is plainly improper. See Adams Respiratory
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`Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010) (“A claim
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`construction that excludes the preferred embodiment ‘is rarely, if ever, correct’”).
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`Patent Owner next asserts that prosecution history statements require the
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`construction to be limited to “direct” communications. Resp. at 9. But the
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`statements Patent Owner identifies were not accompanied by a claim amendment.
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`Moreover, there is no clear explanation in the prosecution history or the
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`specification of what “direct” means. For example, the ’180 specification
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`describes VPN communication links that traverse firewalls, edge routers, and
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`proxies between the end devices in a connection. Ex. 1001 at 34:17-49, 50:4-6,
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`54:11-52, 56:29-31. The specification and prosecution history do not indicate
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`which, if any, of these configurations would render communications “indirect”
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`rather than “direct.” See Ex. 1088 at 12:8-13:19; Ex. 1089 at 31:9-33:21. Without
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`a clear explanation of what does or does not constitute a “direct” communication,
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`there can be no clear and unequivocal disavowal of “indirect” communications.
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`Grober v. Mako Prods., Inc., 686 F.3d 1335, 1343 (Fed. Cir. 2012) (“prosecution
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`history limits claim meaning when an applicant ‘clearly and unmistakably’
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`IPR2014-00481
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`Petitioner’s Reply (Paper 24)
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`disclaims scope or meaning”). The Board should not read a nebulous “direct”
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`limitation into the claims in these proceedings based on the BRI standard.
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`2.
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`Secure Computer Network Address
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`The Board construed “secure computer network address” under the BRI as
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`“an address that requires authorization for access.” Dec. at 7. Patent Owner argues
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`this was improper as it fails to expressly define a relationship between the
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`associated computer and the VPN. Resp. at 14-15. But Patent Owner fails to
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`identify any portion of the ’180 specification that redefines a “secure computer
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`network address” to be limited to one associated with a computer and VPN. See
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`Ex. 1011 ¶ 22; In re Paulson, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (redefinitions
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`must be with “reasonable clarity, deliberateness, and precision”).
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`3.
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`Client Computer
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`Patent Owner attempts to narrow the meaning of the term “client computer”
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`to a “user’s computer” because “[o]ne of the primary art references asserted against
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`the ’180 patent in another petition . . . does not disclose a user’s computer that
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`performs the claimed features.” Resp. at 20. The Board, in an appeal from a
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`reexamination of the ’180 patent, has already rejected this transparent attempt to
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`avoid invalidating prior art. See Reexam. No. 95/001,792, Appeal 2014-000591.
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`Despite this, Patent Owner continues to assert the ’180 specification “repeatedly
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`and consistently” “equates the user’s computer 2601 with the ‘client computer’ in
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`Petitioner’s Reply (Paper 24)
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`the claims.” Resp. at 20-22, n.3. The ’180 patent disclosure does no such thing –
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`the specification uses the term “user’s computer” only four times, including once
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`to describe prior art systems and otherwise in the context of certain preferred
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`embodiments. Ex. 1001 at 39:53-62, 40:36-45, 41:40-43, 47:4-8. By contrast,
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`“client computer” is used 35 times in the disclosure and often in describing “the
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`present invention.” This is not a repeated and consistent use of a term that operates
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`to redefine “client computer” as “user’s computer” with “reasonable clarity,
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`deliberateness, and precision.” See In re Paulsen, 30 F.3d at 1480. Patent
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`Owner’s attempt to redefine “client computer” must be rejected.
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`II. Ground 1: Provino Anticipates Claims 1, 10, 12-15, 17, 26, 28-31, and 33
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`The Board correctly found Provino to anticipate claims 1, 10, 12-15, 17, 26,
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`28-31, and 33. Dec. at 14-19. The record fully supports the Board’s determination.
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`A.
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`Provino Discloses “Receiving a Secure Domain Name”
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`Patent Owner, in arguing Provino does not disclose “receiving a secure
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`domain name,” ignores the Board’s construction and takes its decision out of
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`context. Resp. at 26-27. The Board construed a “secure domain name,” as “a name
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`that corresponds to a secure computer network address.” Dec. at 8. Patent Owner
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`does not dispute that a human-readable internet address is a domain name or that in
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`Provino, a client device 12(m) can receive a human-readable Internet address
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`corresponding to server 31(s)—a secure computer with a corresponding secure
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`IPR2014-00481
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`Petitioner’s Reply (Paper 24)
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`network address—from a user seeking to communicate with server 31(s). Ex.
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`1003 at 13:31-40, 10:45-67; Resp. at 26; Ex. 2024 ¶ 28; Ex. 1011 ¶¶ 29-33. Patent
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`Owner thus concedes Provino discloses this limitation under the Board’s
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`construction. Patent Owner’s sole challenge is a sideshow derived the Board’s use
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`of the term “verify” in its description of how nameserver 32 performs actions that
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`meet the requirements of the claim language. Resp. at 26-27. This sideshow can be
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`safely ignored – the ‘180 patent does not disclose performing any special process
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`to “verify” a received domain name, and the claims require no such process.
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`Patent Owner next asserts a “secure domain name” must be non-
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`conventional. Again, the Board has already considered and rejected this argument.
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`Dec. at 8; Resp. at 15-17, 27-29. Moreover, a person of ordinary skill would
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`understand Provino as satisfying even Patent Owner’s construction, as it can
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`accommodate non-conventional domain names. Indeed, as Provino explains, its
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`“invention can be used in connection with any network which provides for any
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`form of a secondary or informal network address arrangement.” Ex. 1003 at
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`16:12-17 (emphasis added); Ex. 1011 ¶¶ 34-35.
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`B. Nameserver 32 is a “Secure Domain Name Service”
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`Patent Owner argues that because it disparaged and disavowed use of
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`conventional domain name services, its claims should now be read as excluding
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`any systems or processes that include or make use of such name services. Resp. at
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`IPR2014-00481
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`Petitioner’s Reply (Paper 24)
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`30-36. The basis of this supposed disclaimer is illusory—the ’180 patent itself
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`shows systems that use standard domain name services as part of the purported
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`invention and Patent Owner’s expert admits as much. See Ex. 1001 at Fig. 26,
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`40:46-41:8, 46:52-58; Ex. 1089 at 15:22-16:12 (“The modified DNS server 2602
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`includes a conventional DNS server function 2609 . . .”), 18:19-19:1 (“…Elements
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`2602 . . . [are] part of the capability that’s provided by a secure domain name
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`service”). Unsurprisingly, the descriptions in the ‘180 patent of “conventional”
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`domain name service functions—as “provid[ing] a look-up function that returns
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`the IP address of a requested computer or host” or “allow[ing] hosts to retrieve
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`automatically the public keys of a host that the host is to communicate with” (Ex.
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`1001 at 39:45-40:12)—plainly do not (and cannot) amount to a disavowal of a
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`specific feature of the claimed systems and methods. Resp. at 30-33; see Thorner
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`v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“Mere
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`criticism of a particular embodiment encompassed in the plain meaning of a claim
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`term is not sufficient to rise to the level of clear disavowal.”).
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`More directly, the Provino systems are not “conventional” domain services,
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`but, like the SDNS described in the ’180 patent, are systems with “unconventional”
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`domain name functionality. Ex. 1011 ¶¶ 34-35. In fact, the ’180 patent explains,
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`precisely as Provino describes its nameserver 32, that “SDNS 3313 contains a
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`cross-reference database of secure domain names and corresponding secure
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`IPR2014-00481
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`Petitioner’s Reply (Paper 24)
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`network addresses. That is, for each secure domain name, SDNS 3313 stores a
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`computer network address corresponding to the secure domain name.” Ex. 1001 at
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`52:4-8. Moreover, as Patent Owner’s expert admits, this is the key difference
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`between a “conventional” domain service and a SDNS – only the latter receives “a
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`query message [] requesting a secure computer address and returns a secure
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`computer address for the requested secure domain name,” using a cross-reference
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`database of secure domain names. Ex. 1089 at 16:21-17:18, 19:19-21; Ex. 1088 at
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`21:14-22:1, 23:16-26:15, 16:9-17:17; Ex. 1011 ¶ 15.
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`The key defining feature that the ’180 patent consistently uses to define the
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`SDNS—its ability to query a database containing secure network addresses based
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`on secure domain names—also describes Provino’s nameserver 32. Ex. 1011
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`¶¶ 33-35; Ex. 1003 at 8:67-9:5. Patent Owner’s expert admitted as much when
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`explaining that one of the functions of Provino’s nameserver 32 is “to try to
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`resolve addresses within [VPN] 15,” including for server 31(s), which may be a
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`secure computer with a secure network address. Ex. 1088 at 38:22-40:18; Ex.
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`1089 at 49:9-50:12. Dr. Monrose also agreed that, once authorized by firewall 30,
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`device 12(m) connects through firewall 30 to request and receive the secure
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`network address of server 31(s) from nameserver 32 by providing the
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`corresponding human readable internet address of server 31(s). Ex. 1089 at 49:2-
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`50:12, Ex. 1090 at 38:5-21; see Ex. 1003 at 9:56-60, 13:63-14:24. Thus, Provino’s
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`Petitioner’s Reply (Paper 24)
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`nameserver 32 receives queries for secure devices and returns secure network
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`address—just like the SDNS described in the ’180 patent. Ex. 1001 at 51:32-35,
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`52:4-8; Ex. 1089 at 16:21-17:18, 19:19-21.
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`Patent Owner nonetheless asserts that nameserver 32 behaves like Provino’s
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`nameserver 17, which it alleges is “conventional.” Resp. at 34. Patent Owner
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`ignores that Provino itself distinguishes nameserver 32 from public nameserver 17,
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`and Patent Owner’s expert agrees that nameserver 17 cannot resolve queries for
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`secure network addresses because it does not have network addresses for secure
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`devices behind firewall 30 of VPN 15 (as nameserver 32 does). Ex. 1089 at 48:3-
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`50:12; Ex. 1003 at 10:45-55, 11:11-14; Ex. 1011 ¶¶ 30, 34; Ex. 2019 at 61:18-
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`63:2; compare with Ex. 1001 at 51:29-35; Ex. 1011 ¶ 14.
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`Patent Owner cites In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149-50
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`(Fed. Cir. 2004), to support its theory that the Board should import a special (albeit
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`vague) meaning into its claims to exclude Provino’s nameserver 32. Resp. at 31-
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`35; see Ex. 2024 ¶¶ 34-38. But, Abbott bears no resemblance to this case. In
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`Abbott, every embodiment disclosed in the specification “repeatedly, consistently,
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`and exclusively” showed the same feature, which led the court to equate the
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`meaning of the claim term with that single feature. See Abbott, 696 F.3d at 1149-50
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`(explaining it was “not an instance where the specification would necessarily have
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`to disavow an embodiment that would otherwise be covered by the plain language
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`of the claims—rather claim terms [in Abbott were] entirely consistent with and
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`even support[ed] the specification’s exclusive depiction.”). Here, by contrast,
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`Patent Owner and its expert rely on different, alternative embodiments, rather than
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`“repeatedly consistently, and exclusively” describing the same technique or
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`feature. Resp. at 33-35; Ex. 2024 ¶¶ 36-38; see SAP Am., Inc. v. Versata Dev.
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`Group, Inc., CBM2012-0001, Paper 36 (Jan. 9, 2013) at 16. Also, here, the claims
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`do not use a term which the specification expressly defines, but instead uses
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`language that plainly encompasses what it seeks to exclude. See Apple Inc. v.
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`SightSound Techs., L.L.C., CBM2013-00023, Paper 101 (Oct. 7, 2014) at 13-14.
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`As explained in § I.B, Patent Owner’s reliance on its own statements during
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`reexaminations of related patents is equally unavailing. Resp. at 35-37. Self-
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`serving statements regarding Provino in pending reexamination proceedings made
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`without accompanying claim amendments are not legally effective disclaimers.
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`Nor is there any precedent for Patent Owner’s position that it can somehow
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`disclaim prior art encompassed by its claims by “disparaging” that prior art. And,
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`even if these prosecution histories were legally relevant, what they show actually
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`supports the Board’s and Petitioner’s mapping of Provino’s nameserver 32 to the
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`claims. For example, during reexamination of the ’180 patent, Patent Owner
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`argued to the PTO that its disclosure “explicitly states that a [SDNS] can resolve
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`addresses for a secure domain name; whereas, a conventional domain name
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`Petitioner’s Reply (Paper 24)
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`service cannot resolve addresses for a secure domain name.” Ex. 1023 at 804.
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`That describes precisely the secure nameserver 32 depicted in Provino.
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`C.
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`Provino’s Message Packets Seek Information From Server 31(s)
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`Patent Owner asserts that message packets sent to server 31(s) in Provino
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`cannot be “access request messages” because Provino does not describe what the
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`message packets contain, and thus they cannot possibly seek information stored on
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`server 31(s), as required by claims 12 and 28. Resp. at 39-40, 44-46. But when its
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`expert was questioned about this feature of Provino, he agreed that device 12(M)
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`could be requesting services and information stored on server 31(s). Ex. 1089 at
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`41:12-42:31 (discussing Ex. 1003 at 6:19-28, 6:64-7:7), 44:14-16, 44:21-45:1,
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`45:11-46:7; Ex. 1088 at 42:12-43:10 (“request[ing] access to whatever
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`information is stored on server 31S . . . could be one reason to connect to 31S”).
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`Likewise, Petitioner’s expert similarly understood that “requests sent to server
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`31(s) by device 12(m) may be requests for information stored at the server 31(s).”
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`Ex. 1011 ¶ 39.
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`Patent Owner also fails to appreciate that an anticipatory reference need not
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`duplicate word-for-word what is in the claims. Anticipation may be found “when a
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`claimed limitation is . . . implicit in the relevant reference.” Standard Havens
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`Products, Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). What
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`an anticipatory reference teaches must be analyzed from the perspective of a
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`Petitioner’s Reply (Paper 24)
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`person of ordinary skill: “[t]here must be no difference between the claimed
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`invention and the reference disclosure, as viewed by a person of ordinary skill in
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`the field of the invention.” Smith & Nephew v. Convatec Tech., IPR2013-00102,
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`Paper 87 at 14-15 (May 19, 2014). Also, 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 would understand that message packets sent in
`
`the Provino scheme seek information from server 31(s), and thus constitute “access
`
`request messages.” Ex. 1011 ¶ 39; Ex. 1003 at 6:19-63.
`
`D.
`
`Provino’s VPN Includes The Internet
`
`Patent Owner contends the Board and Petitioner advance conflicting
`
`interpretation of Provino to contend its scheme describes VPNs that encompass the
`
`Internet. Specifically, Patent Owner contends while the Board and Petitioner relied
`
`on Provino’s Figure 1 as disclosing “the internet” limitation of claims 10 and 26,
`
`Petitioner also relied on a different passage of Provino to illustrate a “non-Internet”
`
`embodiment. Resp. 43-44. Patent Owner’s arguments conflate and confuse two
`
`separate passages in Provino. More directly, Provino clearly teaches that its
`
`scheme is both preferably deployed over the Internet, but also can be deployed in a
`
`
`
`13
`
`
`
`IPR2014-00481
`
`Petitioner’s Reply (Paper 24)
`
`manner not limited to the Internet or to using human-readable addresses. Ex. 1003
`
`at 16:12-17; Pet. at 19; Ex. 1011 ¶ 34.
`
`III. Ground 2: Provino In View of Guillen Renders Obvious Claims 4, 6, 20,
`22, 35, and 37
`
`Patent Owner’s two challenges to Ground 2 are unsupported by the record.
`
`First, Patent Owner argues a person of skill would never apply the teachings of
`
`Guillen to Provino’s VPN system without Kosiur. Resp. at 47-48. But, Kosiur
`
`merely exemplifies that, before 2000, “the benefits of QoS described in the context
`
`of ATM communications were known by those of ordinary skill in the art to be
`
`equally applicable to VPNs,” Ex. 1011 ¶ 42, and that one of skill would combine
`
`Guillen and Provino based on the parallel uses of DNS servers, id. Patent Owner’s
`
`expert does not address this issue or otherwise dispute this fact. See Ex. 2024; Ex.
`
`1089 at 35:18-38:13, 83:9-87:3.
`
`Second, Patent Owner asserts that Guillen is incompatible with the Provino
`
`system because Guillen discloses providing QoS information “before establishing
`
`the Virtual Circuit,” while modified nameserver 32 would only provide QoS
`
`parameters after a tunnel was established between device 12(m) and firewall 30.
`
`Resp. at 49-51; Ex. 2024 ¶¶ 52-55. Patent Owner simply misinterprets “Virtual
`
`Circuit,” which Guillen defines as “a communication path between two ES [End
`
`Systems] consisting of a set of Switching nodes and links.” Ex. 1005 § 2.1, p. 81;
`
`see also Ex. 1089 at 55:12-15. As Patent Owner’s expert admits, the path between
`
`
`
`14
`
`
`
`IPR2014-00481
`
`Petitioner’s Reply (Paper 24)
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`device 12(M) and server 31(s) could constitute a path between two end systems,
`
`exactly analogous to the Virtual Circuit in Guillen. Ex. 1089 at 60:18-61:13, 54:11-
`
`18. Moreover, in Provino, before this path between device 12(M) and server 31(s)
`
`can exist, nameserver 32 must provide server 31(s)’s secure address. Id. at 58:17-
`
`59:16; Ex. 1011 ¶ 39; Ex. 1003 10:56-11:45; Ex. 2019 at 51:21-55:6. If, in the
`
`same response message, a modified nameserver 32 provides QoS parameters, that
`
`would necessarily be before the relevant path is established, contrary to Patent
`
`Owner’s assertions. Patent Owner’s expert, during his deposition, retreated from
`
`statements in his declaration that support Patent Owner’s position and refused to
`
`opine on whether firewall 30 was a “switching node,” similar to a router, or an
`
`“end system” capable of being part of a Guillen virtual circuit. Compare Ex. 1089
`
`at 59:22-60:2, with Ex. 2024 ¶¶ 52-53; see Ex. 1005 at § 2.1, p. 80-81. The
`
`evidence thus supports the Board’s determination that a person of ordinary skill
`
`would combine Provino and Guillen, which would render obvious claims 4, 6, 20,
`
`22, 27, and 35.
`
`IV. Conclusion
`
`Petitioner respectfully requests the Board maintain its constructions and find
`
`that Provino anticipates, or, in combination with Guillen, renders obvious the
`
`challenged claims.
`
`
`
`
`
`15
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`
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`IPR2014-00481
`
`Petitioner’s Reply (Paper 24)
`
`Dated: March 19, 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
`
`
`
`
`
`16
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`IPR2014-00481
`
`Petitioner’s Reply (Paper 24)
`
`Certificate of Service
`
`I hereby certify that on this 19th of March, 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:
`
`March 19, 2015
`
`
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Attorney for Petitioner Apple
`
`
`
`
`
`
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