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`Paper No. 23
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION INTERNATIONAL
`CORPORATION,
`Patent Owner
`___________________
`
`Case IPR2014-00482
`Patent 7,188,180
`____________________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`__________________________________________________________________
`
`Petitioner’s Reply
`
`
`
`
`
`
`

`

`IPR2014-00482
`
`Petitioner’s Reply (Paper 23)
`
`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 ................................ 1
`
`C.
`
`The Board Should Maintain Its Claim Constructions ........................... 2
`
`1.
`
`2.
`
`3.
`
`VPN Communication Link ......................................................... 2
`
`Secure Computer Network Address ........................................... 4
`
`Client Computer .......................................................................... 4
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`II. Kiuchi Anticipates Claims 1, 4, 10, 12-15, 17, 20, 26, 28-31, 33, and 35 ... 5
`
`A.
`
`B.
`
`The “Server-Side Proxy” and “Host” Are the Same Device ................ 5
`
`Kiuchi Discloses an “Access Request Message” .................................. 7
`
`1.
`
`2.
`
`Both Messages Are Sent to a “Secure Network Address” ......... 8
`
`Both Messages Seek Communication, Information or Services 9
`
`C.
`
`Kiuchi Discloses a “VPN Communication Link” ................................. 9
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`D. Kiuchi Discloses the “Request for Information Stored at the Secure
`Computer Network Address” of Claims 12 and 28 ............................ 11
`
`E.
`
`Kiuchi Shows the “Client Computer” of Claims 13, 15, 29, and 30 .. 11
`
`III. Kiuchi In View of Bhatti Renders Claims 1, 4, 10, 12-15, 17, 20, 26, 28-
`31, 33, and 35 Obvious ................................................................................. 12
`
`IV. Kiuchi in View of Tavs with or without Bhatti Renders Claims 6, 22,
`and 37 Obvious ............................................................................................. 12
`
`V.
`
`The Board Is Not Required to Rely on Expert Testimony ...................... 14
`
`VI. Conclusion .................................................................................................... 15
`
`
`i
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`

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`IPR2014-00482
`
`Petitioner’s Reply (Paper 23)
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Adams Respiratory Therapeutics, Inc. v. Perrigo Co.,
`616 F.3d 1283 (Fed. Cir. 2010) .........................................................................................3
`
`Centricut, LLC v. Esab Group, Inc.,
`390 F.3d 1361 (Fed. Cir. 2004) .......................................................................................14
`
`Grober v. Mako Prods., Inc.,
`686 F.3d 1335 (Fed. Cir. 2012) .........................................................................................4
`
`Guangdong Xinbao Elec. Appl. Holdings, Ltd., v. Adrian Rivera, IPR2014-
`00042 ......................................................................................................................................14
`
`In re Cuozzo Speed Techs.,
`2015 WL 44866 (Fed. Cir. Feb. 4, 2015) ........................................................................1
`
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) ...........................................................................................5
`
`In re Swanson,
`540 F.3d 1368 (Fed. Cir. 2008) .........................................................................................1
`
`Marine Polymer Techs. v. Hemcon, Inc.,
`672 F.3d 1350 (Fed. Cir. 2012) (en banc) ......................................................................2
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) .......................................................................................14
`
`Riverbed Tech. v. Silver Peak Sys., IPR2013-00402 ........................................................14
`
`Tempo Lighting Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) ...........................................................................................2
`
`VirnetX, Inc. v. Cisco Sys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014) .......................................................................................11
`
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) .......................................................................................14
`
`
`
`ii
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`IPR2014-00482
`
`
`Petitioner’s Reply (23)
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`The Board correctly found Kiuchi to anticipate claims 1, 4, 10, 12-15, 17,
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`20, 26, 28-31, 33, and 35; Kiuchi in view of Bhatti to render claims 1-4, 10, 12-15,
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`17, 20, 26, 28-31, 33, and 35 obvious; and Kiuchi (alone or with Bhatti) in view of
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`Tavs to render claims 6, 22, and 37 obvious. Paper No. 10 (“Dec.”) at 13-19.
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`These findings are supported by substantial evidence and should be maintained.
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`I.
`
`Claim Construction
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`A. The Broadest Reasonable Interpretation Applies
`
`Patent Owner challenges the Board’s findings as based on an improper use
`
`of the broadest reasonable interpretation standard (BRI), because its ability to
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`amend the claims was “severely restricted.” Paper No. 20 (“Resp.”) at 5. But
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`Patent Owner never sought to amend its claims, and the Federal Circuit has
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`recently rejected that precise theory as a reason for the Board to not employ BRI in
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`IPR proceedings. In re Cuozzo Speed Techs., 2015 WL 44866, *7 (Fed. Cir. Feb.
`
`4, 2015). Patent Owner also argues (Resp. at 10, 13-14, 17) the Board erred by not
`
`employing constructions adopted by a district court in related litigation, but those
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`constructions rest on a different claim construction standard and are not binding on
`
`nor are entitled to deference by the Board. In re Swanson, 540 F.3d 1368, 1377-78
`
`(Fed. Cir. 2008). Patent Owner’s attack on the BRI standard is a transparent
`
`attempt to import 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
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`

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`IPR2014-00482
`
`Petitioner’s Reply (Paper 23)
`
`Patent Owner contends it made “disparagements” and prosecution
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`disclaimers that limit the scope of its claims. Resp. at 10-12, 18-20. What these
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`arguments reveal is that the claims, based on their actual language, squarely
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`encompass what is disclosed or rendered obvious by the prior art. Moreover, even
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`if they were relevant under the BRI (which they are not), Patent Owner’s actions
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`plainly do not satisfy the requirements for an effective disclaimer. The putative
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`disclaimers are based on statements made during reexamination proceedings—
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`some of which are still pending—and none was accompanied by a claim
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`amendment. Under Tempo Lighting Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed. Cir.
`
`2014), this means these putative prosecution disclaimers have no legal effect. In
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`Tempo, the Federal Circuit confirmed “the PTO is under no obligation to accept a
`
`claim construction proffered as a prosecution history disclaimer” and made clear
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`that statements made during reexamination are not equivalent to those made during
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`original examination, especially without a claim amendment. Id. at 978; Marine
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`Polymer Techs. v. Hemcon, Inc., 672 F.3d 1350, 1364 (Fed. Cir. 2012) (en banc).
`
`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 in its institution decision.
`
`1.
`
`VPN Communication Link
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`
`
`2
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`

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`IPR2014-00482
`
`Petitioner’s Reply (Paper 23)
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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 6-15. 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. For example, adding the first two limitations to the meaning of the
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`term “VPN communication link” would exclude a preferred embodiment, which is
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`plainly improper. See Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616
`
`F.3d 1283, 1290 (Fed. Cir. 2010). Patent Owner identifies Figure 33 as depicting a
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`“VPN communication link” because it shows a point-to-point connection that
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`“traverses the unsecure public network, Internet 3302 to connect computer 3301
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`with secure server 3320.” See Resp. at 6 (“VPN communication link 3321); Ex.
`
`2024 ¶¶ 16-17; Ex. 1088 at 11:7-12:1 (in proceeding involving the grandchild of
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`the ’180 patent, agreeing the depicted link originates at Computer 3301 and ends at
`
`Server 3320). This point-to-point connection can be a “VPN communication link”
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`according to Patent Owner, and adding further, undefined requirements for
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`networks and VPNs is improper under BRI.
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`Patent Owner next asserts, based on prosecution history statements, that the
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`term must be construed to require “direct” communications. Resp. at 10-11. Patent
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`Owner’s argument must fail because the identified statements were not
`
`accompanied by a claim amendment. Moreover, there is no clear explanation in the
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`3
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`IPR2014-00482
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`Petitioner’s Reply (Paper 23)
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`prosecution history or the specification of what “direct” means. For example, the
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`’180 specification describes VPN communication links that traverse firewalls, edge
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`routers, and proxies between connected end devices. Ex. 1001 at 34:17-49, 50:4-6,
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`54:11-52, 56:29-31; Ex. 1089 at 31:9-33:21. The specification and prosecution
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`history do not indicate which configurations, if any, would render communications
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`“indirect” rather than “direct,” (Ex. 1088 at 12:8-13:19), and thus, there can be no
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`clear and unequivocal disavowal of “indirect” communications. See Grober v.
`
`Mako Prods., Inc., 686 F.3d 1335, 1343 (Fed. Cir. 2012). The Board should not
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`read a nebulous “direct” limitation into the claims under the BRI standard.
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`2.
`
`Secure Computer Network Address
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`The Board applied the BRI standard to properly construe this term to mean
`
`“an address that requires authorization for access.” Dec. at 7. Patent Owner offers
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`no reason to change this construction as it does not identify how adopting its
`
`construction would have any effect on the outcome of this proceeding.
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`3.
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`Client Computer
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`Patent Owner attempts to narrow the meaning of “client computer” to a
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`“user’s computer” because “[o]ne of the primary art references asserted against the
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`’180 patent . . . does not disclose a user’s computer that performs the claimed
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`features.” Resp. at 23. The Board rejected that same argument during a
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`reexamination as a blatant, unsupported effort to avoid invalidating prior art, (see
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`4
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`IPR2014-00482
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`Petitioner’s Reply (Paper 23)
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`Reexam. No. 95/001,792, Appeal 2014-000591). While Patent Owner continues to
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`assert the ’180 specification “repeatedly and consistently” “equates the user’s
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`computer 2601 with the ‘client computer’ in the claims,” (Resp. at 22-24), the ’180
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`patent disclosure does no such thing – it uses the term “client computer” to
`
`describe “the present invention” and it mentions the term “user’s computer” only
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`four times. Ex. 1001 at 39:53-62, 40:36-45, 41:40-43, 47:4-8. This is far from a
`
`repeated and consistent use of the term, and plainly does not operate to redefine
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`“client computer” as “user’s computer.” See In re Paulsen, 30 F.3d at 1480.
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`Because it is inconsistent with the Board’s prior decisions and unsupported by the
`
`specification, Patent Owner’s new definition must be rejected.
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`II. Kiuchi Anticipates Claims 1, 4, 10, 12-15, 17, 20, 26, 28-31, 33, and 35
`
`The Board correctly found Kiuchi to anticipate the above listed claims. Dec.
`
`at 13-18. In response, Patent Owner contends (1) Kiuchi does not disclose a single
`
`“secure computer network address,” (2) neither message identified by the Board
`
`constitutes an “access request message,” and (3) Kiuchi does not disclose a “VPN
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`communication link” because the communications are not direct or on a network.
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`None of these contentions is supported by the record, and each must be rejected.
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`A. The “Server-Side Proxy” and “Host” Are the Same Device
`
`Nearly all of Patent Owner’s arguments rest on its allegation that the Board
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`erred by mapping “the same claim feature to varying addresses” in the Kiuchi
`
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`5
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`IPR2014-00482
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`Petitioner’s Reply (Paper 23)
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`scheme. Resp. at 31-36. Specifically, Patent Owner contends the Board
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`“alternates between different addresses . . . depending on the particular claim
`
`feature.” Id. at 31. The Board did no such thing – it correctly recognized that in
`
`Kiuchi the “host” and the “server-side proxy” are the same device.
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`Patent Owner employs this mischaracterization to contend the Board
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`improperly “mixes and matches” the Kiuchi elements, identifying the server-side
`
`proxy’s name and IP address as mapping to the claimed “secure computer network
`
`address,” for some limitations, but referring to the “host” and the “host IP address”
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`when discussing the same claim elements in other contexts. Resp. at 31-35. For
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`example, Patent Owner argues that the server-side proxy’s IP address, returned in
`
`response to Kiuchi’s “query message,” does not “correspond[]” to the requested
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`host URL. Id. at 35-36. The Board can readily dismiss these arguments because
`
`Kiuchi makes absolutely clear that the “host” is the name of the server-side proxy,
`
`including repeated statements that the C-HTTP hostname is associated with a
`
`server-side proxy. See Ex. 1004, p. 68 §§ 4.2(2), 4.3(3)(d); p. 65, § 2.3(2); p. 71,
`
`App. § 1.3 (“Server-Side-Proxy-Name: Used for specifying the hostname of a
`
`server-side proxy.”); p. 73, App. 3. Even Dr. Monrose agrees that Kiuchi shows “a
`
`host name [is] associated with the firewall . . . the server-side proxy is installed on
`
`the firewall,” and the host name of the proxy can be stored in the C-HTTP name
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`server. Ex. 1088 at 49:8-51:19, 66:4-67:7, 68:4-18.
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`6
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`IPR2014-00482
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`Petitioner’s Reply (Paper 23)
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`Tellingly, Patent Owner cites no passage in Kiuchi equating the “host” or
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`“hostname” with the origin server. That is because there are none. Instead, Kiuchi
`
`explains “[f]rom the view of the user agent or client-side proxy, all resources
`
`appear to be located in a server-side proxy on the firewall.” Ex. 1004 at p. 66,
`
`§ 2.3(7); Ex. 1088 at 56:1-21. That statement would be illogical if the client-side
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`proxy knew the hostnames and IP addresses of the origin servers. While Patent
`
`Owner identifies the “resource” portion of the URL as corresponding to the origin
`
`server, the resource is not the hostname, is not sent to the C-HTTP name server,
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`and is irrelevant. Resp. at 33-34; Ex. 1088 at 52:15-17. Patent Owner’s analysis
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`would fail even if the “host” referred to the origin server because Kiuchi shows the
`
`“host” is resolved into the IP address of the server-side proxy and any messages
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`sent to the origin server are sent to that IP address. Ex. 1004 at p. 65-66 § 2.3(2),
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`(6); Ex. 1088 at 53:4-18, 57:14-58:6, 61:3-19, 64:1-65:11. Thus, Patent Owner’s
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`arguments, based on a factually inaccurate description of Kiuchi, must be rejected.
`
`B. Kiuchi Discloses an “Access Request Message”
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`The Board correctly found the HTTP/1.0 GET Request and Kiuchi’s step (3)
`
`request for connection is each “an access request message.” Dec. at 15-16. Patent
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`Owner disagrees, asserting neither message (1) is sent to the secure network
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`address, (2) seeks “communication, information, or services,” and (3) is part of a
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`VPN communication link. Resp. at 36-40. These arguments must be rejected.
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`
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`7
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`

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`IPR2014-00482
`
`Petitioner’s Reply (Paper 23)
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`1.
`
`Both Messages Are Sent to a “Secure Network Address”
`
`Patent Owner incorrectly asserts (Resp. at 37-39) the Board has identified
`
`two different “secure computer network addresses” – as explained above, there is a
`
`single “secure computer network address” – the server-side proxy’s. See § II.A,
`
`above. Patent Owner then contends the HTTP/1.0 GET Request is never received
`
`by the server-side proxy or the origin server because the client-side proxy sends a
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`C-HTTP message to the server-side proxy. Resp. at 37. But Kiuchi explains the
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`client-side proxy receives the HTTP/1.0 GET Request, encrypts it, “wraps” the
`
`encrypted HTTP/1.0 message in a C-HTTP message and sends it to the server-side
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`proxy. Ex. 1004 at p. 66, Fig. (c); see id. § 2.3(8) (“the C-HTTP response is
`
`decrypted and the HTTP/1.0 response extracted”), § 2.3(6) (“a client-side proxy
`
`forwards HTTP/1.0 requests . . .”). Thus, the server-side proxy receives both the
`
`C-HTTP message and the HTTP/1.0 message. Indeed, Kiuchi’s use of C-HTTP to
`
`wrap an encrypted HTTP/1.0 message is one of the techniques the ’180 patent says
`
`can be used in establishing VPN communication links. Ex. 1001 at 15:42-45,
`
`22:51-59, 54:21-29, 55:37-46; Ex. 1088 at 33:7-25:19. Thus, Kiuchi shows
`
`sending the “access request message” via a VPN communication link. Patent
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`Owner also argues the HTTP/1.0 message sent by the user agent is modified by the
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`client-side proxy before sending it to the server-side proxy, (Resp. at 37-38), but
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`that is irrelevant as the client-side proxy itself satisfies this step. Dec. at 15-16.
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`8
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`IPR2014-00482
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`Petitioner’s Reply (Paper 23)
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`2.
`
`Both Messages Seek Communication, Information or
`Services
`
`Patent Owner next disputes that the C-HTTP messages are seeking
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`“communication, information or services” from the server-side proxy. Resp. at 39-
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`40. But Patent Owner admits the server-side proxy provides at least one service—
`
`buffering: “the server-side proxy may buffer resources it receives from the origin
`
`server prior to sending them to the client-side proxy.” Resp. at 40; Ex. 2024 ¶ 44;
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`Ex. 1088 at 56:12-15. The HTTP/1.0 GET Request also signifies the client-side
`
`proxy is requesting from the server-side proxy to provide information and to
`
`perform a service – to forward the message to the origin server, obtain and buffer
`
`the requested information, and return it. See Ex. 1021 at 5 (“server[:] An
`
`application program that accepts connections in order to service requests by
`
`sending back responses.”), id. (“proxy[:] An intermediary program which acts as
`
`both a server and a client for the purpose of making requests on behalf of other
`
`clients. . . .”). Similarly, step (3) of Kiuchi, the “request for connection” message,
`
`signifies that the client-side proxy is seeking to communicate with the server-side
`
`proxy and to establish a connection. Ex. 1004 at p. 65, § 2.3(1); Ex. 1088 at 55:13-
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`15; Ex. 2024 ¶ 31. Thus, both messages are access request messages.
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`C. Kiuchi Discloses a “VPN Communication Link”
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`The Board correctly found Kiuchi to disclose a VPN communication link
`
`that is used when sending the access request message. Dec. at 15-16. In response,
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`9
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`IPR2014-00482
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`Petitioner’s Reply (Paper 23)
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`Patent Owner asserts Kiuchi’s “point-to-point connection” between its client-side
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`and proxy-side servers is neither (a) on a network or (b) direct. Resp. at 40-45.
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`This argument rests on Patent Owner’s improper construction of VPN
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`communication link and ignores that Figure 33 of the ’180 patent discloses the
`
`same type of point-to-point connection. See § I.C.1, above; Ex. 2024 at ¶ 17.
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`Patent Owner’s position also conflicts with Kiuchi, which states its systems create
`
`a network: “we discuss the design and implementation of a closed HTTP . . .-based
`
`network (C-HTTP) which can be built on the Internet.” Ex. 1004 at p. 64, §§ 1,
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`2.1, 2.2; id. at p. 68, § 4.2(3), p. 69, § 5 (describing a “virtual network” as linking
`
`multiple participants, e.g., “the headquarters and branches of a given corporation”),
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`p. 65, § 2.3(1); see Ex. 1088 at 61:10-14, 69:9-72:3 (multiple connection IDs in a
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`“connection table in the client-side proxy” indicates multiple connections).
`
`Patent Owner’s arguments about “direct” communications are equally
`
`flawed. Patent Owner does not dispute that the client-side proxy and the server-
`
`side proxy in Kiuchi directly communicate. Resp. at 37-38. It instead
`
`manufactures a supposed difference out of how these messages are packaged and
`
`delivered (i.e., that HTTP/1.0 messages are encapsulated in C-HTTP messages).
`
`Id. In reality there is no difference; the Kiuchi proxy servers encapsulate, or
`
`“wrap”—but do not reformat—HTTP/1.0 messages into encrypted C-HTTP
`
`messages. Ex. 1004 at p. 66, § 2.3(6). The same technique is described in the ’180
`
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`10
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`IPR2014-00482
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`Petitioner’s Reply (Paper 23)
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`patent, and excluding this technique is flatly inconsistent with the ’180 patent’s
`
`disclosure. See Ex. 1001 at 55:39-46, 54:24-27 (describing “tunneling the data).
`
`D. Kiuchi Discloses the “Request for Information Stored at the
`Secure Computer Network Address” of Claims 12 and 28
`
`The Board correctly found Kiuchi’s access request messages to be
`
`“request[s] for information stored at the secure computer network address.” Patent
`
`Owner first argues that Kiuchi’s HTTP requests are not “for information stored” at
`
`the server-side proxy because the information is retrieved from an origin server
`
`only in response to the request. Resp. at 45-47. But the actual data provided by
`
`the server-side proxy is the data stored into the server-side proxy. Pet. 26; Ex.
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`1004 at p. 69, § 3(2). The HTTP request therefore is “for” the information
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`eventually stored at the server-side proxy. Moreover, a successful request for
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`connection causes the server-side proxy to “generate[] both a connection ID and a
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`second symmetric data exchange key and return[] that to the client-side proxy.”
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`Ex. 1089 at 69:5-13; Ex. 1004 at p. 66, § 2.3(5). Kiuchi’s access request messages
`
`are thus requests for server-side proxy data.
`
`E. Kiuchi Shows the “Client Computer” of Claims 13, 15, 29, and 30
`
`Patent Owner argues that the client-side proxy cannot be a “client computer”
`
`because the Federal Circuit found “substantial evidence” that Kiuchi’s client-side
`
`proxy was not a “client.” Resp. at 48-52; VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d
`
`1308, 1324 (Fed. Cir. 2014). But this proceeding uses a broader standard of claim
`
`
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`11
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`IPR2014-00482
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`Petitioner’s Reply (Paper 23)
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`construction and a lower evidentiary threshold; Patent Owner’s arguments are thus
`
`irrelevant. Patent Owner also argues that the phrase “client computer” should be
`
`construed to mean “user’s computer.” Resp. at 52-53. As discussed in § I.C.3, this
`
`construction is not warranted. See also Ex. 1021 at 5.
`
`III. Kiuchi In View of Bhatti Renders Claims 1, 4, 10, 12-15, 17, 20, 26, 28-
`31, 33, and 35 Obvious
`
`The Board correctly found Kiuchi in view of Bhatti renders claims 1, 4, 10,
`
`12-15, 17, 20, 26, 28-31, 33, and 35 obvious. Dec. at 18. In response, Patent
`
`Owner argues that because the “access request message” in Bhatti is sent to a
`
`content server, in a Kiuchi combination it would be sent to the origin server and
`
`not the claimed “secure computer network address,” i.e., the server-side proxy.
`
`Resp. at 49-50. Patent Owner ignores that in Kiuchi all HTTP messages are routed
`
`through the client-side and server-side proxies, meaning that a Bhatti access
`
`request message would be sent from the client-side proxy to the IP address
`
`(“secure network address”) of the server-side proxy. Pet. at 46. This message is a
`
`request for the server-side proxy to provide information and to perform a service:
`
`obtain, buffer, and return the requested information. See § II.C; Ex. 1021 at 5.
`
`IV. Kiuchi in View of Tavs with or without Bhatti Renders Claims 6, 22,
`and 37 Obvious
`
`The Board correctly found Kiuchi and Tavs (with or without Bhatti) renders
`
`claims 6, 22, and 37 obvious. Dec. at 19. Patent Owner argues the combination
`
`
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`12
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`IPR2014-00482
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`Petitioner’s Reply (Paper 23)
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`does not suggest a VPN communication link “based on” Tavs’ service-level
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`categories. Resp. at 57-60. But the effect of Tavs’ service-level categories is the
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`same as the ’180 patent’s “level of service”: the operation of a communication link
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`is controlled by or “based on” a level of service. Ex. 1008 at 5:23-28; Ex. 1001 at
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`55: 57-65. Patent Owner argues “based on” means “fundamentally modified by,”
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`but that interpretation is not disclosed, let alone mandated, by the ’180 patent.
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`Patent Owner next offers several erroneous reasons for why one of ordinary
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`skill would not have combined Kiuchi with Tavs. Resp. at 56-60. It argues that
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`embedding service-level data in the HTTP header would not work because the
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`HTTP header is encrypted by the C-HTTP protocol. Patent Owner simply ignores
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`that the Tavs service-level data can be embedded in the network (IP) header, as
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`Tavs explains. Pet. at 33; Ex. 1008 at 5:25-28; Ex. 1089 at 78:20-79:12.
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`Embedding service-level data in IP headers was well-known and conventional, as
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`even Dr. Monrose admitted. Ex. 1089 at 35:18-38:13, 83:9-87:3; Ex. 1020 at 16.
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`Next, Patent Owner argues that Tavs would “add computational burden and strain”
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`by adding additional steps and computations to the Kiuchi proxy servers to
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`distinguish the data types. Patent Owner ignores that Kiuchi explicitly teaches: (i)
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`that the proxy servers treat certain data differently and (ii) modifying the proxies
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`by implementing routines to “check the contents of object bodies” during
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`operation. Ex. 1004 at p. 67, § 3(2) (treating image and sound differently). Patent
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`13
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`IPR2014-00482
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`Petitioner’s Reply (Paper 23)
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`Owner’s concern about “potential” strain caused by implementing such routines
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`was not shared by Kiuchi’s authors. Patent Owner’s arguments either ignore the
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`explicit disclosure of Kiuchi and Tavs or are contradicted by its own expert.
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`V. The Board Is Not Required to Rely on Expert Testimony
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`Patent Owner complains the declaration submitted in this proceeding does
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`not address the Kiuchi reference and argues that the lack of expert testimony about
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`Kiuchi “requires that judgment be entered against Petitioner.” Resp. at 2-4. The
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`law requires no such thing – expert testimony is not required to prove that a patent
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`is anticipated or obvious: “the legal determination of obviousness may include
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`recourse to logic, judgment, and common sense, in lieu of expert testimony.”
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`Wyers v. Master Lock Co., 616 F.3d 1231, 1239 (Fed. Cir. 2010); Centricut, LLC v.
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`Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004) (“expert testimony will
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`not [always] be necessary because the technology will be easily understandable
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`without the need for expert explanatory testimony”); Perfect Web Techs., Inc. v.
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`InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). Similarly, nothing requires
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`an Inter Partes Review Petitioner to rely on expert opinion to support a petition:
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`“Testimony from a technical expert is not a prerequisite for establishing
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`unpatentability.” Guangdong Xinbao Elec. Appl. Holdings, Ltd., v. Adrian Rivera,
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`IPR2014-00042, Paper 50 (Feb. 6, 2015) at 22; Riverbed Tech. v. Silver Peak Sys.,
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`14
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`IPR2014-00482
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`Petitioner’s Reply (Paper 23)
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`IPR2013-00402, Paper 35 (Dec. 30, 2014) at 25 (“Testimony from a technical
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`expert . . . is not a prerequisite for a petition . . .”).
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`Here, the Kiuchi reference is easily understandable, and expert testimony is
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`not required to illuminate its teachings. In its Institution Decision, the Board relied
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`directly on the passages of Kiuchi and did not need expert testimony to understand
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`them. Patent Owner identifies no technical error in the Board’s decision, and
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`instead asserts that because Kiuchi does not label C-HTTP hostnames (e.g.,
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`“coordinating.center.CSCRG”) as “secure domain names,” Kiuchi can only
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`“inherently” disclose a “secure domain name” which requires expert testimony to
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`prove. See Resp. at 2-3. Not only did the Board not rely on inherency, but the
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`Board is more than capable of drawing logical inferences from references without
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`the need for expert testimony. Patent Owner also argues that the obviousness
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`grounds lack evidence “in critical places,” but the petition itself articulates the
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`rationale to combine the references, and cites the relevant passages of those
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`references. The anticipation and obviousness of the claims are supported by the
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`disclosures in the references, and expert testimony is unnecessary.
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`VI. Conclusion
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`Petitioner respectfully requests the Board maintain its constructions and find
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`that Kiuchi anticipates, or, in combination with in Bhatti or Tavs, renders obvious
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`the challenged claims.
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`15
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`IPR2014-00482
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`Dated: March 19, 2015
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`Petitioner’s Reply (23)
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`Respectfully Submitted,
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`/ 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
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`16
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`IPR2014-00482
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`Petitioner’s Reply (Paper 23)
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`Certificate of Service
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`I hereby certify that on this 19th day of March, 2015, a copy of this
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`Petitioner’s Reply has been served in its entirety by email on the following counsel
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`of record for Patent Owner:
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`Joseph E. Palys
`E-mail: josephpalys@paulhastings.com
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`Naveen Modi
`E-mail: naveenmodi@paulhastings.com
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`Jason E. Stach
`E-mail: Jason.stach@finnegan.com
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`Dated:
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`March 19, 2015
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`Respectfully submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Attorney for Petitioner Apple
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`