Trials@uspto.gov
`571.272.7822
`
`
`
`
`Paper 9
`Entered: October 15, 2014
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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 IPR2014-00610
`Patent 7,490,151 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
`
`
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`Microsoft Corporation (“Petitioner”) filed a Petition (“Pet.”) on April
`
`10, 2014 (Paper 1) requesting inter partes review of claims 1, 2, 6–8, and
`
`12–14 of U.S. Patent No. 7,490,151 B2 (iss. Feb. 10, 2009) (“the ’151
`
`Patent,” Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. VirnetX Inc. (“Patent
`
`
`571.272.7822
`
`
`
`
`Paper 9
`Entered: October 15, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00610
`Patent 7,490,151 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
`
`
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`
`Microsoft Corporation (“Petitioner”) filed a Petition (“Pet.”) on April
`
`10, 2014 (Paper 1) requesting inter partes review of claims 1, 2, 6–8, and
`
`12–14 of U.S. Patent No. 7,490,151 B2 (iss. Feb. 10, 2009) (“the ’151
`
`Patent,” Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. VirnetX Inc. (“Patent
`
`
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`IPR2014-00610
`Patent 7,490,151 B2
`
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`Owner”) filed a Preliminary Response (“Prelim. Resp.”) on July 17, 2014.
`
`
`
`Paper 7.
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`
`inter partes review may not be instituted “unless . . . 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, 2, 6–8,
`
`and 12–14.
`
`Petitioner relies on the following prior art:
`
`
`Takahiro Kiuchi & 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 64–75 (1996) (Ex. 1018, “Kiuchi”).
`
`Aventail Corp., Aventail Connect v3.01/v2.51 Administrator’s Guide
`1–194 (1999) (Ex. 1007, “Aventail”).
`
`P. Mockapetris, Domain Names — Concepts and Facilities,
`NETWORK WORKING GROUP, REQUEST FOR COMMENTS: 1034 1–55
`(1987) (Ex. 1008, “RFC 1034”).
`
`E. Rescorla and A. Schiffman, The Secure HyperText Transfer
`Protocol, Enterprise Integration Technologies 1–99 (1996) (Ex. 1010,
`“RFC 2660”).
`
`
`Petitioner contends that the challenged claims are unpatentable under
`
`35 U.S.C. § 102 and/or § 103 based on the following specific grounds (Pet.
`
`3–4, 15–60):
`
`2
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`IPR2014-00610
`Patent 7,490,151 B2
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`Reference(s)
`
`Kiuchi
`Kiuchi and any one of RFC
`2660 or RFC 1034
`Kiuchi, RFC 1034, and
`RFC 2660
`Aventail
`Aventail and RFC 2660
`
`
`
`
`Basis
`
`§ 102
`§ 103
`
`§ 103
`
`
`
`Claims challenged
`
`1, 2, 6–8, and 12–14
`1, 2, 6–8, and 12–14
`
`1, 2, 6–8, and 12–14
`
`§ 102 or § 103
`§ 103
`
`1, 2, 6–8, and 12–14
`1, 2, 6–8, and 12–14
`
`B.
`
`The Invention
`
`The ’151 Patent describes a system and method for securely
`
`communicating over the internet. Ex. 1001, 3:8. A Domain Name Server
`
`(“DNS”) provides a look-up function that returns the IP address of a
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`requested computer or host. Id. at 36:61–63. A user sends a request to the
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`DNS to look up the IP address associated with a name of a destination host.
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`Id. at 37:4–7. The DNS returns the IP address to the client, which is then
`
`able to use the IP address to communicate with the host. Id. at 37:6–9.
`
`
`
`Claim 1 of the ’151 Patent is reproduced below:
`
`
`
`1. A data processing device, comprising memory
`storing a domain name server (DNS) proxy module that
`intercepts DNS requests sent by a client and, for each
`intercepted DNS request, performs the steps of:
`(i) determining whether the intercepted DNS request
`corresponds to a secure server;
`(ii) when
`the
`intercepted DNS request does not
`correspond to a secure server, forwarding the DNS request to a
`DNS function that returns an IP address of a nonsecure
`computer, and
`(ii) when the intercepted DNS request corresponds to a
`secure server, automatically initiating an encrypted channel
`between the client and the secure server.
`
`3
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`IPR2014-00610
`Patent 7,490,151 B2
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`We note that the ’151 Patent is presently the subject of co-pending
`
`lawsuits, as follows:
`
`1) Civil Action No. 6:13-cv-00211-LED (E.D. Tex.), filed February
`
`26, 2013;
`
`2) Civil Action No. 6:12-cv-00855-LED (E.D. Tex.), filed November
`
`6, 2012;
`
`3) Civil Action No. 6:10-cv-00417-LED (E.D. Tex.), filed August 11,
`
`2010;
`
`4) Civil Action No. 6:11-cv-00018-LED (E.D. Tex), filed April 27,
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`2012;
`
`5) Civil Action No. 6:13-cv-00351-LED (E.D. Tex), filed April 22,
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`2013 (“the 2013 litigation”);
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`6) Civil Action No. 6:10-cv-00094 (E.D. Tex), filed March 17, 2010;
`
`and Civil Action No. 6:07-cv-00080 (E.D. Tex), filed February 15,
`
`2007.
`
`See Pet. 1.
`
`The United States Court of Appeals for the Federal Circuit recently
`
`affirmed a jury’s finding that none of claims 1 and 13 of the ’151 Patent are
`
`invalid in an appeal of a judgment in a district court case. See VirnetX, Inc.
`
`v. Cisco Systems, Inc., No. 2013-1489, 2014 WL 4548722 (Fed. Cir. Sept.
`
`16, 2014).
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`4
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`Claim Construction
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`C.
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`
`
`Consistent with the statute and the legislative history of the Leahy-
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`Smith America Invents Act, Pub. L. 112-29, 125 Stat. 284, 329 (Sept. 16,
`
`2011) (“AIA”), the Board interprets claim terms by applying the broadest
`
`reasonable construction in the context of the specification in which the
`
`claims reside. 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 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
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`claim term must be set forth in the specification with reasonable clarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994). In this regard, however, we are careful not to read a particular
`
`embodiment appearing in the written description into the claim if the claim
`
`language is broader than the embodiment. In re Van Geuns, 988 F.2d 1181,
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`1184 (Fed. Cir. 1993).
`
`In contrast to the broadest reasonable interpretation standard
`
`employed by the Board for an unexpired patent, the Federal Circuit employs
`
`a narrower claim construction standard when reviewing the construction of a
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`claim applied by the district court. See 37 C.F.R. § 42.100 (b) (“A claim in
`
`an unexpired patent shall be given its broadest reasonable construction in
`
`light of the specification in which it appears.”); cf. In re Rambus, Inc., 694
`
`F.3d 42, 46 (Fed. Cir. 2012) (Contrasting the Board’s review of expired
`
`patents, which is “similar to that of a district court review,” with the Board’s
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`5
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`review of unexpired patents, which involves the broadest reasonable
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`
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`interpretation standard).
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`
`
`1) DNS Request
`Claim 1 recites a DNS request. Petitioner contends that a “DNS
`
`request” is “a request for a resource corresponding to a domain name.” Pet.
`
`6. Patent Owner agrees with this construction. Prelim. Resp. 22. At this
`
`preliminary stage of the proceedings, we adopt, as the broadest reasonable
`
`construction, the parties’ construction of the term “DNS Request” to mean
`
`“a request for a resource corresponding to a domain name.”
`
`
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`2) Automatically initiating/creating
`
`Petitioner contends that “automatically initiating” means initiating
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`“without involvement of a user.” Pet. 7. Patent Owner agrees with
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`Petitioner’s construction. Prelim. Resp. 24–25. Patent Owner states that the
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`’151 Patent specification discloses embodiments in which a user “makes the
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`initial DNS request” but “is not involved in initiating/creating the VPN . . .
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`channel.” Id. at 24. Patent Owner, however, does not explain sufficiently
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`how the user is “not involved” in initiating a channel if the channel is
`
`initiated in response to a user’s “DNS request.” For example, Patent Owner
`
`does not contend that the ’151 Patent specification discloses that a channel is
`
`initiated “automatically” without a “DNS request” from a user. Therefore,
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`the ’151 Patent specification appears to disclose at least one embodiment of
`
`“automatically” initiating a channel in which a user is “involved.”
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`6
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`IPR2014-00610
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`We note that the term “automatic” has a plain and ordinary meaning
`
`
`
`of “marked by action that . . . arises as a really or apparently necessary
`
`reaction to or consequence of a given set of circumstances” or “having a
`
`self-acting or self-regulating mechanism.” WEBSTER’S THIRD NEW
`
`INTERNATIONAL DICTIONARY 148 (1971) (Ex. 3001). For the purposes of
`
`this proceeding, we construe the term “automatically” to mean “marked by
`
`action that . . . arises as a really or apparently necessary reaction to or
`
`consequence of a given set of circumstances” or “having a self-acting or
`
`self-regulating mechanism,” in accordance with the dictionary definition.
`
`
`
`3) Secure Server
`
`Claim 1 recites a DNS request that may correspond to a secure server.
`
`Petitioner contends that a “secure server” is “a server that requires
`
`authorization for access and that can communicate in an encrypted channel.”
`
`Pet. 7. Patent Owner agrees with Petitioner’s construction of this term.
`
`Prelim. Resp. 23. Neither Petitioner nor Patent Owner shows sufficiently
`
`that a “secure server” must communicate in an “encrypted channel,” as
`
`opposed to any channel that is secure by means other than encryption.
`
`Therefore, for the purposes of this proceeding, we construe the term “secure
`
`server” to mean “a server that communicates over a transmission path that
`
`restricts access to data or other information on the path.”
`
`
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`4) Client
`
`Petitioner contends that a “client” is “a computer or program from
`
`which a data request to a server is generated.” Pet. 7. Patent Owner
`
`contends that a “client” is a “user’s computer.” Prelim. Resp. 25–28. Both
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`7
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`IPR2014-00610
`Patent 7,490,151 B2
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`constructions have merit for reasons provided by each party. At this
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`
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`preliminary stage, we are persuaded that the broadest reasonable
`
`interpretation of “client” encompasses a device, computer, system, or
`
`program from which a data request to a server is generated.
`
`
`
`5)
`
`Between
`
`Petitioner argues that the term “between” in the context of a channel
`
`“between” the client and the secure server, as recited in claim 1, should be
`
`construed to mean a channel that is “between the client and the secure
`
`server, regardless of whether that channel fully extends from the client to the
`
`secure server.” Pet. 8. Patent Owner argues that “[n]o construction [of the
`
`term “between” is] necessary.” Prelim. Resp. 29.
`
`Neither Petitioner nor Patent Owner indicates an explicit, specialized
`
`definition of the term “between” in the ’151 Patent specification. Given the
`
`absence of such a definition, a plain and customary meaning of the term
`
`“between” would have been understood by one of ordinary skill in the art to
`
`be “in the space that separates.”1
`
`
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`7) Other claim terms
`
`The parties do not disagree materially about other claim terms
`
`involved in this proceeding. It is not necessary to define expressly other
`
`claim terms at this juncture of the proceeding.
`
`
`
`II. ANALYSIS
`
`
`1 See WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY 209 (1971) (Ex.
`3001).
`
`8
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`IPR2014-00610
`Patent 7,490,151 B2
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`A.
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`Cited References
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`
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`1) Overview of Kiuchi
`
`
`
`
`
`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. 1018, 64, cols. 1–2. Communication is made possible with a
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`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. at 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 technology. Id. at 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. Id. at 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
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`9
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`IPR2014-00610
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`client-side proxy accepts the connection ID from the server-side proxy, the
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`
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`connection is established. Id. at 66, col. 2.
`
`
`
`2) Overview of RFC 2660
`
`RFC 2660 discloses a client and server authenticating each other and
`
`exchanging sensitive information confidentially using secure communication
`
`mechanisms between an HTTP client-server pair. Ex. 1010, 5:8–10, 13–14.
`
`
`
`3) Overview of RFC 1034
`
`RFC 1034 discloses a name server that answers standard queries in
`
`recursive mode or non-recursive mode. Ex. 1008, 21. In non-recursive
`
`mode, the server is unable to provide an answer to the request and refers to
`
`“some other server ‘closer’ to the answer.” Id. In recursive mode, the server
`
`“returns either an error or the answer, but never referrals.” Id.
`
`
`
`B.
`
`Preliminary Arguments
`
`Patent Owner asserts that the Petition is defective. See Prelim. Resp.
`
`2, 7, 11. Notwithstanding Patent Owner’s assertions, we determine, based
`
`on the record, that Petitioner establishes “sufficient grounds” within the
`
`prescribed page limits.
`
`
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`C.
`
`Anticipation by Kiuchi
`
`Petitioner asserts that claims 1, 2, 6–8, and 12–14 are anticipated
`
`under 35 U.S.C. § 102 by Kiuchi. Pet. 18–27. In support of these asserted
`
`ground of unpatentability, Petitioner provides explanations as to how each
`
`claim limitation recited in claims 1, 2, 6–8, and 12–14 is disclosed by
`
`10
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`IPR2014-00610
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`Kiuchi. Upon consideration of Petitioner’s analysis and supporting
`
`
`
`evidence, and taking into account Patent Owner’s Preliminary Response, we
`
`are persuaded on this record that Petitioner has demonstrated there is a
`
`reasonable likelihood that it would prevail with respect to anticipation of
`
`claims 1, 2, 6–8, and 12–14 over Kiuchi.
`
`Claim 1 recites a data processing device “storing a domain name
`
`server (DNS) proxy module that intercepts DNS requests sent by a client.”
`
`Claims 7 and 13 recite a similar feature. Petitioner explains that Kiuchi
`
`discloses a “client-side proxy” that receives a request from a user. Pet. 18–
`
`19.
`
`Claim 1 recites “determining whether the intercepted DNS request
`
`corresponds to a secure server.” Petitioner explains that Kiuchi discloses
`
`“the client-side proxy determines whether the request from the user agent
`
`corresponds to a secure server” by “asking ‘the C-HTTP name server
`
`whether it can communicate with the host specified in a given URL.’” Pet.
`
`20–21 (citing Ex. 1018, 65, § 2.3).
`
`Patent Owner argues that Kiuchi discloses that “[t]he C-HTTP name
`
`server, not the client-side proxy, . . . determines whether the hostname
`
`corresponds to an origin server behind the server-side proxy.” Prelim. Resp.
`
`5. In other words, Patent Owner argues that Kiuchi fails to disclose that the
`
`“client-side proxy” performs the step of “determining whether the
`
`intercepted DNS request corresponds to a secure server,” as recited in claim
`
`1. Petitioner and Patent Owner do not indicate an explicit definition of the
`
`term “determining” in the ’151 Patent specification. In the absence of such a
`
`definition, we adopt a plain and customary meaning of the term to mean “to
`
`come to a decision concerning as the result of investigation or reasoning” or
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`11
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`“to cause or elicit determination of.” WEBSTER’S THIRD NEW
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`
`
`INTERNATIONAL DICTIONARY 616 (1971) (Ex. 3001). Kiuchi discloses that
`
`the client-side proxy “asks the C-HTTP name server whether it can
`
`communicate with the host specified in a given URL.” Ex. 1018, 65. Based
`
`on the record presented, Patent Owner does not point out sufficient
`
`differences between the client-side proxy of Kiuchi “ask[ing] . . . whether it
`
`can communicate with the host” (and subsequently receiving the answer to
`
`the inquiry from the C-HTTP name server) and the client-side proxy of
`
`Kiuchi “find[ing] out” or “com[ing] to a decision about by investigation,
`
`reasoning, or calculation” or “bring[ing] about the determination of”
`
`whether it can communicate with the host (i.e., “determining” whether it can
`
`communicate with the host). In light of the record currently before us,
`
`Petitioner has persuaded us that Kiuchi discloses this limitation.
`
`Claim 1 recites “when the intercepted DNS request does not
`
`correspond to a secure server, forwarding the DNS request to a DNS
`
`function that returns an IP address of a nonsecure computer.” Claims 7 and
`
`13 recite a similar feature. Petitioner argues that Kiuchi discloses that the
`
`client-side proxy receives a “status code” that indicates “an error” when the
`
`DNS request does not correspond to a secure server and, responsive to the
`
`“status code,” “performs DNS lookup, behaving like an ordinary HTTP/1.0
`
`proxy.” Pet. 21; Ex. 1018, 65.
`
`Claim 1 recites “when the intercepted DNS request corresponds to a
`
`secure server, automatically initiating an encrypted channel between the
`
`client and the secure server.” Claims 7 and 13 recite a similar feature.
`
`Petitioner argues that Kiuchi discloses that the “client-side proxy asks the C-
`
`HTTP name server whether it can communicate with the host,” “[i]f the
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`12
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`connection is permitted, the C-HTTP name server sends the IP address and
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`public key of the server-side proxy,” and that “the client-side proxy uses this
`
`information to initiate a sequence of steps for a secure C-HTTP session.”
`
`Pet. 22, 25, 26; Ex. 1018, 65. As Petitioner explains, Kiuchi discloses that
`
`the “sequence of steps” for creating the channel2 is initiated automatically
`
`(i.e., “marked by action that . . . arises as a really or apparently necessary
`
`reaction to or consequence of a given set of circumstances” or “having a
`
`self-acting or self-regulating mechanism”) after determining that “the
`
`connection is permitted.” Ex. 1018, 65.
`
`Petitioner argues that Kiuchi discloses each recited limitation of
`
`claims 2, 6, 8, 12, and 14. Pet. 26–27. On the record currently before us, we
`
`are persuaded that Petitioner has shown a reasonable likelihood that claims
`
`1, 2, 6–8, and 12–14 are anticipated by Kiuchi. See Pet. 18–27.
`
`
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`D. Obviousness over Kiuchi and RFC 2660
`
`Petitioner asserts that claims 1, 2, 6–8, and 12–14 are obvious under
`
`35 U.S.C. § 103(a) by Kiuchi and RFC 2660. Pet. 27–31. In support of this
`
`asserted ground of unpatentability, Petitioner provides explanations as to
`
`how each claim limitation recited in claims 1, 2, 6–8, and 12–14 is disclosed
`
`or suggested by Kiuchi and RFC 2660 and, based on the current record,
`
`articulates sufficient reasoning with a rational underpinning to justify
`
`support for the conclusion of obviousness. Id. Upon consideration of
`
`Petitioner’s analysis and supporting evidence, and taking into account Patent
`
`Owner’s Preliminary Response, we are persuaded on this record that
`
`
`2 E.g., “Request for connection to the server-side proxy,” “Lookup of client-
`side proxy information,” “Connection establishment.” Ex. 1018, 65–66.
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`13
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`Petitioner has demonstrated there is a reasonable likelihood that it would
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`prevail with respect to obviousness of claims 1, 2, 6–8, and 12–14 over
`
`Kiuchi and RFC 2660.
`
`Claim 1 recites an encrypted channel between the client and the
`
`secure server. Claims 7 and 13 recite a similar feature. Kiuchi discloses
`
`“[c]onnection establishment” in which a “[server-side] proxy obtains the
`
`client-side proxy’s IP address . . . [and] authenticates the client-side proxy”
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`and that “[w]hen the client-side proxy accepts and checks them, the
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`connection is established.” Ex. 1018, 66. Based on the record, Kiuchi
`
`appears to disclose a connection that is “between” (i.e., “in the space, that
`
`separates”) the client and the secure server, as recited in claim 1.
`
`As Petitioner points out, RFC 2660, like Kiuchi, also discloses a
`
`connection (i.e., “S-HTTP”) that “provides secure communication
`
`mechanisms between an HTTP client-server pair.” Pet. 29 (citing Ex. 1010,
`
`§ 1). Hence, RFC 2660 further demonstrates that it would have been
`
`obvious to one of ordinary skill in the art to have created a secure connection
`
`for a client and server in which the secure connection is “between” (e.g., in
`
`the space that separates) the client and server, as both Kiuchi and RFC 2660
`
`disclose or suggest. Id.
`
`Thus, based on the record before us, Petitioner has demonstrated a
`
`reasonable likelihood of obviousness of claims 1, 2, 6–8, and 12–14 over the
`
`combination of Kiuchi and RFC 2660.
`
`
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`
`
`E. Obviousness over Kiuchi and RFC 1034 (and RFC 2660)
`
`14
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`IPR2014-00610
`Patent 7,490,151 B2
`
`
`
`Petitioner contends that “New Bay Capital asserted that a DNS
`
`
`
`request is a ‘communication that contains a domain name and requests an IP
`
`address for the domain name’” and that “if the Board were to adopt such a
`
`construction, a person of ordinary skill in the art . . . would have considered
`
`these claims obvious based on [Kiuchi] in view of . . . RFC 1034.” Pet. 31.
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`In this proceeding, Petitioner and Patent Owner agree that the term
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`“DNS request” should be construed to mean “a request for a resource
`
`corresponding to a domain name.” Pet. 6, Prelim. Resp. 22. As previously
`
`discussed, we have adopted this construction of the term “DNS request.”
`
`Petitioner appears to assert this ground of unpatentability of the claims over
`
`Kiuchi in combination with RFC 1034 only if the construction of the term
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`“DNS request” as proposed by New Bay Capital is adopted. Id. at 31. We
`
`note that neither Petitioner nor Patent Owner indicate that New Bay Capital
`
`is a party in this proceeding or that the term “DNS request” should be
`
`construed as previously proposed by New Bay Capital. Nor have we
`
`adopted the construction of the term “DNS request” that Petitioner asserts
`
`was proposed by New Bay Capital.
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`Thus, Petitioner does not explain sufficiently why this ground is not
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`redundant to the ground on which we have instituted trial above. We do not
`
`authorize inter partes review on the proposed grounds of unpatentability
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`based combinations of references that include RFC 1034.
`
`
`
`F.
`
`Aventail
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`Petitioner alleges additional grounds of unpatentability of claims 1, 2,
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`6–8, and 12–14 based on Aventail (alone or in combination with other
`
`references). The Board’s rules for AIA post-grant proceedings, including
`
`15
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`IPR2014-00610
`Patent 7,490,151 B2
`
`
`those pertaining to institution, are “construed to secure the just, speedy, and
`
`
`
`inexpensive resolution of every proceeding.” 37 C.F.R.
`
`§ 42.1(b). Therefore, in order to secure just, speedy, and inexpensive
`
`resolution of the proceeding, we exercise our discretion and do not institute a
`
`review based on the asserted grounds of unpatentability based, at least in
`
`part, on Aventail. See 37 C.F.R. § 42.108(a) (“[T]he Board may authorize
`
`the review to proceed . . . on all or some of the grounds of unpatentability
`
`asserted for each claim.”).
`
`
`
`III. CONCLUSION
`
`We institute an inter partes review of claims 1, 2, 6–8, and 12–14
`
`under 35 U.S.C. § 102 as anticipated by Kiuchi and under 35 U.S.C. § 103
`
`as obvious over Kiuchi and RFC 2660.
`
`
`
`IV. ORDER
`
`For the reasons given, it is
`
`
`
`ORDERED that pursuant to 35 U.S.C. § 314(a), inter partes review of
`
`the ’151 Patent is hereby instituted commencing on the entry date of this
`
`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, 2, 6–8, and 12–14 under 35 U.S.C. § 102 as anticipated
`
`by Kiuchi and under 35 U.S.C. § 103 as obvious over Kiuchi and RFC 2660.
`
`No other grounds are authorized.
`
`
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`
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`16
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`IPR2014-00610
`Patent 7,490,151 B2
`
`For PETITIONER:
`
`W. Karl Renner
`Kevin E. Greene
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`axf@fr.com
`IPR38868-0006IP1@fr.com
`
`For PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`
`
`17
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`
`
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