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`Case No. IPR2015-00810
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`
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`Paper No.
`Filed: June 16, 2015
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: naveenmodi@paulhastings.com
`
`
`Filed on behalf of: VirnetX Inc.
`By:
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: josephpalys@paulhastings.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
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`
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`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2015-00810
`Patent 8,868,705
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 8,868,705
`
`
`
`
`
`
`
`

`

`
`
`I.
`
`II.
`
`
`
`Case No. IPR2015-00810
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`Table of Contents
`
`Introduction ...................................................................................................... 1
`
`The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review ......................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`The Petition Improperly Relies on Material That It Fails to
`Establish Is Statutory Prior Art ............................................................. 2
`
`The Petition’s Obviousness Ground Is Redundant and Should
`Be Denied .............................................................................................. 6
`
`The Petition Fails to Show a Reasonable Likelihood Petitioner
`Will Prevail With Respect to Obviousness .........................................11
`
`1.
`
`2.
`
`Beser and RFC 2401 Would Not Have Been Combined
`as the Petition Suggests .............................................................12
`
`The Petition’s Analyses Is Conclusory and Does Not
`Meet the Requirements of § 312(a)(3) ......................................17
`
`a)
`
`b)
`
`c)
`
`Dependent Claims 4 and 26 ............................................18
`
`Dependent Claims 14 and 31 ..........................................19
`
`Dependent claims 18-20 and 22-24 ................................21
`
`III. The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected .........................................................................................................22
`
`A. Overview of the ’705 Patent ................................................................24
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Level of Ordinary Skill in the Art .......................................................25
`
`“Encrypted Communications Channel” Phrases (Claims 1, 2, 4-
`7, 9, 11-13, 18, 21, 22, and 26-29) ......................................................26
`
`“Intercept[ing] . . . A Request to Look up an Internet Protocol
`(IP) address” (Claims 1 and 21) ..........................................................29
`
`“Domain Name” (Claims 1, 3, 10, 21, and 25) ...................................33
`
`“Secure Domain Name” (Claims 3, 10, and 25) .................................34
`
`i
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`
`G.
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`H.
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`Case No. IPR2015-00810
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`“Provisioning Information” (Claims 1, 9, and 21) ..............................37
`
`“Modulated Transmission Link/Unmodulated Transmission
`Link” (Claims 5, 6, 11, 12, 27 and 28) ................................................39
`
`I.
`
`“Phone” (Claims 8, 15, 30, and 32) ....................................................41
`
`IV. Conclusion .....................................................................................................41
`
`
`
`ii
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`Case No. IPR2015-00810
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. Evolutionary Intelligence, LLC,
`IPR2014-00079, Paper No. 8 (Apr. 25, 2014) .................................................... 19
`
`Apple Inc. v. VirnetX Inc.,
`IPR2014-00237, Paper No. 15 (Sept. 15, 2014). .................................... 29, 34, 40
`
`Apple Inc. v. VirnetX Inc.,
`IPR2014-00483, Paper No. 11 (Sept. 15, 2014). .................................................. 9
`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................................... 11
`
`Elec. Frontier Found. v. Pers. Audio, LLC,
`IPR2014-00070, Paper No. 21 (Apr. 18, 2014) .................................................... 5
`
`EMC Corp. v. Personal Web Techs., LLC,
`IPR2013-00087, Paper No. 25 (June 5, 2013) ...................................................... 8
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .......................................................................... 16
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper No. 15 (Jan. 9, 2013) ..................................................... 23
`
`Google Inc. et al. v. EveryMD.com LLC,
`IPR2014-00347, Paper No. 9 (May 22, 2014) .................................................... 19
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ................................................................................................ 11
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 11
`
`L-3 Comm. Holdings, Inc. v. Power Survey, LLC,
`IPR2014-00832, Paper No. (Nov. 14, 2014) ........................................................ 3
`
`iii
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`

`

`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper No. 7 (Oct. 25, 2012) .................................................... 7
`
`Case No. IPR2015-00810
`
`Medichem, SA v. Rolabo, SL,
`437 F.3d 1157 (Fed. Cir. 2006) .......................................................................... 17
`
`Microsoft Corp. v. Proxyconn, Inc.,
`No. 2014-1542, slip op. (Fed. Cir. Jun. 16, 2015) ........................................ 24, 25
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093, Paper No. 28 (Apr. 29, 2013) .................................................. 23
`
`Petroleum Geo-Services Inc., v. WesternGeco LLC,
`IPR2014-01476, Paper No. 18 (Mar. 17, 2015) ................................................. 11
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .................................................... 23, 39
`
`Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP,
`IPR2014-00514, Paper No. 18 (Sep. 9, 2014) ...................................................... 5
`
`Tempur Sealy Int’l, Inc. v. Select Comfort Corp.,
`IPR2014-01419, Paper No. 9 (Mar. 27, 2015) ................................................... 19
`
`VirnetX Inc. v. Cisco Sys. Inc.,
`767 F.3d 1308 (Fed. Cir. 2014) .......................................................................... 28
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) ............................................................................ 23
`
`Federal Statutes
`
`35 U.S.C. § 103 ........................................................................................................ 11
`
`35 U.S.C. § 311(b) ............................................................................................. 1, 2, 4
`
`35 U.S.C. § 312(a)(3) ....................................................................................... 1, 2, 17
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314(a) ......................................................................................... 2, 21, 22
`
`iv
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`Federal Rules
`
`Federal Rules
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`Case No. IPR2015-00810
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`Case No. IPR2015—0O8 10
`
`37 C.F.R. § 1.322(a)(3) ............................................................................................ 29
`37 C.F.R. § 1.322(a)(3) .......................................................................................... ..29
`
`37 C.F.R. § 41.65(a) ........................................................................................... 19, 21
`37 C.F.R. § 41.65(a) ......................................................................................... ..19, 21
`
`37 C.F.R. § 42.1(b) .................................................................................................... 7
`37 C.F.R. § 42.1(b) .................................................................................................. ..7
`
`37 C.F.R. § 42.100(b) .............................................................................................. 22
`37 C.F.R. § 42.100(b) ............................................................................................ ..22
`
`37 C.F.R. § 42.104(b) ................................................................................................ 1
`37 C.F.R. § 42.104(b) .............................................................................................. ..1
`
`37 C.F.R. § 42.104(b)(4) .................................................................................... 19, 21
`37 C.F.R. § 42.104(b)(4) .................................................................................. ..19, 21
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.107 ................................................................................................... ..1
`
`37 C.F.R. § 42.408(c) ......................................................................................... 21, 22
`37 C.F.R. § 42.408(c) ....................................................................................... ..21, 22
`
`
`
`v
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`
`I.
`
`Introduction
`
`
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`Case No. IPR2015-00810
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`Patent Owner VirnetX Inc. respectfully submits this Preliminary Response
`
`in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107, responding to the
`
`Petition for Inter Partes Review (the “Petition”) filed by Apple Inc. against Patent
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`Owner’s U.S. Patent No. 8,868,705 (“the ’705 patent”). Patent Owner requests
`
`that the Board not institute inter partes review for several reasons.
`
`First, Petitioner relies on material that it has not shown is a “patent[] or
`
`printed publication[]” under 35 U.S.C. § 311(b). Second, Petitioner proposes
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`redundant grounds without identifying how any one ground improves on any other,
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`contravening Board precedent requiring petitioners to identify differences in
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`proposed rejections. Next, Petitioner has not met its burden of demonstrating a
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`reasonable likelihood of prevailing in proving unpatentability of any challenged
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`’705 patent claim. The Petition also fails to identify where and what in the prior
`
`art discloses each claimed feature, violating the particularity requirements of 35
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`U.S.C. § 312(a)(3) and 37 C.F.R. § 42.104(b). And finally, Petitioner proposes a
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`number of incorrect claim constructions upon which it bases its unpatentability
`
`grounds. Each of these reasons requires denial of institution.
`
`II. The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review
`The grounds that may be raised in a petition for inter partes review (IPR) are
`
`limited to those “that could be raised under section 102 or 103 and only on the
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` 1
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`basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b).
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`Case No. IPR2015-00810
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`In addition, the Board will not consider redundant grounds and to the extent they
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`are proposed, Petitioner carries the burden of “articulat[ing] a meaningful
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`distinction in terms of relative strengths and weaknesses with respect to application
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`of the prior art disclosures to one or more claim limitations.” ScentAir Techs., Inc.
`
`v. Prolitic, Inc., IPR2013-00180, Paper No. 18 at 3 (Aug. 26, 2013); see also Idle
`
`Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper No. 26 at 3 (June 11,
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`2013) (“[A]t [the] time of institution the Board analyzes the petition on a claim-by-
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`claim, ground-by-ground basis, to eliminate redundant grounds.”) To be instituted,
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`a petition must also “show[] that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the petition.”
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`35 U.S.C. § 314(a). This showing requires that the petition “identif[y], in writing
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`and with particularity, each claim challenged, the grounds on which the challenge
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`to each claim is based, and the evidence that supports the grounds for the challenge
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`to each claim.” 35 U.S.C. § 312(a)(3). Petitioner fails to meet each of these
`
`requirements.
`
`A. The Petition Improperly Relies on Material That It Fails to
`Establish Is Statutory Prior Art
`Prior art relied on in a petition for inter partes review may only consist of
`
`“patents or printed publications.” 35 U.S.C. § 311(b). As such, the burden is on
`
`Petitioner to establish that RFC 2401, which is not a patent, was “sufficiently
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`2
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`accessible to the public interested in the art.” In re Klopfenstein, 380 F.3d 1345,
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`Case No. IPR2015-00810
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`1348 (Fed. Cir. 2004); see also Actavis, Inc. v. Research Corp. Techs., Inc.,
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`IPR2014-01126, Paper No. 22 at 9-13 (Jan. 9, 2015) (finding that “Petitioner has
`
`not satisfied its burden to prove that [a] thesis is a printed publication under §
`
`102(b)”); L-3 Comm. Holdings, Inc. v. Power Survey, LLC, IPR2014-00832, Paper
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`No. 9 at 12 (Nov. 14, 2014) (“The party seeking to introduce the reference ‘should
`
`produce sufficient proof of its dissemination or that it has otherwise been available
`
`and accessible to persons concerned with the art to which the document relates and
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`thus most likely to avail themselves of its contents.’”); A.R.M., Inc. v. Cottingham
`
`Agencies Ltd., IPR2014-00671, Paper No. 10 at 7 (Oct. 3, 2014).
`
`Petitioner merely alleges that “RFC 2401 (Ex. 1008) was published in
`
`November 1998.” (Pet. at 22 (citing Ex. 1008 at 1).) However, Petitioner does not
`
`provide evidence to establish that RFC 2401 would have been sufficiently
`
`accessible to the public interested in the art on that date. While RFC 2401
`
`nominally recites “November 1998” on its first page, nowhere in the document is
`
`there any indication as to what the date means. (See Ex. 1008 at 1.)
`
`RFC 2026, provided by the same “Network Working Group” as RFC 2401
`
`(compare Ex. 1036 at 1, with Ex. 1008 at 1), purports to “document[] the process
`
`used by the Internet community for the standardization of protocols and
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`procedures” and to “define[] the stages in the standardization process, the
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`3
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`requirements for moving a document between stages and the types of documents
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`Case No. IPR2015-00810
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`used during this process.” (See Ex. 1036 at 1.)1 Petitioner’s expert, Dr. Tamassia,
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`refers to RFC 2026 in his discussion of how RFCs are “typically” released. (Ex.
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`1005 at ¶ 152.) Neither Dr. Tamassia nor the Petition establish or even allege that
`
`Dr. Tamassia has personal knowledge that RFC 2401 was actually released in
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`November 1998 in the way he says RFCs are typically released. However, even if
`
`RFC 2401 was released in this manner (and Patent Owner submits that Petitioner
`
`has not provided any evidence to establish that it was), Petitioner has still not
`
`established that RFC 2401 qualifies as a printed publication within the meaning of
`
`Section 311(b).
`
`RFC 2026 generally states that “RFCs can be obtained from a number of
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`Internet hosts using anonymous FTP, gopher, World Wide Web, and other Internet
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`document-retrieval systems.” (Id. at 6.) RFC 2026 does not explain how the
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`1 The Petition does not cite to RFC 2026 or to any testimony citing to the
`
`document. Therefore, it cannot properly be relied upon to establish RFC 2401 as a
`
`printed publication. However, Patent Owner addresses the document to the extent
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`the Board considers statements by Petitioner’s expert regarding RFC 2026 not
`
`cited in the Petition. As explained, these statements, and RFC 2026 itself, still fail
`
`to establish that RFC 2401 qualifies as a printed publication within the meaning of
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`Section 311(b).
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`4
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`public interested in the art would become aware of the location of such Internet
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`Case No. IPR2015-00810
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`document-retrieval systems. Indeed, Dr. Tamassia suggests that the intended
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`audience of RFC 2401 would have been limited to the “Network Working Group,”
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`stating the nominal date that RFC documents are “published” merely “starts a
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`period for others to provide comments on the document” (in particular, what RFC
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`2026 refers to as “community review”). (See Ex. 1005 at ¶ 152; Ex. 1036 at 20.)
`
`RFC 2026 also acknowledges that “[m]any standards groups other than the IETF
`
`create and publish standards documents.” (See id. at 24.)
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`In the past, the Board has found that references similar to RFC 2401 are not
`
`statutory prior art. For example, in Samsung Elecs. Co. v. Rembrandt Wireless
`
`Techs., LP, IPR2014-00514, Paper No. 18 at 5, 7 (Sep. 9, 2014), the petitioner
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`relied on a “Draft Standard” of the Institute of Electrical and Electronics Engineers
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`(“IEEE”). The Board found that the petitioner had failed to establish the Draft
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`Standard qualified as a printed publication because the petitioner did not provide
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`evidence as to whether the Draft Standard was made available to persons outside of
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`the IEEE “Working Group” responsible for the Draft Standard and how members
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`of the public would have known about the Draft Standard. See id. at 7-8.
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`Similarly, in Elec. Frontier Found. v. Pers. Audio, LLC, IPR2014-00070, Paper
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`No. 21 at 22-24 (Apr. 18, 2014), the Board found that a reference was not a printed
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`publication where a “Petitioner fail[ed] to provide any information regarding [a
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`5
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`reference] posting, the group [to which the reference was posted], who is in the
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`Case No. IPR2015-00810
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`group, or the size of the group.” In both cases, the Board denied institution based
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`on these findings. See Samsung Elecs., IPR2014-00514, Paper No. 18 at 10
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`(“Because Petitioner has not met its burden in establishing that Draft Standard is a
`
`‘printed publication’ and, thus, prior art, Petitioner has not shown a reasonable
`
`likelihood of prevailing on the grounds asserted.”); Elec. Frontier Found.,
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`IPR2014-00070, Paper No. 21 at 26.
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`Petitioner has similarly failed to meet its burden to establish that RFC 2401
`
`is a printed publication. For example, Petitioner has not provided any evidence as
`
`to (1) whether RFC 2401 was made available to persons outside of the “Network
`
`Working Group”; (2) how members of the public outside of the “Network Working
`
`Group” would have known about RFC 2401; (3) who is in “Network Working
`
`Group”; or (4) the size of the Network Working Group. Therefore, because the
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`Petition does not establish that RFC 2401 was a printed publication to qualify as
`
`prior art, and because all of Petitioner’s proposed rejections rely on RFC 2401, the
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`Board should deny institution of the Petition.
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`B.
`
`The Petition’s Obviousness Ground Is Redundant and Should Be
`Denied
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`Concurrent with this Petition, in which Petitioner challenges claims 1-4, 6,
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`8-26, and 28-34 of the ’705 patent as obvious over Beser in view of RFC 2401, and
`
`claims 5, 7, and 27 as obvious over Beser, RFC 2401, and Brand, Petitioner also
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`6
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`filed a petition for inter partes review in IPR2015-00811 (“the ’811 Petition”).
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`Case No. IPR2015-00810
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`The ’811 Petition challenges the same patent and the same claims, asserting four
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`grounds of rejection. The ’811 Petition’s first and third grounds of rejection
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`simply substitute Beser with Aventail, alleging that claims 1-3, 6, 14, 16-25, 28,
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`31, 33, and 34 are obvious over Aventail in view of RFC 2401, and that claims 4,
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`5, 7, 26, 27, and 29 are obvious over Aventail, RFC 2401, and Brand. Its second
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`and third grounds of rejection cover the remainder of the claims and add the
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`reference RFC 2543. The Petition fails to assert or explain why the proposed
`
`grounds in the Petition are not redundant of the grounds in the ’811 Petition.
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`Instead, the Petition contends, without explanation, that each Petition presents
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`“non-redundant grounds.” (Pet. at 2.) Given the Board’s jurisprudence regarding
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`redundancy, Petitioner’s redundant grounds should be rejected.
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`Redundant grounds place a significant burden on the Board and the patent
`
`owner, and cause unnecessary delay that jeopardizes meeting the statutory deadline
`
`for final written decisions. Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
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`CBM2012-00003, Paper No. 7 at 2 (Oct. 25, 2012). The consideration of
`
`redundant grounds frustrates Congress’s intent that the Board “secure the just,
`
`speedy, and inexpensive resolution of every proceeding,” in violation of 37 C.F.R.
`
`§ 42.1(b).
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`7
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`Case No. IPR2015-00810
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`The Board explains that where multiple grounds of rejection are presented,
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`the “[d]ifferences between the claimed invention and the prior art are a critically
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`important underlying factual inquiry . . . .” Liberty Mut. Ins. Co., CBM2012-
`
`00003, Paper No. 7 at 2-3. The redundancy inquiry does not focus on “whether the
`
`applied prior art disclosures have differences, for it is rarely the case that the
`
`disclosures of different prior art references, will be literally identical. EMC Corp.
`
`v. Personal Web Techs., LLC, IPR2013-00087, Paper No. 25 at 3 (June 5, 2013).
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`Rather, the Board considers “whether the petitioner articulated a meaningful
`
`distinction in terms of relatives strengths and weaknesses with respect to
`
`application of the prior art disclosures to one or more claim limitations.” Id. at 3-4.
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`The Petitioner carries the burden of articulating that “meaningful distinction.”
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`ScentAir Techs., IPR2013-00180, Paper No. 18 at 3. Put simply, “[t]o avoid a
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`holding of redundancy, the Petition has to explain why one reference is better in
`
`one respect but worse in another respect.” Toyota Motor Corp. v. Am. Vehicular
`
`Sciences LLC, IPR2013-00421, Paper No. 15 at 29 (Jan. 13, 2014).
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`Petitioner’s burden of articulating a distinction between its redundant
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`grounds is not lessened or removed simply because those grounds may appear in
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`more than one petition. In fact, the policy considerations behind denying
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`redundant grounds are even more compelling when those grounds are presented
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`across multiple petitions. Multiple petitions necessitate multiple written decisions
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`and an analysis of a corresponding number of briefs, as well as the potential for
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`Case No. IPR2015-00810
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`differing panels of judges, multiple scheduling conferences, and multiple oral
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`arguments—all of which tax the Board’s resources and diminish its ability to
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`ensure the speedy resolution of each proceeding. Moreover the Board has
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`previously recognized grounds as being redundant across petitions and dismissed
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`the redundant grounds. See Apple Inc. v. VirnetX Inc., IPR2014-00483, Paper No.
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`11 at 6 (Sept. 15, 2014).
`
`In Liberty Mutual, the Board identified two types of redundant rejections:
`
`(1) “horizontally” redundant rejections and (2) “vertically” redundant rejections.
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`Liberty Mut. Ins. Co., CBM2012-00003, Paper No. 7 at 3. The Board explained
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`that horizontally redundant rejections apply “a plurality of prior art references . . .
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`not in combination to complement each other but as distinct and separate
`
`alternatives.” Id. Vertical redundancy “exists when there is assertion of an
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`additional prior art reference to support another ground of unpatentability when a
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`base ground already has been asserted against the same claim without the
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`additional reference and the Petitioner has not explained what are the relative
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`strength and weakness of each ground.” Id. at 12.
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`Here, the Petition is horizontally redundant in view of the ’811 Petition. In
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`both petitions, Petitioner alleges that claims 1-3, 6, 14, 16-25, 28, 31, 33, and 34
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`are rendered obvious by either Beser or Aventail in view of RFC 2401, and that
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`claims 5, 7, and 27 are rendered obvious by either Beser or Aventail in view of
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`Case No. IPR2015-00810
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`RFC 2401 and Brand. These grounds are horizontally redundant and Petitioner
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`fails to provide any explanation to the contrary.
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`In the instant Petition, Petitioner claims that Beser discloses each of the
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`claimed limitations, including a “communications channel,” but relies on RFC
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`2401 for the claimed “encrypted communications channel.” (Pet. at 30-41.)
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`According to the Petition, one skilled in the art would have encrypted the tunneling
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`associations taught in Beser in light of RFC 2401. (Id. at 26-30.) Similarly, in the
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`’811 Petition, Petitioner claims that Aventail discloses each of the claimed
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`limitations, including a communications channel, but again relies on RFC 2401 for
`
`the claimed “encrypted communications channel.” Attempting to address
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`redundancy, Petitioner claims its grounds are “non-redundant” because each
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`petition “present[s] unique correlations of the challenged ’705 claims to the prior
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`art.” (Pet. at 2.) But, as the Board has explained, a redundancy analysis does not
`
`focus on whether the prior art references are identical. EMC Corp., IPR2013-
`
`00087, Paper No. 25 at 3. And Petitioner does not attempt to “articulate[] a
`
`meaningful distinction in terms of relative strengths and weaknesses with respect
`
`to application of the prior art disclosures to one or more claim limitations.” Id. at
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`3-4 (emphasis added). Consequently, the Board should deny Petitioner’s
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`redundant grounds.
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`Case No. IPR2015-00810
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`C. The Petition Fails to Show a Reasonable Likelihood Petitioner
`Will Prevail With Respect to Obviousness
`
`Petitioner proposes that an obviousness finding under 35 U.S.C. § 103 for
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`claims 1-34 requires at least Beser in view of RFC 2401. Obviousness is a
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`question of law based on underlying factual findings, including: (1) the scope and
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`content of the prior art; (2) the differences between the claims and the prior art; (3)
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`the level of ordinary skill in the art; and (4) objective indicia of nonobviousness.
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`Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). Each of
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`these factors should be considered in an obviousness analysis.
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` In re
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`Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d
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`1063, 1075, 1077, 1080 (Fed. Cir. 2012). In particular, “[i]t is not sufficient to
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`demonstrate that each of the components in a challenged claim is known in the
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`prior art.” Petroleum Geo-Services Inc., v. WesternGeco LLC, IPR2014-01476,
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`Paper No. 18 at 18 (Mar. 17, 2015) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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`398 (2007).) “Petitioner also must explain how a person of ordinary skill in the art
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`would combine the elements disclosed in the [claims], and why such a person
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`would be motivated to do so.” Id. (emphasis added, citing In re Chaganti, 554 F.
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`App’x 917, 922 (Fed. Cir. 2014)).
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`Even when elements may be known in the art, “there [must be] an apparent
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`reason to combine the known elements in the fashion claimed by the patent at
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`issue,” and “this analysis should be made explicit.” KSR, 550 U.S. at 418.
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`“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
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`Case No. IPR2015-00810
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`statements; instead, there must be some articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness.” In re Kahn, 441
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`F.3d 977, 988 (Fed. Cir. 2006).
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`1.
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`Beser and RFC 2401 Would Not Have Been Combined as
`the Petition Suggests
`Petitioner concedes that Beser, by itself, does not disclose the challenged
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`claims. Thus, Petitioner turns to RFC 2401 for the teaching that data sent between
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`two devices in a tunnel should be encrypted. Relying on a discussion of prior art
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`systems in Beser, Petitioner contends that one of skill in the art would have
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`combined Beser with RFC 2401 to achieve encrypted IP traffic. (Pet. at 26-30.)
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`But, Petitioner misconstrues Beser and its contentions contradict the express
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`teaching and purpose of Beser’s method. (See Ex. 2001, Apple Inc. v. VirnetX,
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`Inc., IPR2014-00237, Declaration of Fabian Monrose, Ph.D. (Aug. 28, 2014) at 34-
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`35, ¶¶55-56.)
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`As Beser explains, prior art systems typically addressed Internet security in
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`one of two ways. (Ex. 1007 at 1:54-2:35.) The first involved encrypting
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`information inside IP packets before transmission. (Id. at 1:53-56.) The second
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`involved network address translation whereby an IP packet’s address information
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`was modified to re-map one address space into another. (Id. at 2:18-22.)
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`12
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`According to Beser, however, each of these prior art systems suffered from certain
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`Case No. IPR2015-00810
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`disadvantages.
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`For example, encryption still allowed a determined hacker to accumulate all
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`packets from a particular source address, ultimately providing the hacker with
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`sufficient information to decrypt the message. (Id. at 1:41-48, 1:56-58.)
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`Encryption could also be infeasible for certain data formats where the speed and
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`accuracy of message transmission are important. (Id. at 1:58-67.) Beser explains
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`that streaming data flows, such as multimedia and Voice-over-Internet-Protocol
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`(“VoIP”) “require a great deal of computing power to encrypt or decrypt the IP
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`packets on the fly.” (Id. at 1:62-63.) The strain of such computations “may result
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`in jitter, delay, or the loss of some packets.” (Id. at 1:64-65.)
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`Beser further discloses that network address translation was similarly
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`“computationally expensive.” (Id. at 2:22-23.) And like encryption, this type of
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`security “may be inappropriate for the transmission of multimedia or VoIP
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`packets.” (Id. at 2:34-35.) “What is more, network address translation interferes
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`with the end-to-end routing principal of the Internet that recommends that packets
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`flow end-to-end between network devices without changing the contents of any
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`packet along a transmission route.” (Id. at 2:27-31.)
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`To address the problems of the prior art security methods—in particular,
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`their inability to protect the identity of source and destination users and their
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`disproportionately high use of computing power—Beser proposes a method of
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`Case No. IPR2015-00810
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`hiding the addresses of originating and terminating devices. (See Ex. 2001,
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`IPR2014-00237, Declaration of Fabian Monrose, Ph.D. (Aug. 28, 2014) at 34-35, ¶
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`56.) Its method establishes a tunneling association to hide addresses within the
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`payload of tunneled messages. (See Ex. 1007 at 2:36-40, 9:49-51.) By hiding the
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`identities of the network devices in this manner, Beser touts that its method is able
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`to increase communication security without increasing computational burden. (Id.
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`at 2:43-3:14.) Thus, one of ordinary skill in the art would understand that Beser is
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`directed to providing a method for securing communications other than encryption.
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`(See Ex. 2001, IPR2014-00237, Declaration of Fabian Monrose, Ph.D. (Aug. 28,
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`2014) at 34-35, ¶ 56.)
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`Indeed, each of Beser’s disclosed embodiments is directed at providing
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`increased communication security by hiding the addresses of the originating and
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`terminating devices. (See generally Ex. 1007.) And while Petitioner claims that
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`Beser “teaches that IP tunnels are and should ordinarily be encrypted,” its citations
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`to Beser fail to support this point. (Pet. at 27.) In particular, Petitioner cites
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`repeatedly to the statement that “the sender may encrypt the information inside the
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`IP packets before transmission,” which, tellingly, is found in Beser’s “Background
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`of the Invention” section and is part of a description of the prior art systems over
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`which Beser’s method is distinguished. (Id. at 22, 25, 27, 28, 36.) Petitioner
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`further claims that because Beser refers to the IPSec protocol, one of skill would
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`Case No. IPR2015-00810
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`have combined Beser’s tunnel with RFC 2401. (Id. at 28.) But again, the IPSec
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`protocol is mentioned in the “Background of the Invention” and in connection with
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`the problems in the prior art that Beser is attempting to overcome. (Ex. 1007 at
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`1:54-67.)
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`Petitioner next points to Beser’s teaching that “[t]he first IP 58 packet 232
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`may require encryption or authentication to ensure that the public IP 58 address of
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`the second network device 16 cannot be read on the public network 12” (id. at
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`18:2-5) to contend that “IP tunnels are and should ordinarily be encrypted.” (Pet.
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`at 31; see also id. at 25, 27, 28, 29, 44.) Petitioner’s statement incorrectly
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`characterizes Beser. As ev