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`
`
`Case No. IPR2015-00812
`
`
`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
`
`
`
`
`
`
`Paper No.
`Filed: June 15, 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
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
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`
`
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
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`
`
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2015-00812
`Patent 8,850,009
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 8,850,009
`
`
`
`

`

`
`
`I.
`
`II.
`
`
`
`Case No. IPR2015-00812
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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 .........................................10
`
`1.
`
`2.
`
`Beser and RFC 2401 Would Not Have Been Combined
`as the Petition Suggests .............................................................12
`
`The Petition’s Mapping of Beser and RFC 2401 Does
`Not Show the Features as Arranged in the Claims ...................17
`
`III. The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected .........................................................................................................20
`
`A. Overview of the ’009 Patent ................................................................21
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Level of Ordinary Skill in the Art .......................................................23
`
`“Domain Name Service (DNS) Request” (Claims 1, 12-14, 24
`and 25) .................................................................................................24
`
`“Interception of the DNS Request” (Claims 1 and 14) .......................25
`
`“Encrypted Communication Link” Phrases (Claims 1, 2, 8, 11,
`14, 15, and 23) .....................................................................................28
`
`“Provisioning Information” (Claims 1 and 14) ...................................31
`
`“Secure Communications Service” (Claims 1-3, 10, 12, 14-16,
`22, and 24) ...........................................................................................34
`
`H.
`
`“Indication” (Claims 1, 10, 14, and 22) ..............................................35
`
`i
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`

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`Case No. IPR2015-00812
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`I.
`
`“Virtual Private Network Communication Link” (Claim 8) ...............36
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`A “VPN Communication Link” Does Not Exist Outside
`of a Virtual Private Network .....................................................36
`
`“Authentication” and “Address Hopping” Alone Do Not
`Result in a “Virtual Private Network Communication
`Link” .........................................................................................38
`
`A “Virtual Private Network Communication Link” Must
`Be Direct ...................................................................................41
`
`A “Virtual Private Network Communication Link”
`Requires a Network ...................................................................43
`
`A “Virtual Private Network Communication Link”
`Requires Encryption ..................................................................44
`
`J.
`
`K.
`
`“Domain Name” (Claims 7 and 20) ....................................................46
`
`“Modulation” (Claims 4, 5, 17, and 18) ..............................................47
`
`IV. Conclusion .....................................................................................................47
`
`
`
`
`
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`ii
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`Case No. IPR2015-00812
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`A.R.M., Inc. v. Cottingham Agencies Ltd.,
`IPR2014-00671, Paper No. 10 (Oct. 3, 2014) ...................................................... 3
`
`Actavis, Inc. v. Research Corp. Techs., Inc.,
`IPR2014-01126, Paper No. 22 (Jan. 9, 2015) ....................................................... 3
`
`Apple Inc. v. Evolutionary Intelligence, LLC,
`IPR2014-00079, Paper No. 8 (Apr. 25, 2014) .................................................... 20
`
`Apple Inc. v. VirnetX Inc.,
`IPR2014-00237, Paper No. 15 (May 14, 2014) .................................................. 25
`
`Apple Inc. v. VirnetX Inc.,
`IPR2014-00483, Paper No. 11 (Sept. 15, 2014) ................................................... 9
`
`Becton, Dickenson & Co. v. Tyco Healthcare Group, LP,
`616 F.3d 1249 (Fed. Cir. 2010) .......................................................................... 19
`
`Elec. Frontier Found. v. Pers. Audio, LLC,
`IPR2014-00070, Paper No. 21 (Apr. 18, 2014) ................................................ 5, 6
`
`EMC Corp. v. Personal Web Techs., LLC,
`IPR2013-00087, Paper No. 25 (June 5, 2013) ................................................ 8, 10
`
`Ex Parte Weideman,
`Appeal No. 2008-3454, Decision on Appeal (BPAI Jan. 27, 2009) .................. 19
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper No. 15 (Jan. 9, 2013) ............................................... 21, 42
`
`Google Inc. et al. v. EveryMD.com LLC,
`IPR2014-00347, Paper No. 9 (May 22, 2014) .................................................... 20
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ................................................................................................ 11
`
`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027, Paper No. 26 (June 11, 2013) .................................................... 2
`iii
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`
`
`

`

`
`In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
`Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012) .................................................... 11
`
`Case No. IPR2015-00812
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`In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004) .......................................................... 16
`
`In re Gurley, 27 F.3d 551 (Fed. Cir. 1994) .............................................................. 16
`
`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) .............................................................. 11
`
`In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004) ........................................ 3
`
`In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) .......................................... 17, 18, 19
`
`In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) ............................................................... 20
`
`L-3 Comm. Holdings, Inc. v. Power Survey, LLC,
`IPR2014-00832, Paper No. 9 (Nov. 14, 2014) ..................................................... 3
`
`Lantech Inc. v. Keip Machine Co., 32 F.3d 542 (Fed. Cir. 1994) ........................... 19
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper No. 7 (Oct. 25, 2012) ............................................ 7, 8, 9
`
`Medichem, SA v. Rolabo, SL, 437 F.3d 1157 (Fed. Cir. 2006) ................................ 16
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093, Paper No. 28 (Apr. 29, 2013) ............................................ 21, 42
`
`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) ................... 21, 34
`
`Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP,
`IPR2014-00514, Paper No. 18 (Sep. 9, 2014) .................................................. 5, 6
`
`ScentAir Techs., Inc. v. Prolitic, Inc.,
`IPR2013-00180, Paper No. 18 (Aug. 26, 2013) ............................................... 2, 8
`
`Tempur Sealy Int’l, Inc. v. Select Comfort Corp.,
`IPR2014-01419, Paper No. 9 (Mar. 27, 2015) ................................................... 20
`
`Toyota Motor Corp. v. Am. Vehicular Sciences LLC,
`IPR2013-00421, Paper No. 15 (Jan. 13, 2014) ..................................................... 8
`
`
`
`iv
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`VirnetX Inc. v. Cisco, 767 F.3d 1308 (Fed. Cir. 2014) ...................................... 30, 42
`
`Case No. IPR2015-00812
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`Xilinx, Inc. v. Intellectual Ventures I LLC,
`IPR2013-00112, Paper No. 14 (June 27, 2013) .................................................. 42
`
`ZTE Corp. & ZTE (USA) Inc. v. ContentGuard Holdings Inc.,
`IPR2013-00134, Paper No. 12 (June 19, 2013) .................................................. 42
`
`Federal Statutes
`
`35 U.S.C. § 103 ........................................................................................................ 10
`
`35 U.S.C. § 311(b) ................................................................................................. 1, 2
`
`35 U.S.C. § 312(a)(3) ............................................................................................. 1, 2
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314(a) ..................................................................................................... 2
`
`Federal Rules
`
`37 C.F.R. § 42.1(b) .................................................................................................... 7
`
`37 C.F.R. § 42.100(b) .............................................................................................. 20
`
`37 C.F.R. § 42.104(b) .......................................................................................... 1, 20
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`
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`
`
`v
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`

`

`
`
`I.
`
`Introduction
`
`
`
`Case No. IPR2015-00812
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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
`
`Owner’s U.S. Patent No. 8,850,009 (“the ’009 patent”). Patent Owner requests
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`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
`
`’009 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
`
`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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`basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b).
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`Case No. IPR2015-00812
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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
`
`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,
`
`2013) (“[A]t [the] time of institution the Board analyzes the petition on a claim-by-
`
`claim, ground-by-ground basis, to eliminate redundant grounds.”) To be instituted,
`
`a petition must also “show[] that there is a reasonable likelihood that the petitioner
`
`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
`
`and with particularity, each claim challenged, the grounds on which the challenge
`
`to each claim is based, and the evidence that supports the grounds for the challenge
`
`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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`accessible to the public interested in the art.” In re Klopfenstein, 380 F.3d 1345,
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`Case No. IPR2015-00812
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`1348 (Fed. Cir. 2004); see also Actavis, Inc. v. Research Corp. Techs., Inc.,
`
`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
`
`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
`
`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 26 (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
`
`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. IPR2015-00812
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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
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`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
`
`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. IPR2015-00812
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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.)
`
`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
`
`(“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
`
`evidence as to whether the Draft Standard was made available to persons outside of
`
`the IEEE “Working Group” responsible for the Draft Standard and how members
`
`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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`reference] posting, the group [to which the reference was posted], who is in the
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`Case No. IPR2015-00812
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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.
`
`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
`
`Concurrent with this Petition, in which Petitioner challenges claims 1-8, 10-
`
`20, and 22-25 of the ’009 patent as obvious over Beser in view of RFC 2401,
`
`Petitioner also filed a petition for inter partes review in IPR2015-00813 (“the ’813
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`6
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`Petition”). The ’813 Petition challenges the same patent and the same claims,
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`Case No. IPR2015-00812
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`asserting two grounds of rejection. The ’813 Petition’s first ground of rejection
`
`simply substitutes Beser with Aventail, alleging that claims 1-8, 10-20, and 22-25
`
`are obvious over Aventail in view of RFC 2401. Its second ground of rejection
`
`alleges that claims 2-5 and 15-18 are obvious over Aventail in view of RFC 2401
`
`and further in view of RFC 2543. The Petition fails to assert or explain why the
`
`proposed grounds in the Petition are not redundant of the grounds in the ’813
`
`Petition. Instead, the Petition contends, without explanation, that each Petition
`
`presents “non-redundant grounds.” (Pet. at 2.) Given the Board’s jurisprudence
`
`regarding redundancy, Petitioner’s redundant grounds should be rejected.
`
`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.,
`
`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).
`
`The Board explains that where multiple grounds of rejection are presented,
`
`the “[d]ifferences between the claimed invention and the prior art are a critically
`
`important underlying factual inquiry . . . .” Liberty Mut. Ins. Co., CBM2012-
`
`
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`7
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`00003, Paper No. 7 at 2-3. The redundancy inquiry does not focus on “whether the
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`Case No. IPR2015-00812
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`applied prior art disclosures have differences, for it is rarely the case that the
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`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.
`
`The Petitioner carries the burden of articulating that “meaningful distinction.”
`
`ScentAir Techs., IPR2013-00180, Paper No. 18 at 3. Put simply, “[t]o avoid a
`
`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).
`
`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
`
`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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`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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`8
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`ensure the speedy resolution of each proceeding. Moreover the Board has
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`Case No. IPR2015-00812
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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
`
`that horizontally redundant rejections apply “a plurality of prior art references . . .
`
`not in combination to complement each other but as distinct and separate
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`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
`
`strength and weakness of each ground.” Id. at 12.
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`Here, the Petition is horizontally redundant in view of the ’813 Petition. In
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`both petitions, Petitioner alleges that claims 1-8, 10-20, and 22-25 are rendered
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`obvious by either Beser or Aventail in view of RFC 2401. These grounds are
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`horizontally redundant and Petitioner fails to provide any explanation to the
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`contrary.
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`Case No. IPR2015-00812
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`In the instant Petition, Petitioner claims that Beser discloses each of the
`
`claimed limitations, including a “communication link,” but relies on RFC 2401 for
`
`the claimed “encrypted communication link.” (Pet. at 34-50.) According to the
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`Petition, one skilled in the art would have encrypted the tunneling associations
`
`taught in Beser in light of RFC 2401. (Id. at 30-34.) Similarly, in the ’813
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`Petition, Petitioner claims that Aventail discloses each of the claimed limitations,
`
`including a communication link, but again relies on RFC 2401 for the claimed
`
`“encrypted communication link.” Attempting to address redundancy, Petitioner
`
`claims its grounds are “non-redundant” because each petition “present[s] unique
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`correlations of the challenged ’009 claims to the prior art.” (Pet. at 2.) But, as the
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`Board has explained, a redundancy analysis does not focus on whether the prior art
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`references are identical. EMC Corp., IPR2013-00087, Paper No. 25 at 3. And
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`Petitioner does not attempt to “articulate[] a meaningful distinction in terms of
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`relative strengths and weaknesses with respect to application of the prior art
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`disclosures to one or more claim limitations.” Id. at 3-4 (emphasis added).
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`Consequently, the Board should deny Petitioner’s redundant grounds.
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`C. The Petition Fails to Show a Reasonable Likelihood Petitioner
`Will Prevail With Respect to Obviousness
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`Petitioner proposes that claims 1-8, 10-20, and 22-25 would be rendered
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`obvious under 35 U.S.C. § 103 based on Beser in view of RFC 2401. Obviousness
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`is a question of law based on underlying factual findings, including: (1) the scope
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`and content of the prior art; (2) the differences between the claims and the prior art;
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`Case No. IPR2015-00812
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`(3) the level of ordinary skill in the art; and (4) objective indicia of
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`nonobviousness. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18
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`(1966). Each of these factors should be considered in an obviousness analysis. In
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`re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676
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`F.3d 1063, 1075, 1077, 1080 (Fed. Cir. 2012). In particular, “[i]t is not sufficient
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`to 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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`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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`Case No. IPR2015-00812
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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 30-34.)
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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. 2009, 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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`According to Beser, however, each of these prior art systems suffered from certain
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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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`Case No. IPR2015-00812
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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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`hiding the addresses of originating and terminating devices. (See Ex. 2009,
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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. 2009, 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 31.) 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 26, 28, 30, 31, 47.) Petitioner
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`further claims that because Beser refers to the IPSec protocol, one of skill would
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`have combined Beser’s tunnel with RFC 2401. (Id. at 30-31.) But again, the
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`IPSec protocol is mentioned in the “Background of the Invention” and in
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`connection with the problems in the prior art that Beser is attempting to overcome.
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`(Ex. 1007 at 1:54-67.)
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`Case No. IPR2015-00812
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`Pet