Paper No. 26
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`VIRNETX INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2015-00871
`U.S. Patent No. 8,560,705
`
`––––––––––––––––––
`
`PETITIONER’S REPLY BRIEF
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`

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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`Table of Contents
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Claim Construction .......................................................................................... 1
`
`A.
`
`The Reexamination Prosecution Histories and Specification Do Not
`Contain the Alleged Disclaimers of Claim Scope ................................ 1
`
`B.
`
`The Board Should Maintain Its Claim Constructions ........................... 2
`
`1.
`
`2.
`
`3.
`
`4.
`
`“Interception” .............................................................................. 2
`
`“Secure Communication Link” & “Virtual Private Network
`Link” ........................................................................................... 3
`
`“Secure Domain Name” .............................................................. 3
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`Other Terms ................................................................................ 4
`
`III. Obviousness Over Aventail in view of RFC 2401 and RFC 2543 .................. 4
`
`A. Aventail in view of RFC 2401 and RFC 2543 Teaches Claim 1 and
`16’s “Determination” Step .................................................................... 4
`
`1.
`
`2.
`
`Aventail’s Connect Client (as Modified by RFC 2401 and RFC
`2543) Performs the Claimed “Determination” ........................... 5
`
`Aventail’s Extranet Server (as Modified by RFC 2401 and RFC
`2543) Also Performs the Claimed “Determination” ................... 8
`
`B.
`
`C.
`
`Aventail in view of RFC 2401 and RFC 2543 Teaches Claims 1 and
`16’s “Secure Communication Link” ..................................................... 9
`
`Aventail in view of RFC 2401 and RFC 2543 Renders Claims 4 and
`20 Obvious .......................................................................................... 11
`
`D. Aventail in view of RFC 2401 and RFC 2543 Renders Claims 7 and
`22 Obvious .......................................................................................... 11
`
`E.
`
`Not-Separately Argued Claims and Grounds ...................................... 13
`
`i
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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`IV. Dr. Tamassia’s Testimony Is Probative ......................................................... 13
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`V. Aventail and the RFC References Are Conclusively Prior Art ..................... 16
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`VI. Conclusion ..................................................................................................... 21
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`
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`ii
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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Arthrocare Corp. v. Smith & Nephew, Inc.,
`406 F.3d 1365 (Fed. Cir. 2005) ............................................................................ 7
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 15
`
`Brand v. Miller,
`487 F.3d 862 (Fed. Cir. 2007) .................................................................. 1, 13, 15
`
`Guangdong Xinbao Elec. Appliances Holdings v. Adrian Rivera,
`IPR2014-00042, Paper 50 (Feb. 6, 2015) ........................................................... 15
`
`Kyocera Wireless Corp. v. Int'l Trade Comm’n,
`545 F.3d 1340 (Fed. Cir. 2008) .......................................................................... 16
`
`LG Display Co., Ltd, v. Innovative Display Technologies LLC,
`IPR2014-01362, Paper 32 (Feb. 8, 2016) ........................................................... 16
`
`Ohio Willow Wood Co. v. Alps S., LLC,
`735 F.3d 1333 (Fed. Cir. 2013) .......................................................................... 17
`
`Poole v. Textron, Inc.,
`192 F.R.D. 494 (D. Md. 2000) ........................................................................... 20
`
`Schumer v. Lab. Computer Sys., Inc.,
`308 F.3d 1304 (Fed. Cir 2002) ........................................................................... 14
`
`Sundance, Inc. v. Demonte Fabricating Ltd,
`550 F.3d 1356 (Fed. Cir. 2008) .......................................................................... 13
`
`Tempo Lighting Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) .......................................................................... 1, 2
`
`Titanium Metals Corp. of America v. Banner,
`778 F.2d 775 (Fed. Cir. 1985) ............................................................................ 15
`
`U.S. v. Taylor,
`166 F.R.D. 356 (M.D.N.C.) aff'd, 166 F.R.D. 367 (M.D.N.C. 1996) ................ 20
`iii
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`

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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`Ultratec, Inc. v. Sorenson Commc'ns, Inc.,
`No. 13-CV-346, 2014 WL 4829173 (W.D. Wis. Sept. 29, 2014) ...................... 21
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) ...................................................................... 2, 3, 4
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`Statutes
`
`35 U.S.C. § 6 ............................................................................................................ 15
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`35 U.S.C. § 102(a) ................................................................................................... 16
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`Other Authorities
`
`37 C.F.R. § 42.65(a) ................................................................................................. 16
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`Fed. R. Evid. 702 ............................................................................................... 13, 14
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`
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`iv
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`IPR2015-00871
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`I.
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`Introduction
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`
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`Petitioner’s Reply Brief (Paper 26)
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`The Board correctly found claims 1-23 and 25-30 would have been obvious
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`over Aventail in view of RFC 2401 and RFC 2543. Paper 8 (“Dec.”) at 10-21, It
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`also correctly found Aventail, RFC 2401, RFC 2543 and Brand to render claim 24
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`obvious. These initial findings are supported by more than substantial evidence and
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`should be maintained.
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`II. Claim Construction
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`Patent Owner initially challenges the Board’s use of the broadest reasonable
`
`interpretation standard (“BRI”) because its ability to amend the claims is “severely
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`restricted,” Patent Owner Response, Paper 25 (“Resp.”) at 3, though it never
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`sought to amend its claims. Patent Owner’s challenge to BRI is instead a
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`transparent attempt to import unclaimed limitations into its claims.
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`A. The Reexamination Prosecution Histories and Specification Do
`Not Contain the Alleged Disclaimers of Claim Scope
`
`For several claim terms, Patent Owner contends prosecution disclaimers
`
`limit those terms’ scope, Resp. at 8-15, 18-19, 22-25, but fails to establish the
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`requirements for an effective disclaimer. The putative disclaimers are based on
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`statements made during reexamination proceedings—some still pending—and
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`none was accompanied by a claim amendment. Under Tempo Lighting Inc. v.
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`Tivoli, LLC, 742 F.3d 973 (Fed. Cir. 2014), this means these statements have no
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`disclaiming effect before the PTO. Id. at 978 (“no obligation to accept a claim
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`1
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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`construction proffered as a prosecution history disclaimer.”). The Tempo Court
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`affirmed the Board’s finding of a disclaimer, but only because it was in
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`conjunction with claim amendments made during the original examination of the
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`patent. Id. at 977. Tempo thus confirms the irrelevance of such statements,
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`particularly one made during reexamination, without being accompanied by a
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`claim amendment. Id. Relying on Tempo, the Board previously found (in a Final
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`Written Decision) that Patent Owner did not disclaim claim scope. IPR2014-
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`00481, Paper 35 at 10 (Aug. 24, 2015) (“Patent Owner cannot now rely on any
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`alleged claim disavowals after it characterized them [in district court] as unclear.”).
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`B.
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`The Board Should Maintain Its Claim Constructions
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`1.
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`“Interception”
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`In a Final Written Decision involving a related patent, the Board interpreted
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`the phrase “intercepting” to mean “receiving a request pertaining to a first entity
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`at another entity.” IPR2015-00237, Paper 41 at 10-12. Although Patent Owner
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`challenges the Board’s construction, Resp. at 4-5, Patent Owner neither disputes
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`that Aventail and RFC 2401 teach that term nor that Aventail and RFC 2401
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`satisfy the claimed step that encompasses the term, so its construction is not
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`relevant to this proceeding. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
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`795, 803 (Fed. Cir. 1999) (claim terms need only be construed to the extent
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`necessary to resolve the case).
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`2
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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`2.
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`“Secure Communication Link” & “Virtual Private Network
`Link”
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`Patent Owner asserts that “secure communication link” and “virtual private
`
`network link” should be construed to require “direct” communication. Resp. at 8-
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`10. The improper additional limitation Patent Owner seeks—that such
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`communication links be “direct”—has previously been rejected by the Board as
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`unsupported by the prosecution history and Patent Owner’s own statements, see
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`IPR2014-00481, Paper 35 at 10, or because it was not necessary to resolve the
`
`case, see IPR2014-00482, Paper 34 at 4.
`
`Nothing in the ’0705 patent requires “direct” communication. Instead, the
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`’0705 specification describes secure communication links that traverse firewalls,
`
`edge routers, and proxies between end devices in a connection. Ex. 1050 at 33:48-
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`34:12, 49:19-23, 53:18-59, 55:34-46. Nevertheless, as explained below, the
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`Aventail reference itself describes its network connection as “direct.” Consistent
`
`with its previous finding, the Board should not read a nebulous “direct” limitation
`
`into the claims in these proceedings, so no further construction of “secure
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`communication link” or “virtual private network link” is necessary. Vivid Techs.,
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`Inc., 200 F.3d at 803.
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`3.
`
`“Secure Domain Name”
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`In a Final Written Decision involving a related patent, the Board construed
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`“secure domain name” to mean “a name that corresponds to a secure computer
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`3
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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`network address.” IPR2015-00481, Paper 35 at 13-14 (Aug. 24, 2015). It rejected
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`the same construction Patent Owner proposes here, explaining Patent Owner did
`
`not “demonstrate[] that the Specification requires a secure domain name to be
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`‘non-standard’ and fails to explain what the term ‘non-standard’ means,” and noted
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`that Patent Owner conceded in district court that “the ‘non-standard’ distinction ‘is
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`not supported by the specification or the prosecution history.” Id. at 13. Patent
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`Owner provides no basis for the Board to depart from its previous, correct finding.
`
`4.
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`Other Terms
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`Patent Owner disagrees with Petitioner’s proposed constructions of “domain
`
`name,” “secure communications service,” “[modulated / unmodulated]
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`transmission link,” and “phone,” Resp. at 25-27; Pet. 10-17, but their constructions
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`are not relevant to the outcome of this proceeding, Vivid Techs., Inc., 200 F.3d at
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`803.
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`III. Obviousness Over Aventail in view of RFC 2401 and RFC 2543
`
`A. Aventail in view of RFC 2401 and RFC 2543 Teaches Claim 1 and
`16’s “Determination” Step
`
`The Board correctly determined that Aventail as combined with RFC 2401
`
`and RFC 2543 likely discloses “a determination … that the target device is a
`
`device with which a secure communication link can be established.” Dec. at 13-17,
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`21; see also Pet. at 38-41; Ex. 1005 at ¶ 275. Petitioner pointed to two examples of
`
`the modified Aventail system performing the claimed “determination”: (1)
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`4
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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`Aventail Connect’s check of the redirection rules, and (2) Aventail Extranet
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`Server’s check of whether the client device is allowed access to a remote host. Pet.
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`at 38-41. Patent Owner’s challenges to these examples lack merit.
`
`1.
`
`Aventail’s Connect Client (as Modified by RFC 2401 and RFC
`2543) Performs the Claimed “Determination”
`
`Patent Owner makes five related attacks against Aventail’s client-side
`
`fulfillment of the claimed “determination.” Resp. at 31-34. All must be rejected.
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`First and fourth, Patent Owner argues Aventail alone does not disclose a
`
`remote host that “with which a secure communication link can be established”
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`because Aventail “only determines whether to encrypt traffic to the SOCKS server
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`but not to the remote host.” Resp. at 31, 33. Initially, these arguments are
`
`premised on an unclaimed requirement of end-to-end encryption. The Board
`
`correctly accepted the evidence advanced by Dr. Tamassia that “Aventail Connect
`
`will evaluate the redirection rule to determine if the target host is one for which
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`proxy redirection (and an encrypted communication) through the Aventail Extranet
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`Server is required.” Dec. at 17 (quoting Ex. 1005 ¶ 275) (emphasis added); see
`
`also Ex. 1009 at 8-11. Thus, the evidence described in the Petition, Pet. at 39-40,
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`and by Dr. Tamassia, Ex. 1005 ¶¶ 265-75, establishes that Aventail, even if
`
`considered alone, satisfies this step under the broadest reasonable interpretation.
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`Further, the Board instituted on obviousness grounds based on Aventail with
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`RFC 2401, in which the Aventail system is modified to include “end-to-end
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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`encryption,” i.e., “encryption beyond [the SOCKS] server for targets to ensure
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`security, and a corresponding determination that those hosts match a desired level
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`of encryption.” Dec. at 16-17 (emphasis added); Pet. at 43-47. A determination by
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`the modified Aventail system that the domain name requires a proxied connection
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`is a determination that the domain name corresponds to a device that accepts an
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`encrypted connection, even under Patent Owner’s view of the scope of its claims.
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`Second and third, Patent Owner asserts that “determining whether a
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`domain name . . . matches a redirection rule for a destination is not the same as
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`determining whether the remote host will accept an encrypted connection” because
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`“requiring a proxied connection is not the same as requiring an encrypted
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`connection.” Resp. at 31-33. Patent Owner appears to rely on the capacity of the
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`Aventail system to be configured to work differently than the challenged claims
`
`specify to incorrectly argue Aventail must only be configured in such a way. But
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`Patent Owner ignores the configuration described in Aventail and relied on by
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`Petitioner and the Board—a configuration where a match of a redirection rule
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`necessarily results in an encrypted connection. Pet. at 39-40; see Dec. 16-17. In
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`that configuration, connections to internal private networks “require all users to
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`use Aventail Connect to authenticate and encrypt their sessions before any
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`connection to the internal private network(s). For this example, the Aventail
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`ExtraNet Server encrypts all sessions with SSL.” Ex. 1009 at 73 (emphasis added);
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`6
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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`Ex. 1005 at ¶¶ 267-75. This “determin[ation]” in Aventail thus occurs in virtually
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`the same way described in the ’0705 patent. Pet. at 39-40 (citing Ex. 1050 at 40:6-
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`13, 40:57-63). Patent Owner’s reliance on alternative ways to configure the
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`Aventail system are irrelevant—obviousness does not require every embodiment of
`
`a prior art reference to satisfy the claims. See Arthrocare Corp. v. Smith &
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`Nephew, Inc., 406 F.3d 1365, 1372 (Fed. Cir. 2005) (error “to limit the disclosure
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`of the prior art reference to a preferred embodiment”).
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`Fifth and finally, Patent Owner criticizes the Institution Decision’s reliance
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`on Aventail’s disclosure of “pass[ing] the connection request … to the TCP/IP
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`stack” “[w]hen redirection and encryption are not necessary” because, according to
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`Patent Owner, the “connection request” refers only to step 2 of Aventail. Resp. at
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`33-34; see Dec. at 15 (citing Ex. 1009 at 10). But Aventail uses the term
`
`“connection request” to refer to the broader process of requesting and establishing
`
`a connection that encompasses requests for a plurality of services (e.g., DNS
`
`queries, TCP/IP handshakes), and includes the initial request by the application on
`
`the client computer which occurs in step 1, before checking redirection rules. See,
`
`e.g., Ex. 1009 at 10 (“When Aventail Connect LSP receives a connection request,
`
`it determines whether or not the connection request needs to be redirected ….”)
`
`(emphasis added). Patent Owner also continues to ignore Aventail’s configuration
`
`where redirection requires encryption. Ex. 1009 at 73; Ex. 1005 at ¶¶ 267-75.
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`7
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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`2.
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`Aventail’s Extranet Server (as Modified by RFC 2401 and RFC
`2543) Also Performs the Claimed “Determination”
`
`Patent Owner argues that Aventail’s Extranet Server’s determination of
`
`whether a client device is allowed access to a remote host cannot fulfill the claimed
`
`“determination” because “it shifts the focus” to “whether the client device is
`
`authorized.” Resp. at 34-35. But this distinction would exclude the ’0705 patent’s
`
`own preferred embodiment from the scope of its claims: “if access to a secure host
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`was requested, then in step 2704 a further check is made to determine whether the
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`user is authorized to connect to the secure host.” Ex. 1050 at 40:57-59 (emphasis
`
`added). Indeed, in related proceedings the Board relied on arguments advanced by
`
`Patent Owner to reject a narrow interpretation of a similar “determining” step,
`
`concluding that “determining … whether a second network device is available”
`
`merely mean “determining if the second network device is accessible for use, at
`
`hand, or usable.” IPR2014-00237, Paper 41 at 12-15. Patent Owner provides no
`
`justification for its narrow reading of the claims.
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`Patent Owner and Dr. Monrose also ignore the Petition’s reliance on the
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`description in Aventail Extranet Center Administrator’s Guide (incorporated by
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`reference in Aventail, Pet. at 19; Ex. 1005 at ¶ 183), which explains that the
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`Extranet Server “determine[s] which people and groups can access what machines
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`and services.” Pet. at 41 (quoting Ex. 1011 at 19) (emphasis added); Ex. 1070 at
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`139:18-140:141 (Dr. Monrose admitting he could not “recall exactly” whether he
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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`considered Exhibit 1011’s disclosure for the claimed “determination”). The Guide
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`further explains that the Extranet Server can specify access rules for individual
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`destination computers, Ex. 1011 at 19 (e.g., “Computer 1”), such as an access rule
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`that would deny all traffic to a given destination computer, id. at 21, 24-26; Ex.
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`1005 at ¶ 215. Checking such an access rule to determine “what machines” are
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`available fits within even Patent Owner’s constrained reading of the claims.
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`B. Aventail in view of RFC 2401 and RFC 2543 Teaches Claims 1
`and 16’s “Secure Communication Link”
`
`The Board correctly determined that Aventail in view of RFC 2401 likely
`
`discloses a “secure communication link.” Dec. at 13-17; see also Pet. at 45-47; Ex.
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`1005 at ¶¶ 419-420; Ex. 2019 at 199:6-18. In response, Patent Owner asserts that
`
`the claimed “secure communication link” requires a “direct communications
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`channel,” which it contends Aventail does not show. Resp. at 36-38. Patent Owner
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`is incorrect.
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`First, as explained in § II.B.2, supra, the Board should not read a “direct”
`
`limitation into this claim term. If Patent Owner believed its claims should be
`
`limited to a particular type of “secure communication link,” it should have
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`presented a claim amendment. It did not, so its arguments can be disregarded.
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`Second, neither Patent Owner nor its expert have attempted to explain what
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`is required by “direct[ness].” Resp. at 8-13, 36-38. To the extent the term itself is
`
`informative, Aventail describes the “network connections” that are proxied
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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`between client computers and those on the private network as “direct network
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`connections.” Ex. 1009 at 72 (“[N]o direct network connections between the
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`public LAN and the private LAN can be created without being securely proxied
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`through the Aventail ExtraNet Server.”). Patent Owner asks the Board to ignore
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`this sentence because of the “context” of Aventail, but does not identify this
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`context nor justify why it would overcome Aventail’s explicit disclosure. Resp. at
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`38; Ex. 2018 at ¶ 58.1
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`Patent Owner also ignores that Aventail discloses configurations in which
`
`client computers proxy their communications into a private network but
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`communicate directly with target computers as though they were on the same
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`private network. See Pet. at 26, 45-46; Ex. 1009 at 29, 60, 63 (figure), 90-101; Ex.
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`1005 ¶¶ 304-310, 420. For example, Aventail shows remote client computers
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`accessing private network resources via the “Extranet Neighborhood” feature. Pet.
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`at 26. Using that functionality, a user can browse individual hosts (computers) on a
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`private network, access or modify files on those hosts, and have other forms of
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`
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`1 Dr. Monrose’s testimony on this point is not credible. Compare Ex. 1070 at
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`126:24-127:24 (Dr. Monrose: “a direct connection … is not possible because the
`
`connection has to be proxied”) with Ex 1009 at 72 (Aventail: “No direct network
`
`connection … can be created without being securely proxied…”).
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`10
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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`“direct communications” with those hosts. Ex. 1009 at 29. Patent Owner’s only
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`response is to challenge the mechanics of the underlying encrypted connection,
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`Resp. at 36-38, but those mechanics are not relevant to the actual claim language
`
`or Patent Owner’s additional requirement of “direct” communications.
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`C. Aventail in view of RFC 2401 and RFC 2543 Renders Claims 4
`and 20 Obvious
`
`Dependent claims 4 and 20 recite that the “determination” is made by a
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`“server.” As explained above in § III.A.2, supra, Aventail’s Extranet Server (as
`
`modified by RFC 2401 and RFC 2543) makes the claimed “determination” when it
`
`determines whether the client device is allowed access to the target device as part
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`of the SOCKS negotiation. Pet. at 40-41.; Ex. 1009 at 5, 12; Ex. 1011 at 19. Patent
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`Owner raises no unique challenge to these claims, Resp. at 38-39, and thus, these
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`claims rise and fall with claims 1 and 16.
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`D. Aventail in view of RFC 2401 and RFC 2543 Renders Claims 7
`and 22 Obvious
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`Dependent claims 7 and 22 recite that “the domain name is a secure domain
`
`name.” Aventail in view of RFC 2401 renders this feature obvious in a number of
`
`ways. Initially, Patent Owner’s assertions rely on its flawed construction of
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`“secure domain name” that would require it to be “non-standard.” Resp. at 41-42.
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`Patent Owner does not explain what it means to be “non-standard” and, as detailed
`
`above, see § II.B.3, Patent Owner’s construction was already rejected and has no
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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`basis in the specification or the understanding of one of ordinary skill.
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`Accordingly, a domain name corresponding to a host computer on a secure and
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`private network in the modified Aventail system is “a domain name that
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`corresponds to a secure computer network address.” Pet. at 53-54. That is all the
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`construction requires, and Patent Owner does not dispute that Aventail’s system
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`discloses the claimed “secure domain name[s]” under this construction.
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`In addition, Dr. Tamassia explained that the Aventail Extranet Server can
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`rely on a private server that would resolve domain names unable to be resolved by
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`a public DNS. Pet. at 53-54; Ex. 1005 at ¶ 311. Patent Owner argues that Aventail
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`does not disclose that the domain name submitted to the SOCKS server (i.e., the
`
`Aventail Extranet server) for resolution is resolved by a private DNS, Resp. at 40-
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`41, but Aventail explains that when DNS requests are being proxied, “the SOCKS
`
`server performs the hostname resolution,” Ex. 1009 at 12, and shows a private
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`DNS server to allow for hostname resolution on the private network, id. at 72.
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`Thus, one way that the Aventail Extranet Server would be configured to resolve
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`certain domain names on the private network would be through the private DNS
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`server, Pet. at 53; Ex. 1005 at ¶ 311, and Dr. Monrose and Patent Owner fail to
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`point to any other resolution mechanism for how the SOCKS server “performs the
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`hostname resolution,” see Ex. 2018 at ¶ 61.
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`12
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`IPR2015-00871
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`Petitioner’s Reply Brief (Paper 26)
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`E. Not-Separately Argued Claims and Grounds
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`Aventail in view of RFC 2401 and RFC 2543 Renders Claims 2, 3, 5, 8-
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`15, 17-19, and 23-30 Obvious: Patent Owner raises no unique challenge to these
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`claims, Resp. at 42, and thus, these claims rise and fall with claims 1 and 16.
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`Aventail in view of RFC 2401, RFC 2543, and Brand Renders Claim 24
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`Obvious: Patent Owner raises no unique challenge to this claim, Resp. at 42-43,
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`and thus, this claim rises and falls with claims 16.
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`IV. Dr. Tamassia’s Testimony Is Probative
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`Dr. Tamassia is a person of ordinary skill in the art, and he offered probative
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`testimony on many of the factual inquiries underpinning an obviousness analysis:
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`the level of skill and background knowledge of one skilled in the art, the scope and
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`content of the prior art, and the motivation to combine the references. Given the
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`depth of Dr. Tamassia’s experience and the breadth of his analysis in this
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`proceeding, his testimony can certainly “assist the trier of fact to understand the
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`evidence or determine a fact in issue” and it should be accord substantial weight.2
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`Fed. R. Evid. 702; cf. Sundance, Inc. v. Demonte Fabricating Ltd, 550 F.3d 1356,
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`1364 (Fed. Cir. 2008) (requiring a witness be qualified in the pertinent art to offer
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`
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`2 Patent Owner’s complaints about Dr. Tamassia’s thoughtfulness are meritless,
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`Resp. at 44 n.4; Patent Owner still finished the deposition early, Ex. 2019 at 249:5.
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`13
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`Petitioner’s Reply Brief (Paper 26)
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`testimony on any of the factual questions underlying obviousness). Patent Owner
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`asserts this testimony should be given no weight because Dr. Tamassia did not
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`opine on the ultimate question of obviousness or perform a claim-by-claim analysis
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`of the challenged claims. See Resp. at 43. But no rule requires an expert to opine
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`on the ultimate question of obviousness or on every potentially relevant fact at
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`issue for his opinion to be admissible or entitled to weight.3 See FRE 702. Dr.
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`Tamassia’s opinions can help the Board understand the evidence and determine a
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`fact at issue, and should be considered by the Board.
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`Patent Owner also incorrectly asserts Petitioner cannot prove the challenged
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`claims are obvious without expert testimony specifically addressing each claim
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`element. No statute or rule requires such testimony. The Board has repeatedly held
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`“[t]estimony from a technical expert can be helpful to show what would have been
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`known to a person of ordinary skill in the art and explain the significance of
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`elements in a claim,” but it “is not a prerequisite for establishing unpatentability by
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`
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`3 Patent Owner cites a number district court cases involving expert testimony in the
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`context of, e.g., infringement, juries, and summary judgment, that are inapposite.
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`E.g., Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304 (Fed. Cir 2002) (finding
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`the expert testimony was insufficient because the “burden of proving invalidity [by
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`clear and convincing evidence] on summary judgment is high”).
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`Petitioner’s Reply Brief (Paper 26)
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`a preponderance of the evidence, . . . just as it is not a prerequisite for a[n] [IPR]
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`petition.” See, e.g., Guangdong Xinbao Elec. Appliances Holdings v. Adrian
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`Rivera, IPR2014-00042, Paper 50 at 22-23 (Feb. 6, 2015).
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`Patent Owner’s reliance on Brand v. Miller, 487 F.3d 862 (Fed. Cir. 2007) is
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`misguided—the Brand court recognized that “the Board’s expertise appropriately
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`plays a role in interpreting record evidence.” Id. at 869. Patent Owner also ignores
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`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015), where the Federal
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`Circuit stated that in an IPR there was no requirement for an expert to “guid[e] the
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`Board as to how it should read prior art” as “Board members, because of expertise,
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`may more often find it easier to understand and soundly explain the teachings and
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`suggestions of prior art without expert assistance.” Id. at 1079; see 35 U.S.C. § 6.
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`The Board is more than capable of doing the “thinking” necessary to analyze the
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`references and to compare those teachings to the claims at issue. See Titanium
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`Metals Corp. of America v. Banner, 778 F.2d 775, 776-79 (Fed. Cir. 1985).
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`Patent Owner’s challenge also should be dismissed because it does not
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`address the prior art itself. For example, Dr. Monrose focused only on alleged
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`deficiencies in the Petition and in Dr. Tamassia’s deposition transcript instead of
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`the prior art and challenged claims. See, e.g., Ex. 1066 at 30:9-14 (“So my
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`analysis in the declaration only states that what is pointed to by the petitioner …
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`and whether that … can satisfy the limitations.”), 21:1-2, 130:18-131:1, 132:8-13
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`15
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`Petitioner’s Reply Brief (Paper 26)
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`(“I made no opinion of what the term [intercepting] requires.”). Such testimony is
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`plainly improper. 37 C.F.R. § 42.65(a); see LG Display Co., Ltd, v. Innovative
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`Display Technologies LLC, IPR2014-01362, Paper 32 at 15-16 (Feb. 8, 2016)
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`(discounting testimony intended to rebut the Petition because it did not consider
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`the prior art).
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`V. Aventail and the RFC References Are Conclusively Prior Art
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`Aventail: Patent Owner asserts that Petitioner has not established that
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`Aventail or the RFC references (i.e., RFC 2401 and RFC 2543) are prior art under
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`35 U.S.C. § 102(a) or (b). Patent Owner’s claims should be disregarded. Each
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`contested reference were unquestionably publicly disseminated prior to February
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`15, 2000, the uncontested effective filing date of the ’0705 patent.
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`Patent Owner concedes that the Aventail publications may have been
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`publicly distributed, but takes issue with the purported lack of corroborating
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`evidence of the precise number of copies actually distributed. Resp. at 47-52. But a
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`reference is publicly accessible if it was “disseminated or otherwise made available
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`to the extent that persons interested and ordinarily skilled in the subject matter or
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`art exercising reasonable diligence can locate it.” Kyocera Wireless Corp. v. Int'l
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`Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (internal quotations
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`omitted). Patent Owner’s attack against Mr. Hopen’s declaration (Ex. 1023) for
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`lack of precise corroboration of every detail—e.g., the precise number of copies
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`16
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`Petitioner’s Reply Brief (Paper 26)
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`distributed—is entirely irrelevant, as corroboration “does not require that every
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`detail of the testimony be independently and conclusively supported by explicit
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`disclosures in the pre-critical date documents or physical exhibits.” Ohio Willow
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`Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1348 (Fed. Cir. 2013) (internal citations
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`omitted). Instead, the assessment of corroboration requires the “rule of reason” in
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`which “the totality of the evidence …, including circumstantial evidence” is
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`assessed “in order to ascertain whether the testimonial assertions are credible.” Id.
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`Under this “rule of reason” approach, Aventail was available to the public
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`and widely disseminated prior to February 15, 2000 based on the three sworn
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`declarations of witnesses with personal knowledge of Aventail’s availability. Pet.
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`at 17-18. Mr. Hopen, a developer of Aventail, established that the Aventail
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`publications were distributed in the thousands before the critical date, see Ex. 1023
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`at 1-4, and Mr. Fratto4 and Mr. Chester testified that they actually received copies
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`in 1999. Ex. 1022 at 2-3; Ex. 1043 at 2-3; see also Ex. 1057 at 79: 25-