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`Paper No.
`Filed: January 17, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`THE MANGROVE PARTNERS MASTER FUND, LTD. and APPLE INC.,
`Petitioner
`v.
`VIRNETX INC.,
`Patent Owner
`
`
`
`Case IPR2015-010461
`Patent 6,502,135
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`
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`
`
`Patent Owner’s Sur-Reply Brief
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`1 Apple Inc., who filed a petition in IPR2016-00062, has been joined as a Petitioner
`in the instant proceeding.
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`Case No. IPR2015-01046
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`2.
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`3.
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`Claim Construction .......................................................................................... 1
`A.
`“Client Computer” ................................................................................. 1
`1.
`Petitioners’ Proposed Construction Finds No Support in
`the Claim Language .................................................................... 1
`The Specification Does Not Supports Petitioners’
`Construction ................................................................................ 5
`The Extrinsic Evidence Does Not Support Petitioners’
`Construction ................................................................................ 8
`“Virtual Private Network (VPN)” ......................................................... 9
`B.
` Kiuchi Does Not Anticipate Claims 1, 3, 4, 7, 8, 10, and 12 ........................12
`A.
`Petitioners’ “User Agent to Origin Server” Mapping Is
`Deficient ..............................................................................................12
`1.
`Kiuchi Does Not Disclose a Single HTTP Connection
`Between the User Agent and Origin Server..............................13
`Kiuchi’s User Agent Does Not Directly Address the
`Origin Server .............................................................................17
`Petitioners’ “Client-Side Proxy to Server-Side Proxy” Mapping
`Is Deficient ..........................................................................................20
`1.
`Petitioners’ “Client-Side Proxy to Server-Side Proxy”
`Mapping Fails Under VirnetX’s Construction for “Client
`Computer” .................................................................................21
`Petitioners’ “Client-Side Proxy to Server-Side Proxy”
`Mapping Fails Under Petitioners’ Construction for
`“Client Computer” ....................................................................25
` The Board Should Not Rely on Dr. Guerin’s Testimony ..............................30
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`B.
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`2.
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`2.
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`Case No. IPR2015-01046
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`The Board Should Draw an Adverse Inference Regarding the RPI or
`Privity Relationship Between Mangrove and RPX, and Terminate the
`Proceeding .....................................................................................................30
` A New Panel Should Consider this Remand Proceeding To Avoid
`Constitutional Concerns ................................................................................32
` The Proceedings Should Be Terminated in View of 35 U.S.C.
`§ 315(b) ..........................................................................................................32
` Conclusion .....................................................................................................33
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`Case No. IPR2015-01046
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Arctic Cat Inc. v. Polaris Indus., Inc.,
`No. 19-1440, 2019 WL 7050133 (Fed. Cir. Dec. 23, 2019) .............................. 31
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019) .......................................................................... 32
`Founding Church of Scientology of Washington, D.C. v. Webster,
`802 F.2d 1448 (D.C. Cir. 1986) .......................................................................... 31
`Motorola, Inc. v. Interdigital Tech. Corp.,
`121 F.3d 1461 (Fed. Cir. 1997) .......................................................................... 29
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) ............................................................................ 4
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2015) (en banc) ...................................................... 5, 29
`Therasense, Inc. v. Becton, Dickinson & Co.,
`593 F.3d 1325 (Fed. Cir. 2010) .......................................................................... 30
`VirnetX Inc. v. Cisco Sys. Inc.,
`767 F.3d 1308 (Fed. Cir. 2014) ........................................................ 11, 14, 20, 29
`VirnetX Inc. v. Mangrove Partners Master Fund, Ltd.,
`778 F. App’x 897 (Fed. Cir. 2019) ..............................................................passim
`Statutes
`35 U.S.C. § 315(b) ................................................................................................... 32
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`Case No. IPR2015-01046
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`Introduction
`As VirnetX previously demonstrated, Petitioners’ grounds of unpatentability
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`are deficient in a number of ways. Petitioners’ reply brief tries to argue otherwise.
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`As explained below, those arguments are without merit.
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` Claim Construction
`“Client Computer”
`A.
`Petitioners’ Proposed Construction Finds No Support in the
`1.
`Claim Language
`Petitioners’ claim construction argument is based on a faulty premise—that
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`the term “client computer,” in its “plain and ordinary meaning,” denotes “a
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`‘computer from which a data request to a server is generated.’” (Petitioner’s Reply
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`Remand Brief, Paper 97 (“Reply”) at 1.) That argument is unsound. Petitioners’
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`original basis for their proposed construction—as reflected in their opening brief on
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`remand—was the assertion that this is how a skilled artisan would have understood
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`the term “client computer.” (Petitioners’ Remand Brief, Paper 95 (“PRB”) at 6-7.)
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`In its opposition brief, VirnetX demonstrated that Petitioners’ support for that
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`assertion—a claim that both their and VirnetX’s experts “agreed that a skilled person
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`would have understood a conventional ‘client’ to be any application that generates a
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`request for data from a server” (PRB at 7)—mischaracterized expert testimony.
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`(Patent Owner’s Opposition Brief, Paper 96 (“Opp.”) at 7-8.) Neither expert
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`provided an opinion that would support Petitioners’ argument as to how a skilled
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`Case No. IPR2015-01046
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`artisan would have understood the term “client computer.” And as VirnetX
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`demonstrated, one of skill in the art, reading the claims in context of the
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`specification—as required—would have understood “client computer” to mean a
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`“user’s computer.” (See Opp. 3-6.)2
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`Petitioners’ reply scarcely defends their arguments based on the purported
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`understanding of a skilled artisan. Instead, Petitioners retreat to a different position,
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`urging that a “client computer” is a “computer from which a data request to a server
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`is generated” because claim 1 recites the “client computer” “generating a ... request”
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`2 Petitioners are incorrect in claiming that VirnetX’s expert, Dr. Monrose, “admitted
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`the ’135 patent did not give ‘client computer’ a special definition.” (Reply at 1.)
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`The portions of Dr. Monrose’s deposition that Petitioners cite (Ex. 1036, 74:15-
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`75:16, 95:1-5) contain no discussion of that issue, much less any “admission.”
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`Regardless, VirnetX’s argument is not that the ’135 patent advanced any “special
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`definition” for the term “client computer,” but that the language of the claims and
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`the specification make clear that the term “client computer” means a “user’s
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`computer.” (See Opp. 3-6.) Petitioners, moreover, do not even attempt to rebut
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`VirnetX’s detailed explanation of how their brief mischaracterized the testimony of
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`Dr. Guerin and Dr. Monrose. (See Reply at 9; Opp. 7-8.)
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`for an IP address. (Reply at 2.) That argument is nonsensical. A claim term is not
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`Case No. IPR2015-01046
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`defined by the description of one of the claimed steps it performs; that would deprive
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`the term “client computer” of any independent meaning. If a claim recites “a wire
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`to transmit current,” that does not mean a “wire” can be defined as anything that can
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`transmit current (such as a human body).
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`Along similar lines, Petitioners argue that the claims of the ’135 patent “do
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`not require checking a user’s status or credentials,” but “instead specify actions
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`based on attributes of the request or the computer making the request.” (Reply at 3.)
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`That the client computer sends a request does not by itself define what the computer
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`is in the context of the claims and specification of the ’135 patent. Claim 1 requires
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`a VPN between the client computer and target computer; an arrangement that the
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`specification repeatedly describes as involving a user’s computer. (See Ex. 1001 at
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`38:30-33; see also Opp. 4-5.) Moreover, the clarification that the client computer is
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`sending a “request” is contained within the language of claims 1, 10, and 13. This
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`is not a situation where one claim recites the term “client computer,” and a different
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`claim contains a clarification that could narrow the definition of “client computer.”
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`Having failed to find adequate support for their preferred definition in the
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`claim language of the ’135 patent, Petitioners resort to claim language of different
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`patents, containing different terms. Thus, Petitioners quote—for the first time in this
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`proceeding—U.S. Patent No. 9,386,000 (not at issue here), which recites the term
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`“client device,” and then “adds that ‘the client device is a user device.’” (Reply at 3
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`(emphasis removed).) Petitioners claim this shows that a “client computer” cannot
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`be a “user’s computer” because otherwise “the additional language in this claim [of
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`the ’000 patent] would be superfluous.” (Id.) To the contrary, to the extent
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`construction of “client device” in the ’000 patent is even relevant,3 that definition
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`shows that the specification (which the ’135 patent shares with the ’000 patent) uses
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`the term “client computer” to mean the “user’s computer.” (See Opp. 9-10.) If the
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`“client device is a user device” (as stated in the ’000 patent), it follows that a “client
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`computer” in the ’135 patent should be construed as “a user’s computer.”
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`Finally, Petitioners contends that their construction “reflects the skilled
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`artisan’s understanding that a device in a client-server system that acts as a server in
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`one operation can act as a client in another.” (Reply at 2 (citing Ex. 1014 at 5-6).)
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`As VirnetX already explained, Exhibit 1014 (RFC 1945) defines the user agent as
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`the “client” that “initiates a request,” (Opp. 6 n.3, 27; Ex. 2047 at 73:14-19), and so
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`3 Petitioners rely (Reply at 4) on the “presum[ption] … that the same claim term in
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`the same patent or related patents carries the same construed meaning.” Omega
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`Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003) (citation omitted).
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`That doctrine does not apply, however, where the claim terms are different, as “client
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`device” and “client computer” are.
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`supports VirnetX’s construction. Petitioners do not attempt to rebut this argument.
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`Moreover, Petitioners apparently concede that their construction would result in a
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`confusing ability of the claimed components to change whether they act as a “client
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`computer” or a “target computer.” (See Reply at 2-3 (“nothing in the claims
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`precludes a ‘target computer’ in a first transaction from being a ‘client computer’ in
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`a second transaction involving a different ‘target computer’”) (emphasis in
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`original).) As explained below, infra at Section III.B.2, Petitioners’ interpretation
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`of Kiuchi fails in light of this argument.
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`2.
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`The Specification Does Not Supports Petitioners’
`Construction
`As VirnetX demonstrated, the specification—the “single best guide to the
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`meaning of a disputed term,” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
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`2015) (en banc)—indicates that the proper construction of “client computer” is a
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`“user’s computer.” (Opp. 3-5, 8-11.) The specification uses the terms “client
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`computer” and a “user’s computer” synonymously because the two terms are
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`consistent with each other. (See, e.g., Opp. 9-10.)
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`Petitioners contend that the specification “refutes” this construction, but their
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`effort falls short. Petitioners first accuse VirnetX of “ignor[ing]” a passage in the
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`specification that “uses ‘client computer’ without any statement or suggestion it
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`must be a user’s device.’” (Reply at 4 (quoting Ex. 1001 at 16:16-19, Fig. 8)
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`(emphasis in original).) As an initial matter, this is the first time Petitioners invoked
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`this portion of the specification—it was not cited or discussed in their opening
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`remand brief—and so VirnetX could hardly be accused of “ignoring” something
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`Petitioners did not argue until now. In any event, the fact that in some passages the
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`specification uses the term “client computer” without any further elaboration is
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`hardly evidence that the term does not mean a “user’s computer.” After all, the
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`claims themselves use the term “client computer” without further elaboration;
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`otherwise, there would be no need to define the term. The specification does not
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`have to expressly define the term “client computer” every time it uses that term.
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`There is no implication—contrary to Petitioners’ argument (see Reply at 6)—that
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`the computer at the starting end of the VPN is not a “user’s computer.” This is not—
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`as Petitioners attempt to portray it—a situation where a patent uses different terms,
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`which “connotes different meanings,” nor is it an attempt to “import[] limitations
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`from the specification into the claim,” (Reply at 5, 6 (internal quotation marks,
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`emphasis, and citations omitted)).
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`Similarly unavailing is Petitioners’ argument that “[o]ther passages use ‘client
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`computer’ without any reference or context suggesting the necessity of a ‘user.’”
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`(Reply at 7.) For starters, Petitioners’ argument is factually wrong. One of the
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`figures to which they point—Figure 31, discussed at Ex. 1001 at 7:33-36—expressly
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`refers to a “determin[ation] that client 3103 is a validly registered user.” (Ex. 1001
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`at 45:8-9.) The other passages cited by Petitioners (Figures 8 and 9) are also not
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`inconsistent with VirnetX’s proposed definition. (See supra at 5-6 (discussing
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`Case No. IPR2015-01046
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`Figure 8).)
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`Petitioners then try to counter VirnetX’s argument that the specification’s
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`statement that “[a] user’s computer 2601 includes a convention client (e.g., a web
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`browser) 2605” (Ex. 1001 at 38:14-15, quoted in Opp. 8) shows that the “client
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`computer” is a “user’s computer,” since it is running applications like web browsers
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`that would run on a computer being operated by a user, and not on a proxy. (Opp.
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`8-9.) Petitioners contend the statement “expressly differentiates” between “user’s
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`computer” and “client” because (they assert) “a web browser running on the user’s
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`computer is identified as an example … of a client.” (Reply at 5 (emphasis
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`removed).) At most, that argument can show that the term “client” (as used in the
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`’135 patent) could mean “user’s application” (as opposed to only “user’s
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`computer”); it does not show that the term “client” cannot mean “user.”
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`As VirnetX pointed out, the specification consistently speaks about a VPN
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`being established “between user computer … and secure target site.” (Ex. 1001 at
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`38:30-33, quoted in Opp. 4; see also Ex. 1001 at 39:23-25.) Petitioners argue that
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`those passages merely describe “a single embodiment of the invention” that
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`“imposes no restrictions on how” to make “a determination that a user has sufficient
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`security privileges,” and that a user’s security privileges “can be checked without a
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`user’s credentials and can be delegated to devices other than the ‘user’s computer.’”
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`(Reply at 5 (quoting Ex. 1001 at 38:23-30, 39:6-13).) This argument misses the
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`mark. VirnetX never argued that the user’s computer must make that security
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`determination. Moreover, this example supports VirnetX’s construction, for one
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`would not be checking whether the user has sufficient security privileges if there
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`were no user.
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`Critically, Petitioners offer no effective response to VirnetX’s point that the
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`specification expressly distinguishes the “client computer” from proxies like
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`Kiuchi’s client-side proxy. (See Opp. 5; see also Opp. 8-9.) Petitioners accuse
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`VirnetX of “ignor[ing] that one computer can play multiple roles in a client-server
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`system.” (Reply at 6.) That observation, however, is not responsive to VirnetX’
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`point that, in the context of the ’135 patent, when the specification speaks of a “client
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`computer” and a proxy, it is referring to two markedly distinct items.
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`3.
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`The Extrinsic Evidence Does Not Support Petitioners’
`Construction
`As VirnetX demonstrated, the extrinsic evidence, such as RFC 1945 and the
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`dictionaries, support VirnetX’s proposed construction of “client computer,” and not
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`that advanced by Petitioners. (See Opp. 5-6 & n.3.) Petitioners’ arguments to the
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`contrary are unavailing. Singing a familiar tune, Petitioners accuse VirnetX of
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`“ignor[ing] RFC 1945’s explanation that a proxy ‘acts as both a server and a client
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`for the purpose of making requests on behalf of other clients.’” (Reply at 8 (quoting
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`Ex. 1014 at 5-6) (emphasis in original).) But the fact that a proxy can “act[] as both
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`a server and a client” does not mean that the proxy is the server or the client. A
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`proxy can perform the functions associated with a client, but that does not mean it is
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`a client within the context of particular claim terms.
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`Moreover, Petitioners themselves ignore RFC 1945’s definition of a “user
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`agent” as “[t]he client which initiates a request.” (Ex. 1014 at 5 (emphasis added).)
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`As VirnetX explained, that definition supports VirnetX’s—not Petitioners’—
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`construction of “client computer.” And, as VirnetX also explained, Exhibits 1037
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`and 1043 discuss “client” in a similar manner. (Opp. 6 n.3.) Petitioners
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`characteristically offer not response to that argument.
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`Finally, Petitioners offer no effective counter to VirnetX’s argument
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`(Opp. 11) that its proposed construction is supported by the acknowledgement of
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`Petitioner Apple’s own expert in parallel district-court litigation that Kiuchi’s user
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`agent—i.e., the web browser operated by the user, not the client-side proxy—“would
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`be read naturally as a client computer.” (Ex. 2048 at 50:7-24.) Petitioners’ attempts
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`to side-step the admission of their own expert (see Reply at 27-28) is unavailing.
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`See infra at Section III.B.1.
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`“Virtual Private Network (VPN)”
`B.
`Petitioners concede, as they must, that the Federal Circuit gave effect to
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`VirnetX’s disclaimer, which “clearly and unmistakably state[d] that a ‘VPN between
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`the client computer and the target computer’ requires direct communication between
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`the client and target computers.” VirnetX Inc. v. Mangrove Partners Master Fund,
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`Case No. IPR2015-01046
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`Ltd., 778 F. App’x 897, 910 (Fed. Cir. 2019). Petitioners contend, however, that
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`even in light of VirnetX’s disclaimer, “Kiuchi’s user agent communicates ‘directly’
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`with the origin server” and “[t]he use of proxy servers (such as in Kiuchi’s system)
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`… does not prevent a communication from being ‘direct’ in the meaning of the
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`claims.” (Reply at 10, 15.)
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`As an initial matter, Petitioners’ effort is foreclosed by the Federal Circuit’s
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`decision. The Court explained that VirnetX disclaimed a “system in which a client
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`computer communicates with an intermediate server via a singular, point-to-point
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`connection,” wherein “[t]hat intermediate server then relays the data to a target
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`computer on the same private network on which the server resides.” VirnetX, 778
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`F. App’x at 910. The mandate rule precludes the Board from adopting a claim
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`construction that would cover that ceded claim scope.
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`Petitioners attempt to evade the Federal Circuit’s guidance by arguing that
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`VirnetX did not disclaim a system that “uses intermediary network devices such a
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`proxy servers or firewalls.” (Reply at 12.) That is misleading. VirnetX never argued
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`that a VPN communication can be direct when it is routed through a proxy server.4
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`4 VirnetX did acknowledge that a direct communication can pass through a firewall,
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`but that is because a firewall—like a Network Address Translator (“NAT”) router—
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`10
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`In fact, as the Federal Circuit previously observed, VirnetX argued exactly the
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`opposite. As the Court explained, in parallel district-court litigation, “the jury heard
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`expert testimony that Kiuchi’s client-side and server-side proxies terminate the
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`connection, process information, and create a new connection—actions that are not
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`“direct” within the meaning of the asserted claims. … VirnetX distinguished such
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`proxy activities from the operation of NAT routers which—unlike proxy servers in
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`the prior art-do not terminate the connection.” VirnetX Inc. v. Cisco Sys. Inc., 767
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`F.3d 1308, 1323-24 (Fed. Cir. 2014) (emphasis added).
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`Petitioners are being similarly misleading when they claim that “VirnetX …
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`explained that transporting network traffic across proxy servers … does not prevent
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`direct communications.” (Reply at 12-13.) VirnetX never argued that the VPN in
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`Apple’s infringing system goes through the proxy servers, but only that the system
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`can include proxy servers. See Br. for VirnetX Inc., No. 2013-1489, Dkt. No. 54
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`(Fed. Cir. Dec. 9, 2013) (hereinafter, “VirnetX Br., No. 2013-1489”) at 19; see also
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`id. at 38-39.
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`Similarly misleading is Petitioners’ assertion that VirnetX’s characterization
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`of the “direct communication” requirement as one of “direct addressability” can
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`does not stop or terminate that communication. See Br. for VirnetX Inc., No. 2013-
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`1489, at 51; see also infra at Section III.A.
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`encompass relay-based systems, such as Kiuchi’s. (See Reply at 13-15.) VirnetX’s
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`disclaimer specifically identified the relay-based system of Aventail as outside the
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`claims. (See Ex. 2036, 7 (“The SOCKS server then relays that data to a target
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`computer on a private network on which the SOCKS server also resides.”).) As
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`VirnetX consistently argued, such relay-based systems “are indirect.” VirnetX Br.,
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`No. 2013-1489, at 21. As VirnetX explained, a NAT router can “translate[] the
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`transport address from the WAN, a public address space, to the LAN, a private
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`address space.” (Id.) But, VirnetX further explained, “[u]nlike Kiuchi and Aventail
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`proxy servers and FaceTime relay servers, NAT routers do not terminate the
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`connection, and the communication remains direct between caller and recipient.”
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`(Id. at 21-22 (emphasis added).)
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` Kiuchi Does Not Anticipate Claims 1, 3, 4, 7, 8, 10, and 12
`Petitioners maintain that “Kiuchi anticipates the challenged claims in two
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`independent ways.” (Reply at 15.) For the reasons discussed in VirnetX’s
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`opposition brief and those below, both of Petitioners’ mappings cannot support
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`unpatentability of the challenged claims.
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`Petitioners’ “User Agent to Origin Server” Mapping Is Deficient
`A.
`The connection between Kiuchi’s user agent and origin server is not direct
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`within the meaning of VirnetX’s disclaimer. (Opp. 15-21.) Petitioners respond with
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`two points. First, Petitioners argue that “Kiuchi describes communications between
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`a user agent and origin server that use a single HTTP connection.” (Reply at 16-19.)
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`Second, Petitioners argue that “Kiuchi’s user agent … directly addresses the origin
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`server.” (Reply at 19-23.) Petitioners are wrong on both fronts.
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`1. Kiuchi Does Not Disclose a Single HTTP Connection
`Between the User Agent and Origin Server
`Petitioners maintain that “Kiuchi describes communications between a user
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`agent and origin server that use a single HTTP connection” because “Kiuchi’s user
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`agent sends a HTTP Get Request, which is an application layer communication
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`routed through the client-side and server-side proxies and delivered to the origin
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`server.” (Reply at 16.) At the outset, this contradicts Petitioners’ prior assertion that
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`Kiuchi discloses an “encrypted C-HTTP connection … between the user agent …
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`and the origin server.” (PRB at 16-17.) Petitioners’ abandonment of that theory is
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`not surprising since VirnetX demonstrated it was wrong. (Opp. 17-18.) Petitioners’
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`new theory, however, is also wrong.
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`First, Petitioners make no effort to explain how their characterization of
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`Kiuchi as disclosing a “single HTTP connection” is relevant under the interpretation
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`of VirnetX’s disclaimer held by the Federal Circuit. The Federal Circuit explained
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`that VirnetX’s disclaimer “described a system in which a client computer
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`communicates with an intermediate server via a singular, point-to-point connection,”
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`whereby “[t]hat intermediate server then relays the data to a target computer on the
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`same private network on which the server resides.” VirnetX, 778 F. App’x at 910.
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`Whatever descriptive label is given to Kiuchi’s process does not change the fact that
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`the user agent communicates with the client-side proxy using HTTP/1.0, which in
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`turn communicates separately with the server-side proxy using C-HTTP (Ex. 1002
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`at 8-9), and that “[f]rom the view of the user agent … all resources appear to be
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`located in [the] server-side proxy” (id. at 9)—and the “server-side proxy forwards
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`requests to the origin server,” which is in the same network as the server-side proxy
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`(id.). Kiuchi thus falls precisely in the scope of the disclaimer found by the Federal
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`Circuit. See also VirnetX, 767 F.3d at 1324 (“Kiuchi’s client-side and server-side
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`proxies terminate the connection, process information, and create a new
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`connection—actions that are not ‘direct’ within the meaning of the asserted
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`claims.”).
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`In any event, nowhere does Kiuchi disclose that it makes use of a “single
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`HTTP connection” between the user agent and origin server. As the Federal Circuit
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`explained, Kiuchi discloses three separate links: the “user agent and client-side
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`proxy communicate” via one link, and “the origin server and server-side proxy
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`communicate” via another. VirnetX, 778 F. App’x at 905. Then, there is a third
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`“secure, encrypted” “connection between the client-side and server-side proxies.”
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`Id.; see also id. (user agent and origin server “receive . .. information” not from each
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`other, but “from their respective proxies”); VirnetX, 767 F.3d at 1324 (“Kiuchi’s
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`client-side and server-side proxies terminate the connection, process information,
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`Case No. IPR2015-01046
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`and create a new connection”).
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`Petitioners’ assert that the original “HTTP Get Request” in Kiuchi sent by the
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`user agent is “routed to” the origin server. (Reply at 16.) This too is incorrect and
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`unsupported by the evidence. As VirnetX previously explained, Kiuchi does not
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`disclose what is passed to the origin server in the separate connection between the
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`server-side proxy and the origin server, and only generically states that “the server-
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`side proxy forwards requests to the origin server.” (Ex. 1002 at 9;5 see also Opp.
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`18-19.) Kiuchi makes no reference to any “routing” or how such routing is
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`performed.
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`Petitioners assert that Kiuchi’s description is analogous to the description of
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`TARP in Figure 2 of the ’135 patent. (Reply at 17-18.) VirnetX has already
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`demonstrated this to be false. (Opp. 19.) Petitioners tellingly provide no substantive
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`response to VirnetX’s showing.
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`Apparently recognizing that Kiuchi cannot map to the claims under the
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`5 Kiuchi also explains that it is possible to map any of the virtual directories on the
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`server-side proxy to any of the directories in one or more origin servers inside the
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`firewall. (Ex. 1002 at 9.) This example further clarifies that the server-side proxy
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`has to determine where to find the origin server.
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`interpretation of the claims articulated by the Federal Circuit, Petitioners try to
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`Case No. IPR2015-01046
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`distract by comparing Kiuchi to another prior art reference, Aventail, that was at
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`issue when VirnetX made its disclaimer. (Reply at 16-17.) In doing so, Petitioners
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`concede that if a “client cannot open a … connection to the target device, but instead
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`opens a … connection with [an intermediary] server, which in turn communicates
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`with the target over a separate connection,” such a reference would fall within the
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`scope of VirnetX’s disclaimer. (Reply at 17.) Petitioners are simply wrong that
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`Kiuchi does not describe such a system, as VirnetX previously showed and the
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`Federal Circuit recognized. (See Opp. 16-21.) Indeed, while Petitioners try to paint
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`VirnetX’s disclaimer narrowly now, Apple had a far different understanding in
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`district court, describing VirnetX’s disclaimer as “entirely consistent with what
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`[VirnetX] show[s] in [its] patent” and describing the “difference” between Aventail
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`and the ’135 patent’s direct communication requirement by arguing that, unlike in
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`Aventail, “[t]here is not an intermediate server that the client has targeted.”
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`(Ex. 2035 at 44:19-45:12.)
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`Petitioners further contend that Kiuchi is like Apple’s infringing system
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`because both encrypt and decrypt communications and make use of intermediary
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`devices. (Reply at 18.) That is a strawman. VirnetX has never argued that mere
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`encryption and decryption, or making use of intermediary devices, precludes direct
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`communication. Indeed, this is an issue on which the Federal Circuit previously
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`weighed in. (Supra Section II.B.)6 And while Petitioners assert that VirnetX has
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`Case No. IPR2015-01046
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`argued that “network traffic in Apple’s system is transported across proxy servers”
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`(Reply at 18), this is misleading. VirnetX never argued that the VPN in Apple’s
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`infringing system goes through the proxy servers, but rather argued that the system
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`includes proxy servers. VirnetX Br., No. 2013-1489, at 19.
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`2. Kiuchi’s User Agent Does Not Directly Address the Origin
`Server
`Petitioners argue that “Kiuchi’s user agent … directly addresses the origin
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`server.” (Reply at 19.) In making this argument, Petitioners grossly misconstrue
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`Kiuchi. Kiuchi’s user agent does not directly address the origin server, and indeed
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`“[f]rom the view of the user agent … all resources appear to be located in [the]
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`server-side proxy[.]” (Ex. 1002 at 9; see also Opp. 18-19.) Kiuchi specifically
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`rejects secure end-to-end communications between users and origin servers by
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`relying on proxy-to-proxy communications. (Ex. 1002 at 7, 10.)
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`Fundamental to Petitioners’ position is the belief that “Kiuchi’s user agent
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`creates an HTTP Get Request that includes an address—the URL—of the origin
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`server” whereby, according to Petitioners, this request is then “transmitted to a
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`6 Petitioners also argue that Kiuchi does not sufficiently modify data, and does so in
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`a manner analogous to Apple’s infringing products. (Reply at 18-19.) As VirnetX
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`previously explained, Petitioners misunderstand VirnetX’s argument. (Opp. 20-21.)
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`client-side proxy that encrypts the message, wraps it in a C-HTTP header, and
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`Case No. IPR2015-01046
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`transmits it to a server-side proxy” that “decrypts the HTTP Get Request and, using
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`the URL, forwards it to the origin server.” (Reply at 19-20.) This is not how Kiuchi
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`works.
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`Kiuchi does not disclose that the URL in the request is used to route a request
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`to the origin server. Instead, the URL is used during the initial phases of Kiuchi’s
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`process (i.e., the steps leading up to the connection betwe