IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In reInter Partes Reexamination of:
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`Victor LARSON et al.
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`U.S. Patent No. 7,188,180
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`Issued: March 6, 2007
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`For: METHOD FOR ESTABLISHING
`SECURE COMMUNICATION LINK
`BETWEEN COMPUTERS OF
`VIRTUAL PRIVATE NETWORK
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`)
`)
`) Control No.: 95/001,792
`)
`) Group Art Unit: 3992
`)
`) Examiner: Deandra M. Hughes
`)
`) Confirmation No. 1972
`)
`)
`)
`
`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
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`PATENT OWNER'S COMMENTS IN RESPONSE TO
`EXAMINER'S DETERMINATION PURSUANT TO 37 C.F.R. § 41.77(e)
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`VimetX Inc., the owner of U.S. Patent No. 7,188,180 ("the '180 patent"), submits these
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`Comments
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`in Response
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`to
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`the Examiner's Determination of February 11, 2015
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`("Determination") in the above-identified reexamination proceeding. On April 1, 2014, the
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`Board decided an appeal in this proceeding ("Decision") and reversed the Examiner's
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`confirmation of claims 1, 4, 6, 7, 9-15, 17, 20, 22, 23, 25-31, 33, 35, 37, 38, 40, and 41.
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`(Decision at 3.) The Board issued the following "new grounds of rejection for these claims
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`pursuant to 37 C.P.R.§ 41.77(b)":
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`Rejection of claims 1, 4, 6, 9-10, 12-15, 17, 20, 22, 25-26, 28-31, 33, 35,
`37, and 40 under 35 U.S.C. § 102 based onKiuchi (id. at 9, 23);
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`Rejection of claims 1, 4, 6, 9-15, 17, 20, 22, 25-31, 33, 35, 37, 40, and 41
`under 35 U.S.C. § 103(a) based on Kiuchi (id. at 11, 23); and
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`MANGROVE 1017
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`

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`Attorney Docket No. 11798.0005
`Control No. 95/001,792
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`Rejection of claims 7, 23, and 38 under 35 U.S.C. § 103(a) based on
`Kiuchi in view of Martin (id. at 17, 23).
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`The Board also affirmed the Examiner's decision confirming claims 8, 24, and 39. (!d. at 3.)
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`Pursuant to Rule 41.77 (b)( 1 ), Patent Owner filed a response requesting to reopen
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`prosecution on June 2, 2014 ("Request to Reopen"), along with new evidence relevant to the
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`Board's new grounds of rejection. Third Party Requester Cisco Systems, Inc. ("Cisco" or
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`"Requester") filed its responsive comments on June 27, 2014.
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`In an Order remanding the
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`reexamination to the Examiner ("Remand Order") on November 11, 2014, the Board granted the
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`Patent Owner's Request to Reopen, determined that Patent Owner's "new evidence relates to the
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`claims so rejected," and entered Patent Owner's new evidence "for the Examiner's
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`consideration."
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`(Remand Order at 3.) On February 11, 2015, the Examiner issued a
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`Determination under 37 C.P.R. § 41.77(d), that Patent Owner has "not overcome the new
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`grounds of rejection by the Board." (Determination at 8.) In response to the Determination,
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`Patent Owner is filing these timely comments pursuant to 37 C.P.R.§ 41.77(e).
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`VimetX does not believe any fee is due in connection with the filing of these Comments.
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`If any fee is due, however, please charge the fee to Deposit Account 50-2613.
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`I.
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`Background
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`As Patent Owner explained in its Request to Reopen, the Board entered new grounds of
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`rejection in its Decision because it, among other things, advanced new constructions for the
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`phrases "virtual private network communication link" and "client computer," newly construed a
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`"version number" in Kiuchi, and advanced new obviousness grounds based on Kiuchi and Kuichi
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`in view of Martin. (See generally, Request to Reopen; Decision.) Patent Owner traversed the
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`Board's rejections by offering two supplemental declarations, sixteen new exhibits, and 29 pages
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`of explanation in its Request to Reopen. Finding Patent Owner's Request to Reopen compliant
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`-2-
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`MANGROVE 1017
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`

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`Attorney Docket No. 11798.0005
`Control No. 95/001,792
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`with the rules and further finding its submitted evidence to be relevant to the newly rejected
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`claims, the Board remanded the proceeding to the Examiner for further consideration of both,
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`stating the following:
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`In its response, Owner submitted additional evidence in the form
`of a Declaration from Fabian Monrose, Ph.D, a Supplemental
`Declaration of inventor Robert Dunham Short III, Ph.D, and
`Exhibits A-9 and A-34 through A-38 listed in Appendix .... [T]he
`new evidence is entered for the Examiner's consideration.
`
`for
`the Examiner
`to
`remanded
`The proceeding will be
`consideration of Owner's Response and Requester's Comments in
`connection with claims 1, 4, 6, 7, 9-15, 17, 20, 22, 23, 25-31, 33,
`35, 37, 38, 40, and 41. As set forth in 37 C.P.R. § 41.77(d), after
`due consideration of those submissions, the Examiner is to issue
`a determination as to whether the Board's new grounds of rejection
`as designated in the Decision have been overcome.
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`(Remand Order at 3, emphasis added.)
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`The Determination, however, fails to giVe "due consideration" to Patent Owner's
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`submissions. As explained below, the Determination considers only seven of the twenty-nine
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`pages in Patent Owner's Request to Reopen, only a portion of one of the two submitted
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`declarations, and only six of Patent Owner's sixteen entered exhibits-two of which the
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`Examiner accords little weight. (Determination at 5-8.)
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`II.
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`Argument
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`The Determination is in violation of 37 C.P.R. § 41.77(d) at least because it fails to give
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`due consideration to all of Patent Owner's submissions in response to the Board's new grounds
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`of rejection. 1 Where the Determination does address certain exhibits and one claim construction
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`issue, it only provides general statements such as "the Patent Owner does not overcome the new
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`grounds of rejection by the Board." (See e.g., Determination at 8.) Accordingly, contrary to the
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`1 While arguments relative to rejections not designated as new grounds of rejection need not be
`considered (37 C.P.R.§ 41.77(b)), all of Patent Owner's traversals in its Request to Reopen
`properly address only those grounds of rejection identified as new by the Board in its Decision.
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`-3-
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`MANGROVE 1017
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`

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`Attorney Docket No. 11798.0005
`Control No. 95/001,792
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`Office's standard procedures and practice, any analysis underlying the grounds of rejection is not
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`clearly developed nor presented, making it difficult for Patent Owner to provide any response to
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`why the claims-at-issue are rejected.
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`Given the Determination's scant analysis and failure to consider all of Patent Owner's
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`submissions, the Determination should be found deficient under 37 C.P.R. § 41.77(d) and
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`vacated and the Examiner should be required to review and give appropriate consideration to all
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`the arguments and evidence submitted by Patent Owner. 2 Alternatively, the Office should find
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`that for at least the reasons outlined in Patent Owner's Request to Reopen, claims 1, 4, 6, 7, 9-15,
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`17, 20, 22, 23,25-31, 33, 35, 37, 38, 40, and 41 are patentable.
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`A.
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`The Determination Fails to Address All of Patent Owner's Submissions
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`37 C.P.R. § 41.77(d) states that "[t]he examiner will consider any owner response under
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`paragraph (b)(1)" of Section 41.77. Despite a finding by the Board that Patent Owner's Request
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`to Reopen and accompanying evidence are compliant with the rules and relevant to the Board's
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`new grounds of rejection, the Examiner failed to consider all of the positions raised in the
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`Request and many of the exhibits. In particular, the Examiner did not address the following
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`positions:
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`• The Board's claim construction of "client computer" is unreasonably broad (Request to
`Reopen at 11-13);
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`• The "request for connection" is not sent using a "virtual private network communication
`link," even under the Board's construction of that term (id. at 13-14);
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`• The Board's consideration of the "step (6) message" rearranges the features of Kiuchi
`relied upon for claims 1, 17, and 33 (id. at 14-15);
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`• The "step ( 6) message" is not an "access request message" (id. at 15-17);
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`2 To the extent necessary, Patent Owner hereby requests that this paper be considered as a
`petition requesting that the Examiner review and give appropriate consideration to all the
`arguments and evidence submitted by Patent Owner.
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`-4-
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`MANGROVE 1017
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`Attorney Docket No. 11798.0005
`Control No. 95/001,792
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`•
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`If the "step ( 6) message" is relied upon, Kiuchi does not disclose the step of "sending a
`query message" (id. at 17-18);
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`• Kiuchi 's "version number" does not represent a "predetermined level of service" as
`required by claims 6, 22, and 37 (id. at 18-19);
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`• Kiuchi's "step (6) message" and "step (3) message") do not contain a "request for
`information stored at the secure computer network address" as required by claims 12
`and 28 (id. at 19-20);
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`• Kiuchi 's client-side proxy is not a "client computer" under a proper construction of the
`term (id. at 20-21);
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`• Kiuchi would not render obvious claims 1, 4, 6, 9-15, 17, 20, 22,25-31,33, 35, 37, 40,
`and 41 (id. at 22-23);
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`• Kiuchi in view of Martin would not render obvious claims 7, 23, and 38 (id. at 23-24);
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`• Objective evidence demonstrates nonobviousness (id. at 24-29).
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`The Determination also failed to address in any way Exhibits A-39 through A-48. (See
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`generally, Determination.) The Rules require an examiner to review a patent owner's response
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`with respect to new grounds of rejection. (See Decision on Appeal in Reexamination Control
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`No. 95/001,169 at 6-7) But here, each of the issues discussed by Patent Owner addresses what
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`the Board expressly refers to as "new grounds of rejection ... pursuant to 37 C.P.R.§ 41.77(d)."
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`(Decision at 3.) Indeed, the Board reversed the Examiner's confirmation that claims 1, 4, 6, 7, 9-
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`15, 17, 20, 22, 23, 25-31, 33, 35, 37, 38, 40, and 41 were patentable over the prior art. (/d.)
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`Thus, it is error for the Examiner to refuse to consider the entirety of Patent Owner's Request to
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`Reopen and Exhibits A-39 through A-48. Because the Examiner's Determination is in violation
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`of Rule 41.77(d), it should be vacated and the Examiner should be required to review and give
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`appropriate consideration to all the arguments and evidence submitted by Patent Owner.
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`-5-
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`MANGROVE 1017
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`

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`Attorney Docket No. 11798.0005
`Control No. 95/001,792
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`B.
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`The Determination Is Incomplete Even with Respect to the Issue It Did
`Review
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`While the Determination purports to consider some of Patent Owner's submissions in its
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`Request to Reopen, it fails to provide complete and sufficient explanations for Patent Owner to
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`prepare a proper response. In particular, the Determination indicates that the evidence relevant
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`to a construction of "virtual private network communication link" was reviewed and considered,
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`but concludes without explanation that "it is the Examiner determination the response by the
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`Patent Owner does not overcome the new grounds of rejection by the Board." (Determination at
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`5-8.)
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`The Determination does not offer a substantive response to any of Patent Owner's
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`traversals or explanations with regards to the phrase "virtual private network communication
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`link" in its Request to Reopen. Although the Determination addresses a portion of one of the
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`submitted declarations and Exhibits A-9, A-34 through A-38, it does not provide any substantive
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`analysis other than to identify a weight given to those exhibits. For instance, the Examiner states
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`that Exhibits A-9, A-37, and A-38 will be given less weight because they provide a construction
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`of the phrase "secure communication link" but do "not provide a construction of the claim phrase
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`'virtual private network communication link."' (!d. at 7-8.) But, these Exhibits are directly
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`relevant at least because, as explained in the Request to Reopen, the Board incorrectly broadened
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`its construction of a "virtual private network communication link" to encompass another claim
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`term, namely a "secure communication link." (Request to Reopen at 8-10.)
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`The Determination also addresses a portion of one of the submitted declarations and
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`purports to accord it "substantial weight." (Determination at 7.) Nevertheless, the Examiner
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`appears to have ultimately discounted the declaration, finding that "Patent Owner does not
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`overcome the new grounds of rejection by the Board." (!d. at 8.) No explanation is given as to
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`-6-
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`MANGROVE 1017
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`Attorney Docket No. 11798.0005
`Control No. 95/001,792
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`why the expert declaration does not overcome the Board's rejections or how the Board's
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`rejections overcome the expert declaration. The Examiner's determination fails to provide
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`Patent Owner with any analysis or reasoning to which the Patent Owner may respond.
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`In an analogous circumstance, during prosecution in an inter partes reexamination
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`proceeding, an examiner is tasked with providing analysis and developing the issues such that
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`the patent owner may determine whether to file discretionary comments following an action
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`closing prosecution. See M.P.E.P. § 2671.02. For instance, M.P.E.P. § 2671.02(1) states that
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`"the grounds of rejection and determinations of patentability must (in the ACP) be clearly
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`developed to such an extent that the patent owner and the third party requester may readily judge
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`the advisability of filing comments after an ACP .... " Here too, the same concerns are present,
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`but even more compelling as this submission is Patent Owner's last opportunity to address any
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`rejections (or confirmations) prior to the Board's review and decision. Thus, the Determination
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`should be vacated as incomplete in light of the Office's established procedures and the Examiner
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`should be required to review and give appropriate consideration to all the arguments and
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`evidence submitted by Patent Owner. Alternatively, the Office should find that for at least the
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`reasons outlined in Patent Owner's Request to Reopen, claims 1, 4, 6, 7, 9-15, 17, 20, 22, 23, 25-
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`31, 33, 35, 37, 38, 40, and 41 are patentable.
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`III. Conclusion
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`In view of the foregoing, the Examiner's Determination should be vacated and the
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`Examiner should be required to review and give appropriate consideration to all the arguments
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`and evidence submitted by Patent Owner. In the alternative, claims 1, 4, 6, 7, 9-15, 17, 20, 22,
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`23, 25-31, 33, 35, 37, 38, 40, and 41 should be found patentable for at least those reasons
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`described in Patent Owner's Request to Reopen.
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`-7-
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`MANGROVE 1017
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`Dated: March 11, 2015
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`Attorney Docket No. 11798.0005
`Control No. 95/001,792
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`Respectfully submitted,
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`PAUL HASTINGS LLP.
`
`By:
`
`/Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
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`-8-
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`MANGROVE 1017
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