NO:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD.
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`__________________
`
`Case IPR2015-_____
`Patent U.S. 6,502,135
`__________________
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES
`PATENT NO. 6,502,135 PURSUANT TO 35 U.S.C. §§ 311-319, 37 C.F.R. § 42
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`TABLE OF CONTENTS
`TABLE OF CONTENTS
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1).................................... 1
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) .................................. .. 1
`A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(B)(1) ..................... 1
`A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(B)(1) ................... .. 1
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(B)(2) .................................... 1
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(B)(2) .................................. .. 1
`C. LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3)............ 2
`C. LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3) .......... .. 2
`II. PAYMENT OF FEES – 37 C.F.R. § 42.103................................................................. 3
`II. PAYMENT OF FEES — 37 C.F.R. § 42.103 ............................................................... .. 3
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104................................. 3
`III.
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 ............................... .. 3
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A)....................... 3
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ..................... .. 3
`B.
`IDENTIFICATION OF CLAIMS BEING CHALLENGED (37 C.F.R. §
`B.
`IDENTIFICATION OF CLAIMS BEING CHALLENGED (37 C.F.R. §
`42.104(B))..................................................................................................................................... 3
`42.104(B)) ................................................................................................................................... .. 3
`Summary of the ‘135 Patent ........................................................................................... 5
`IV.
`IV.
`Summary of the ‘135 Patent ......................................................................................... .. 5
`A. BRIEF DESCRIPTION ................................................................................................... 5
`A. BRIEF DESCRIPTION ................................................................................................. .. 5
`B.
`‘135 PATENT CLAIM CONSTRUCTION UNDER 37 C.F.R. §§
`B.
`‘135 PATENT CLAIM CONSTRUCTION UNDER 37 C.F.R. §§
`42.104(B)(3)................................................................................................................................. 6
`42.104(B)(3) ............................................................................................................................... .. 6
`1. Virtual Private Network (VPN) (Claims 1 and 10)............................................. 7
`1. Virtual Private Network (VPN) (Claims 1 and 10) ........................................... .. 7
`2. Domain Name (Claim 10)........................................................................................ 13
`2. Domain Name (Claim 10) ...................................................................................... .. 13
`3. DNS Request (Claim 1) ............................................................................................ 14
`3. DNS Request (Claim 1) .......................................................................................... .. 14
`4. DNS Proxy Server (Claims 10, 8) ......................................................................... 14
`4. DNS Proxy Server (Claims 10, 8) ....................................................................... .. 14
`5. Client computer (Claims 1 and 10) ....................................................................... 15
`5. Client computer (Claims 1 and 10) ..................................................................... .. 15
`6. Automatically (Claim 1)........................................................................................... 17
`6. Automatically (Claim 1) ......................................................................................... .. 17
`V. MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`V MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`VV-HICH AN IPR IS REQUESTED, THUS ESTABLISHING A REASONABLE
`WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE ‘135 PATENT IS
`LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE ‘ 135 PATENT IS
`UNPATENTABLE ..................................................................................................................... 18
`UNPATENTABLE ................................................................................................................... .. 18
`A.
`[GROUND 1] – CLAIMS 1, 3, 4, 7, 8, 10, AND 12 ARE ANTICIPATED
`A.
`[GROUND 1] — CLAIMS 1, 3, 4, 7, 8, 10, AND 12 ARE ANTICIPATED
`BY KIUCHI (EX. 1002) ....................................................................................................... 18
`BY KIUCHI (EX. 1002) ..................................................................................................... .. 18
`1. Kiuchi Anticipates Independent Claim 1 ............................................................ 26
`1. Kiuchi Anticipates Independent Claim 1 .......................................................... .. 26
`2. Kiuchi Anticipates Claim 3...................................................................................... 29
`2. Kiuchi Anticipates Claim 3 .................................................................................... .. 29
`3. Kiuchi Anticipates Claim 4...................................................................................... 30
`3. Kiuchi Anticipates Claim 4 .................................................................................... .. 30
`4. Kiuchi Anticipates Claim 7...................................................................................... 31
`4. Kiuchi Anticipates Claim 7 .................................................................................... .. 31
`5. Kiuchi Anticipates Claim 8...................................................................................... 32
`5. Kiuchi Anticipates Claim 8 .................................................................................... .. 32
`6. Kiuchi Anticipates Independent Claim 10.......................................................... 33
`6. Kiuchi Anticipates Independent Claim 10 ........................................................ .. 33
`7. Kiuchi Anticipates Claim 12................................................................................... 35
`7. Kiuchi Anticipates Claim 12 ................................................................................. .. 35
`B.
`[GROUND 2] – KIUCHI IN VIEW OF RFC 1034 RENDERS CLAIM 8
`[GROUND 2] — KIUCHI IN VIEW OF RFC 1034 RENDERS CLAIM 8
`B.
`OBVIOUS.................................................................................................................................. 35
`OBVIOUS ................................................................................................................................ .. 35
`VI. CONCLUSION................................................................................................................ 38
`VI.
`CONCLUSION .............................................................................................................. .. 38
`
`i
`
`

`
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`Ex. 1018
`
`Ex. 1019
`
`Ex. 1020
`
`Ex. 1021
`
`EXHIBITS
`
`U.S. Patent No. 6,502,135 to Munger et al. (the "'135 Patent")
`Takahiro Kiuchi and Shigekoto Kaihara, "C-HTTP - The
`Development of a Secure, Closed HTTP-based Network on the
`Internet," published by IEEE in the Proceedings of SNDSS 1996
`("Kiuchi")
`Declaration of Dr. Roch Guerin
`(Reserved)
`Mockapetris, P., RFC 1034, "Domain Names–Concepts and
`Facilities," Nov. 1997
`(Reserved)
`Patent Owner's Preliminary Response, Paper 7, in IPR2014-00610
`Excerpts from Webster’s Third New International Dictionary
`(1971)
`VirnetX's Reply Claim Construction Brief in VirnetX Inc. v. Cisco
`Systems, Inc. et al., 6:10-cv-417 (Dec. 19, 2011) (E.D. Tex.)
`Bradner, S., RFC 2026, “The Internet Standards Process –
`Revision 3,” Oct. 1996
`Decision to Institute Inter Partes Review, Paper 9, in IPR2014-
`00610 (Oct. 15, 2014)
`(Reserved)
`(Reserved)
`Berners-Lee et al., RFC 1945, "Hypertext Transfer Protocol --
`HTTP/1.0," May 1996
`Patent Owner's Preliminary Response, Paper 10, in IPR2013-
`00348
`Eastlake, D., RFC 2535, "Domain Name System Security
`Extensions," Mar. 1999
`Patent Owner’s Comments in Response to Examiner’s
`Determination in Inter Partes Reexamination 95/001,792 (March,
`11, 2015)
`VirnetX's Opening Claim Construction Brief in VirnetX Inc. v.
`Cisco Systems, Inc. et al., 6:10-cv-417 (Dec. 19, 2011) (E.D. Tex.)
`Memorandum Opinion and Order in VirnetX Inc. v. Cisco Systems,
`Inc. et al., 6:10-cv-417 (April 25, 2012) (E.D. Tex.)
`Petition for Inter Partes Review in IPR2013-00349
`Patent Owner's Preliminary Response, Paper 11, in IPR2014-
`00558
`
`ii
`
`

`
`Decision to Institute Inter Partes Review, Paper 15, in IPR2014-
`Decision to Institute Inter Partes Review, Paper 15, in IPR2014-
`Ex. 1022
`00237
`Ex. 1022
`00237
`"Glossary for the Linux FreeS/WAN project," (Feb. 21, 2002)
`Ex. 1023
`"Glossary for the Linux FreeS/WAN project," Feb. 21, 2002
`Ex. 1023
`(Reserved)
`Ex. 1024
` Ex. 1024
`Ex. 1025
`Declaration of Dr. Roch Guerin in IPR2014-00401
`Ex. 1025
`Declaration of Dr. Roch Guerin in IPR2014-00401
`
`iii
`iii
`
`

`
`The Mangrove Partners Master Fund, Ltd. (“Petitioner” or “Mangrove”)
`
`petitions for Inter Partes Review (“IPR”) under 35 U.S.C. §§ 311–319 and 37
`
`C.F.R. § 42 of claims 1, 3, 4, 7, 8, 10, and 12 (“the Challenged Claims”) of U.S.
`
`Patent No. 6,502,135 (“the ‘135 Patent”). As explained in this petition, there exists
`
`a reasonable likelihood that Mangrove will prevail with respect to at least one of
`
`the Challenged Claims.
`
`The Challenged Claims are unpatentable based on teachings set forth in at
`
`least the references presented in this petition. Mangrove respectfully submits that
`
`an IPR should be instituted, and that the Challenged Claims should be canceled as
`
`unpatentable.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(A)(1)
`A. REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(B)(1)
`Petitioner, The Mangrove Partners Master Fund, Ltd., is the real party-in-
`
`interest.
`
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(B)(2)
`The ’135 Patent is the subject of a number of civil actions including: (i) Civ.
`
`Act. No. 6:13-cv-00211-LED (E.D. Tex.), filed February 26, 2013; (ii) Civ. Act.
`
`No. 6:12-cv-00855-LED (E.D. Tex.), filed November 6, 2012; and (iii) Civ. Act.
`
`No. 6:10-cv-00417-LED (E.D. Tex.), filed August 11, 2010.
`
`The ’135 Patent was the subject of petitions for inter partes review filed by
`
`RPX Corporation (IPR2014-00171 and IPR2014-00172), Apple, Inc. (IPR2013-
`
`

`
`00348 and IPR2013-00349), and a petition filed by Microsoft (IPR2014-00558),
`
`which were each found untimely by the PTAB and not instituted. Additionally, the
`
`‘135 Patent was the subject of a petition for inter partes review filed by New Bay
`
`Capital, LLC (IPR2013-00375), which was abandoned by petitioner prior to a
`
`decision to institute. The ’135 Patent is also the subject of inter partes
`
`reexamination nos. 95/001,679 and 95/001,682. In the formerly merged
`
`proceedings, the Office issued a Non-Final Action rejecting all 18 claims of the
`
`’135 Patent, including rejections based on, inter alia, Kiuchi (Ex. 1002), which is
`
`one of the prior art references presented herein.1 The ’135 Patent also was subject
`
`to reexamination no. 95/001,269, which concluded on June 7, 2011 – after the
`
`petitioner in that proceeding (Microsoft) ceased participating -- with an inter partes
`
`reexamination certificate confirming all of the claims subject to the reexamination
`
`and adding new claim 18.
`
`C. LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3)
`Mangrove provides the following designation of counsel.
`
`.LEAD COUNSEL
`
`BACKUP COUNSEL
`
`Abraham Kasdan, Reg. No. 32,997
`
`James T. Bailey, Reg. No. 44,518
`
`
`1 In subsequent Office Actions in the severed proceedings relating to 95/001,679 ,
`
`the re-examination of claims 10-12 was terminated based on pre-AIA 35 U.S.C.
`
`317(b), with the remaining rejections of claims 1-9 and 13-18 maintained.
`
`2
`
`

`
`Wiggin and Dana LLP
`450 Lexington Avenue
`New York, NY 10017
`T: 212-551-2841
`Email: akasdan@wiggin.com
`
`D. Service Information
`
`504 W. 136th St. #1B
`New York, NY 10031
`T: 917-626-1356
`Email: jtb@jtbaileylaw.com
`
`Please address all correspondence and service to counsel at the address
`
`provided in Section I(C). Mangrove also consents to electronic service by email at
`
`IP@wiggin.com.
`
`II. PAYMENT OF FEES – 37 C.F.R. § 42.103
`Mangrove authorizes the Patent and Trademark Office to charge Deposit
`
`Account No. 23-1665 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and
`
`further authorizes payment for any additional fees to be charged to this Deposit
`
`Account.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A)
`Mangrove certifies that the ‘135 Patent is eligible for IPR. Mangrove is not
`
`barred or estopped from requesting this review challenging the Challenged Claims
`
`on the below-identified grounds.
`
`B.
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED (37
`C.F.R. § 42.104(B))
`
`Petitioner requests an IPR of the Challenged Claims on the grounds set forth
`
`in the table shown below, and requests that each of the Challenged Claims be
`
`3
`
`

`
`found unpatentable. An explanation of how these claims are unpatentable under the
`
`statutory grounds identified below is provided in the form of a detailed description
`
`that indicates where each element can be found in the cited prior art, and the
`
`relevance of that prior art. Additional explanation and support for each ground of
`
`rejection is set forth in Exhibit 1003, the Declaration of Dr. Roch Guerin (“Guerin
`
`Declaration”), referenced throughout this Petition.
`
`Claims 1, 3, 4, 7, 8, 10, and 12 of the ’135 Patent are unpatentable as being
`
`anticipated under 35 U.S.C. § 102 (b), and/or for being obvious over the prior art
`
`under 35 U.S.C. § 103. Specifically:
`
`Ground
`
`Ground 1
`
`‘135 Patent
`Claims
`1, 3, 4,7, 8, 10,
`and 12
`
`Ground 2
`
`8
`
`Basis for Rejection
`
`Anticipated under § 102(b) by
`Takahiro Kiuchi and Shigekoto
`Kaihara, “C-HTTP - The Development
`of a Secure, Closed HTTP-based
`Network on the Internet,” the
`Proceedings of SNDSS 1996
`(“Kiuchi”) (Ex. 1002)
`
`Obvious under § 103 based upon
`Kiuchi (Ex. 1002) in view of RFC
`1034 (Ex. 1005)
`
`Kiuchi qualifies as prior art under 35 U.S.C § 102(b). Specifically, Kiuchi
`
`(Ex. 1002) is a printed publication that was presented at the 1996 Symposium on
`
`Network and Distributed Systems Security (SNDSS) on February 22 & 23, 1996,
`
`and published by IEEE in the Proceedings of SNDSS 1996.
`
`4
`
`

`
`RFC 1034 likewise qualifies as prior art under 35 U.S.C § 102(b).
`
`Specifically, RFC 1034 (Ex. 1005) was published in November 1987 by the
`
`Internet Engineering Task Force (IETF). RFC 1034 was publically distributed no
`
`later than November 1987. Ex. 1005.
`
`Petitioner’s proposed construction of the contested claims, the evidence
`
`relied upon, and the precise reasons why the claims are unpatentable are provided
`
`in §§ IV and V, below.
`
`IV. SUMMARY OF THE ‘135 PATENT
`A. BRIEF DESCRIPTION
`
`The ‘135 Patent generally addresses secure communications over the
`
`Internet. As acknowledged in the ‘135 Patent, “[a] tremendous variety of methods
`
`have been proposed and implemented to provide security and anonymity for
`
`communications over the Internet.” Ex. 1001 at 1:16-18. The majority of the ‘135
`
`specification is dedicated to describing one particular way of providing secure and
`
`anonymous communications using an allegedly inventive protocol called the
`
`“Tunneled Agile Routing Protocol (TARP).” See, e.g., id. at 2:65-5:64. The
`
`challenged claims of the ‘135 Patent, however, are not limited to TARP and
`
`instead all address one of five alleged “improvements” added by CIP application
`
`serial number 09/504,783 filed on February 15, 2000. See id. at 5:65-6:10.
`
`The claims of the ‘135 Patent are directed to a system and method for
`
`5
`
`

`
`securely communicating over the Internet. See Ex. 1001 at 2:66. More specifically,
`
`the claims all address “a DNS proxy server that transparently creates a virtual
`
`private network in response to a domain name inquiry.” Id. at 6:1-3.
`
`Claim 1 of the ‘135 Patent is reproduced below:
`
`A method of transparently creating a virtual private network (VPN) between
`a client computer and a target computer, comprising the steps of:
`
`(1) generating from the client computer a Domain Name Service (DNS)
`request that requests an IP address corresponding to a domain name
`associated with the target computer;
`
`(2) determining whether the DNS request transmitted in step (1) is
`requesting access to a secure web site; and
`
`(3) in response to determining that the DNS request in step (2) is requesting
`access to a secure target web site, automatically initiating the VPN between
`the client computer and the target computer.
`
`B.
`
`‘135 PATENT CLAIM CONSTRUCTION UNDER 37 C.F.R. §§
`42.104(B)(3)
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see
`
`also Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`Under the broadest reasonable standard, claim terms are given their ordinary and
`
`customary meaning as would be understood by one of ordinary skill in the art in
`
`the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`6
`
`

`
`1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in
`
`the specification with reasonable clarity, deliberateness, and precision. In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In this regard, however, care must
`
`be taken not to read a particular embodiment appearing in the written description
`
`into the claim if the claim language is broader than the embodiment. In re Van
`
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`Petitioner submits constructions for the following terms. All remaining
`
`terms should be given their plain meaning.
`
`1. VIRTUAL PRIVATE NETWORK (VPN) (CLAIMS 1 AND 10)
`Petitioner submits that the broadest reasonable interpretation of “virtual
`
`private network” or “VPN” should be broad enough to encompass “a secure
`
`network that includes portions of a public network.”
`
`Petitioner’s proposed interpretation was previously adopted by the PTAB in
`
`IPR2014-00237 regarding related U.S. Patent No. 8,504,697. Ex. 1022, pp. 11-12
`
`(Decision to Institute Inter Partes Review, Paper No. 15). This interpretation is
`
`consistent with both the specification and the common meaning of “VPN” for the
`
`reasons addressed therein. Id.
`
`In prior IPR proceedings regarding the ‘135 Patent, Patent Owner has
`
`proposed an interpretation of “VPN” that differs in two main respects; namely, that
`
`it requires (i) encryption, and (ii) computers in the VPN to directly communicate
`
`7
`
`

`
`with each other. Ex.1015, p. 22. Both positions are inconsistent with the broadest
`
`reasonable interpretation of “VPN.”
`
`A VPN does not require encryption:
`
`The ’135 Patent does not explicitly define the term “VPN.” See Ex. 1003, ¶
`
`17. However, the ’135 Patent explains that one can provide data security using “IP
`
`hopping” schemes, rather than solely by using encryption. As it states, “Data
`
`security is usually tackled using some form of data encryption.” Ex. 1001 at 1:38-
`
`39 (emphasis added). The ’135 Patent also illustrates use of a quasi-random IP
`
`hopping scheme to implement a VPN. See, e.g., id. at 23:10-14 (“In a second mode
`
`referred to as ‘promiscuous per VPN’ mode, a small set of fixed hardware
`
`addresses are used, with a fixed source/destination hardware address used for all
`
`nodes communicating over a virtual private network.” (Emphasis added)).
`
`Moreover, claims 6 and 11, which depend on independent claims 1 and 10
`
`respectively, rely on this particular embodiment. For example, claim 6 specifies
`
`that step 3 of claim 1 “comprises the step of establishing the VPN by creating an
`
`IP address hopping scheme between the client computer and the target computer.”
`
`Id. at 47:53-55 (emphasis added). Similarly, claim 11 requires that “the gateway
`
`computer creates the VPN by establishing an IP address hopping regime that is
`
`used to pseudorandomly change IP address in packets transmitted between the
`
`client computer and the secure target computer.” Id. at 48:20-24 (emphasis
`
`8
`
`

`
`added); see also id. at 2:25-36 (explaining use of anonymity techniques).
`
`Accordingly, the specification envisions VPNs that do not require encryption.
`
`To support its contention that a VPN requires encryption, Patent Owner has
`
`in prior proceedings pointed to the term “FreeS/WAN” in one passage of the ’135
`
`Patent. Ex. 1015, p. 23 (citing Ex. 1001 at 37:50-62). That passage, however, does
`
`not define what a VPN is, but simply explains that RFC 2535 (the “FreeS/WAN”
`
`protocol) can be used to implement one type of a VPN. See id. Notably, Patent
`
`Owner does not cite to any passage of RFC 2535 (Ex. 1016) – the publication
`
`actually cited in the ’135 Patent – to support its assertions. This is because RFC
`
`2535 does not even mention the terms “encryption” or “VPN,” much less state that
`
`a VPN must use encryption.
`
`In the same IPR proceedings, Patent Owner also relied upon a “glossary”
`
`related to “FreeS/WAN” that was purportedly cited in the prosecution history of
`
`the ‘135 patent. Ex. 1015, p. 23. That glossary, which is internally dated February
`
`21, 2002 (two years after the filing of the CIP application that matured as the ‘135
`
`patent), states that a VPN is “a network that can safely be used as if it were private,
`
`even though some of its communication uses insecure connections. All traffic on
`
`those connections is encrypted.” Ex. 1023, p. 24. This later-created document
`
`further describing what is called out in the specification as “[o]ne implementation”
`
`of “[o]ne conventional scheme” for creating a VPN, Ex. 1001 at 37:50-62, falls far
`
`9
`
`

`
`short of a definition of VPN and should not be read into the claims. Notably,
`
`however, the glossary’s definition by its use of “those connections” only envisions
`
`the use of encryption over “insecure connections.” Ex. 1023, p. 24. In other words,
`
`encrypting while on the public network. Id. As described in further detail in §V.A
`
`below, this is exactly what Kiuchi does – uses encryption on the public network
`
`connecting the client-side and server-side proxies with the rest of the
`
`communication paths made secure by the use of firewalls.
`
`Patent Owner has also pointed to the constructions adopted by certain
`
`District Courts that a VPN requires encryption. Ex. 1015, pp. 23-24. These
`
`constructions, however, are not the broadest reasonable interpretation, but reflect
`
`the meaning of the term as used in district court litigation; it is not controlling in
`
`this proceeding. In re Trans Texas Holdings Corp., 498 F.3d 1290, 1298-99 (Fed.
`
`Cir. 2007);
`
`Finally, the Patent Owner has contended that Petitioner’s expert, Dr. Roch
`
`Guerin, has in other IPRs regarding related patents “supported” interpretations of
`
`VPN requiring encryption and has “identif[ied] passages [in the specification] that
`
`support defining a VPN to require encryption.” Ex. 1021, p. 32. However, Dr.
`
`Guerin did not provide an opinion regarding the broadest reasonable interpretation
`
`of VPN. Instead, he offered an opinion that the broadest reasonable interpretation
`
`of VPN would be “broad enough” to cover a proposed interpretation that included
`
`10
`
`

`
`“encrypting traffic on insecure communication paths” because that interpretation
`
`was “not inconsistent” with the specification of the related patent at issue. Ex.
`
`1025, ¶ 19. Dr. Guerin also noted that the ‘180 patent at issue in that proceeding
`
`described a VPN as including “a secure communication link” and that “some of the
`
`VPNs” described in that patent “rely upon encryption” to achieve that security. Id.
`
`at ¶¶ 19-20. Dr. Guerin’s prior opinions do not support reading a requirement of
`
`encryption into the term VPN.
`
`The broadest reasonable construction of “VPN” thus does not require
`
`encryption, but can establish a “private network” using either encryption or other
`
`methods, such as IP hopping, or both.
`
`A VPN does not require computers to directly communicate with each other:
`
`Patent Owner has also contended in prior proceedings that a “VPN” requires
`
`computers in a VPN to “directly communicate with each other.” See e.g., Ex. 1009,
`
`pp. 1-3 (emphasis added). But in the August 2010 litigation, the Court found that
`
`Patent Owner had disclaimed VPNs that do not involve “direct communications”
`
`between the involved computers. Ex. 1019, pp. 6-9. The Court relied on Patent
`
`Owner’s statements to the Office during the ’269 reexamination proceeding
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`involving the ’135 Patent to make this determination; specifically, that the claims
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`of the ’135 Patent were not anticipated by the prior art “Aventail” because
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`“computers connected according to Aventail do not communicate directly with
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`each other.” Id (Emphasis added). The Court also observed that “…routers,
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`firewalls, and similar servers that participate in typical network communication do
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`not impede ‘direct’ communication between a client and target computer.” Ex.
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`1019, p. 8, n. 2. The Court’s finding that Patent Owner disclaimed a portion of the
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`literal scope of the ’135 Patent claims (i.e., that covering VPNs in which
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`computers do not “directly” communicate) means that the ’135 claims in their
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`broadest reasonable construction must still encompass this subject matter. Patent
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`Owner’s prosecution disclaimer is effective in a district court proceeding but not
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`here. E.g., M.P.E.P. § 2111; id. at § 2111.01(I) (“Although claims of issued patents
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`are interpreted in light of the specification, prosecution history, prior art and other
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`claims, this is not the mode of claim interpretation to be applied during
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`examination.”).
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`Finally, in the context of IPR proceedings IPR 2014-00237 and -00238
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`concerning related U.S. Patent No. 8,504,697, the Board has in the past construed
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`the term “virtual private network” to mean “a ‘secure communication link’ with
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`the additional requirement that the link includes a portion of a public network.”
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`Again, there is no requirement that a VPN include encryption or direct
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`communication.
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`For all these reasons, the broadest reasonable construction of “VPN”
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`therefore encompasses “a secure network that includes portions of a public
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`network.”
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`2. DOMAIN NAME (CLAIM 10)
`The Patent Owner has asserted to the PTAB in proceedings regarding U.S.
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`Patent No. 7,490,151, a divisional of the ‘135 Patent having a common
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`specification, that a “domain name” means “a name corresponding to a network
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`address.” Ex. 1007, p. 21.
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`In view of the Patent Owner’s own assertions, it is reasonable, for purposes
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`of this proceeding in which the broadest reasonable interpretation standard applies,
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`to consider the term “domain name” as encompassing “a name corresponding to a
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`network address.” This is consistent with its plain and ordinary meaning and usage
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`in the ‘135 Patent. Ex. 1001 at 37:22-39.
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`In the earlier proceedings, Patent Owner has urged that no interpretation of
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`this term is needed, because it did not appear alone in the claims of that patent, but
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`rather only as part of a larger phrase. Ex. 1007, p. 21. That is not the case here. In
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`the ‘135 Patent, “domain name” is used as a free-standing term in the claims. Ex.
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`1001 at 48:7. In addition, the term “domain name” informs the meaning of other
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`claim terms such as “Domain Name Service (DNS) request” (claim 1) and “DNS
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`proxy server” (claim 8 and 10).
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`Accordingly the term “domain name” should be interpreted and it should be
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`interpreted to encompass “a name corresponding to a network address.”
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`3. DNS REQUEST (CLAIM 1)
`The Patent Owner has asserted to the PTAB in proceedings regarding U.S.
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`Patent No. 7,490,151, a divisional of the ‘135 Patent having a common
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`specification, that a “DNS request” means “a request for a resource corresponding
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`to a domain name.” Ex. 1007, p. 22. In IPR2014-00610 the PTAB agreed with and
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`adopted this interpretation. Ex. 1011, p. 6.
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`Petitioner generally agrees with this interpretation, but believes that the
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`agreed understanding of “domain name” should be incorporated into the
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`interpretation of “DNS request,” which should then be interpreted to mean “a
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`request for a resource corresponding to a network address.”
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`4. DNS PROXY SERVER (CLAIMS 10, 8)
`Patent Owner has in prior proceedings regarding the ‘135 Patent asserted
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`that a “DNS proxy server” is “a computer or program that responds to a domain
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`name inquiry in place of a DNS.” See Ex. 1018, pp. 16-17 (Plaintiff’s Opening
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`Claim Construction Brief in case no. 6:10-cv-417 (E.D. Tex.)); Ex. 1015, pp. 32-33
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`(IPR2013-00348, Paper No. 10).
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`This is consistent with the embodiments disclosed in the specification of the
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`‘135 Patent. See Ex. 1001 at 38:23-47. Accordingly, for the purposes of this
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`Petition, Mangrove adopts this construction.
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`Petitioner notes that Patent Owner has admitted that – and the above
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`construction allows for the fact that –the claimed DNS proxy server can be
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`distributed among different computers or processes, under the broadest reasonable
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`interpretation. See Ex. 1015, pp. 32-33.
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`5. CLIENT COMPUTER (CLAIMS 1 AND 10)
`In a prior IPR proceeding (IPR2014-00558) involving the ‘135 Patent,
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`Patent Owner argued that the term “client computer” should be interpreted to mean
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`“user’s computer.” Ex. 1021, pp. 37-39 (IPR2014-00558, Paper 11). Patent
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`Owner’s proposed interpretation does not reflect the broadest reasonable
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`interpretation of the term and should be rejected.
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`Patent Owner’s proposed construction transparently attempts to rewrite the
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`claim term to substitute “user’s” for “client.” This approach to claim construction,
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`in which limitations from preferred embodiments that are not present in the claims
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`are “read in” to the claims, has been rejected multiple times by the Patent Office
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`under the broadest reasonable interpretation standard. For example, in IPR2014-
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`00610 regarding a divisional of the ‘135 Patent (U.S. Patent No. 7,490,151) the
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`PTAB rejected Patent Owner’s attempt to give the term “client” the identical
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`interpretation Patent Owner has offered in the ‘135 Patent for “client computer.”
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`Ex. 1011, pp. 7-8. Instead, the PTAB found that the broadest reasonable
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`interpretation of the term “client” in light of the same specification was “a device,
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`computer, system, or program from which a data request to a server is generated.”
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`Petitioner agrees with this interpretation and proposes that the same reasoning
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`should be applied here. As such, the term “client computer” should be interpreted
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`to mean “a computer from which a data request to a server is generated.”
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`As used in ordinary technical usage and in the ‘135 Patent, a “client
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`computer” refers to the computer from which a data request to a server is
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`originated. See Ex. 1001(‘135 Patent at 1:49-55 (“Proxy servers prevent
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`destination servers from determining the identities of the originating clients. This
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`system employs an intermediate server interposed between client and destination
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`server. The destination server sees only the Internet Protocol (IP) address of the
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`proxy server and not the originating client.”). There is no requirement anywhere in
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`the intrinsic record that a client computer be a “user computer,” as Patent Owner
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`asserts.
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`Finally, Petitioner’s proposed interpretation is also consistent with the
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`Office’s interpretation of the term “client computer” in another patent in