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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––––––––––
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`THE MANGROVE PARTNERS MASTER FUND, LTD. and APPLE INC.,
`Petitioners,
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`v.
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`VIRNETX INC.,
`Patent Owner.
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`––––––––––––––––––
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`Case No. IPR2015-010461
`U.S. Patent No. 6,502,135
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`––––––––––––––––––
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`PETITIONERS’ IDENTIFICATION OF REPLY ARGUMENTS
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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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`IPR2015-01046
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`Petitioners’ Identification of Reply Arguments
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`The Board authorized Patent Owner to identify “sections of the [reply briefs]
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`believed by Patent Owner to be improper,” and authorized Petitioners to identify
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`where those sections “were previously presented” or how they are responsive to
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`Patent Owner’s Response. As explained below, no identified section is improper.
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`Position #1: Patent Owner argues that Petitioners, on page 10 of the Reply,
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`newly rely on “(b) ‘a request for connection to the server-side proxy,’” and “(c) ‘C-
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`HTTP requests’ to the server-side proxy” to fulfill the claimed “(DNS) request.”
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`Paper 55, 1-2. Petitioners’ position on what actions in Kiuchi constitute the
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`claimed “(DNS) request” was set forth on pages 20-21 and 27 of the Petition and
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`page 4 of the Reply. Page 10 of the Reply (the focus of Patent Owner’s “New
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`Position #1”) responds to Patent Owner’s assertion that Kiuchi’s client-side proxy
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`cannot be a “client computer” because it does not “generate[] requests,” Resp., 27;
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`see also Position #5, below (explaining support for Petitioners’ contention that
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`Kuichi's client-side proxy discloses a “client computer”).
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`Position #2: Patent Owner argues that Petitioners newly rely on Kiuchi’s
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`appendices to argue Kiuchi’s hostname corresponds to an institution’s server-side
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`proxy. Paper 55, 2. Dr. Guerin relied on the entirety of Kiuchi’s disclosure,
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`including appendices, to conclude that the client-side proxy, using the hostname of
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`the server-side proxy, requests and receives the server-side proxy’s IP address in
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`response to the C-HTTP name request. See, e.g., Ex. 1003, ¶32 (citing Ex. 1002,
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`1
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`IPR2015-01046
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`Petitioners’ Identification of Reply Arguments
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`70-71 (Appendix 1)). The Petition then relied on Dr. Guerin’s understanding of
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`this functionality to explain how Kiuchi anticipates the claims. See, e.g., Pet., 18-
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`29 (citing extensively to Ex. 1003). The sections of the Reply identified by Patent
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`Owner are also responsive to its contention (Resp., 22-23; Ex. 2043, ¶¶37-39) that
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`the hostname refers only to the origin server. See Reply, 6-8.
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`Position #3: Patent Owner argues that Petitioners newly rely on RFC 1945
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`(Ex. 1014) as defining HTTP/1.0 as used in Kiuchi. Paper 55, 2. Dr. Guerin
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`explicitly relied on RFC 1945 as defining HTTP/1.0 as used in Kiuchi. Ex. 1003,
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`¶19; Pet., 19 (citing same). Petitioners’ reliance on RFC 1945 to show the
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`meaning of “host” in the context of HTTP/1.0, Reply, 6-7, is also responsive to
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`Patent Owner’s argument equating a URL’s “host” with the entire URL, Resp., 22.
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`Position #4: Patent Owner argues that Petitioners newly rely on the
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`collective actions of the client-side proxy and C-HTTP name server for the claimed
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`“determining.” Paper 55, 2. The Petition explained that Kiuchi’s “C-HTTP name
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`server and client-side proxy each determine whether the user agent is requesting to
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`connect to a secure destination,” Pet., 28, and that the client-side proxy and C-
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`HTTP name server work together to determine whether “the server-side proxy is
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`registered in the closed network and is permitted to accept a connection from the
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`client-side proxy.” Pet., 22-23. The Petition also explained that in Kiuchi “the
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`function of the DNS proxy is distributed among the client-side proxy and the C-
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`2
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`IPR2015-01046
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`Petitioners’ Identification of Reply Arguments
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`HTTP name server.” Pet., 32.
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`Position #5: Patent Owner argues that Petitioners newly rely on Kiuchi’s
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`client-side proxy as the claimed “client computer.” Paper 55, 3. Dr. Guerin
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`explained that “the client-side proxy acts as a client computer in its communication
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`with the server-side proxy.” Ex. 1003, ¶19; Pet., 26-27 (citing same). In addition,
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`the Petition explained that client-side proxy “sends a request to a C-HTTP name
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`server asking to resolve the hostname in the request into an IP address.” Pet., 27.
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`Patent Owner also acknowledges that “Petitioners … rely[] in some instances …
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`on Kiuchi’s client-side proxy” for “the claimed ‘client computer,’” Resp., 24; see
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`also Resp., 24-27 (addressing Petitioner’s mapping of the client-side proxy to the
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`claimed “client computer”).
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`Petitioner Apple Inc.’s Separate Reply Filing: Patent Owner argues that
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`Petitioner Apple “goes beyond responding to Patent Owner’s Response” because
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`Patent Owner “did not suggest changes to the schedule.” Paper 55, 3. Patent
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`Owner did, however, urge the Board to “terminate this proceeding” regardless of a
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`§ 315(b) issue if it found a missing RPI. Resp., 56-57. Petitioner Apple explained
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`that, even if an RPI was mistakenly omitted, the Board should exercise its
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`discretion to maintain the current schedule of this proceeding due to Patent
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`Owner’s behavior in this and related proceedings before the Office. Paper 53.
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`For the foregoing reasons, Petitioners’ papers are proper.
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`3
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`IPR2015-01046
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`Petitioners’ Identification of Reply Arguments
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`Dated: May 19, 2016
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`Respectfully Submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`Attorney for Petitioner Apple
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`/Abraham Kasdan/
`Abraham Kasdan
`Reg. No. 32, 997
`Wiggin & Dana LLP
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`James T. Bailey
`Reg. No. 44,518
`The Law Office of James. T. Bailey
`Attorneys for Petitioner Mangrove
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`4
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`IPR2015-01046
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`Petitioners’ Identification of Reply Arguments
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 19th day of
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`May, 2016, I caused to be served a true and correct copy of the foregoing and any
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`accompanying exhibits by e-mail on the following counsel:
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`Joseph E. Palys
`josephpalys@paulhastings.com
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`Naveen Modi
`naveenmodi@paulhastings.com
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`Dated: May 19, 2016
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`Respectfully Submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`Attorney for Petitioner Apple
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`/Abraham Kasdan/
`Abraham Kasdan
`Reg. No. 32, 997
`Wiggin & Dana LLP
`
`James T. Bailey
`Reg. No. 44,518
`The Law Office of James. T. Bailey
`Attorneys for Petitioner Mangrove