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`Paper No.
`Filed: December 20, 2019
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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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`
`
`
`
`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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`
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`Patent Owner’s Opposition 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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`C.
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`The Federal Circuit’s Decision ........................................................................ 1
` Claim Construction .......................................................................................... 2
`A.
`The Phillips Claim Construction Standard Applies on Remand .......... 2
`B.
`“Client Computer” ................................................................................. 3
`C.
`“Virtual Private Network (VPN)” .......................................................12
` Kiuchi Does Not Anticipate Claims 1, 3, 4, 7, 8, 10, and 12 ........................13
`A. Kiuchi Discloses Relay-Based Communications ................................14
`B.
`Petitioners’ “User Agent to Origin Server” Mapping Is
`Deficient ..............................................................................................15
`Petitioners’ “Client-Side Proxy to Server-Side Proxy” Mapping
`Is Deficient ..........................................................................................21
`1.
`Petitioners’ “Client-Side Proxy to Server-Side Proxy”
`Mapping Fails Under VirnetX’s Construction for “Client
`Computer” .................................................................................22
`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 ..............................28
` The Board Should Draw an Adverse Inference Regarding the RPI or
`Privity Relationship Between Mangrove and RPX, and Terminate the
`Proceeding .....................................................................................................29
` A New Panel Should Consider this Remand Proceeding To Avoid
`Constitutional Concerns ................................................................................31
` The Proceedings Should Be Terminated in View of 35 U.S.C.
`§ 315(b) ..........................................................................................................32
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`2.
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` Conclusion .....................................................................................................33
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`Case No. IPR2015-01046
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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
`Alexander v. FBI,
`186 F.R.D. 113 (D.D.C. 1998) ........................................................................... 29
`Applications in Internet Time, LLC v. RPX Corp.,
`897 F.3d 1336 (Fed. Cir. 2018) .......................................................................... 31
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019) .................................................................... 31, 32
`In re CSB-Sys. Int’l, Inc.,
`832 F.3d 1335 (Fed. Cir. 2016) ............................................................................ 3
`Google Inc. v. Intellectual Ventures II LLC,
`IPR2014-00787, Paper 68 (P.T.A.B. Oct. 18, 2018) ............................................ 3
`Nat. Alternatives Int’l, Inc. v. Iancu,
`904 F.3d 1375 (Fed. Cir. 2018) ............................................................................ 2
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................................................ 3, 4
`Sipnet EU S.R.O. v. Straight Path IP Grp., Inc.,
`IPR2013-00246, Paper 73 (P.T.A.B. May 23, 2016) ........................................... 3
`U.S. v. $671,160.00 in U.S. Currency,
`730 F.3d 1051 (9th Cir. 2013) ............................................................................ 30
`VirnetX Inc. v. Cisco Systems Inc.,
`767 F.3d 1308 (Fed. Cir. 2014) ...................................................................passim
`VirnetX Inc. v. Mangrove Partners Master Fund, Ltd.,
`778 F. App’x 897 (Fed. Cir. 2019) ..............................................................passim
`Statutes
`35 U.S.C. § 315(b) ......................................................................................... 2, 31, 32
`35 U.S.C. § 315(c) ..................................................................................................... 2
`iii
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`Case No. IPR2015-01046
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`Introduction
`Patent Owner VirnetX Inc. (“VirnetX”) respectfully submits that Petitioners
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`have failed to meet their burden to show that the challenged claims of U.S. Patent
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`No. 6,502,135 (“the ’135 patent”) are unpatentable. Petitioners’ arguments are
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`foreclosed by the Federal Circuit’s decision in VirnetX Inc. v. Mangrove Partners
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`Master Fund, Ltd., 778 F. App’x 897 (Fed. Cir. 2019), and the record evidence in
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`this proceeding. In fact, the Federal Circuit rejected identical arguments—
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`addressing the same patent and prior art—in VirnetX Inc. v. Cisco Systems Inc., 767
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`F.3d 1308, 1323-24 (Fed. Cir. 2014).
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` The Federal Circuit’s Decision
`The Federal Circuit vacated the Board’s claim constructions, imposed its own
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`construction of the term “VPN,” and directed the Board to construe the term “client
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`computer.” VirnetX, 778 F. App’x at 991. Invoking VirnetX’s disclaimer, it held
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`that the phrase “‘VPN between the client computer and the target computer’ requires
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`direct communication between the client and target computers.” Id. at 909-10
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`(emphasis added). The Federal Circuit also “agree[d] with VirnetX that the Board
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`. .. fail[ed] to resolve the claim construction dispute as to the meaning of ‘client
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`[computer].’” The Board had “latch[ed] onto . . . out-of-context language” in finding
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`that Kiuchi’s client-side proxy could be the claimed “client computer,” just because
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`it was “associated with a user, however indirectly.” Id. at 908, 909.
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`Case No. IPR2015-01046
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`Because those errors were dispositive of the Board’s anticipation and
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`obviousness findings, the Federal Circuit vacated those findings and remanded to
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`the Board. Id. at 910-11.
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`VirnetX also argued that Apple Inc.’s (“Apple’s”) joinder to these
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`proceedings violates 35 U.S.C. § 315(b)-(c). The Court declined to address that
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`argument, finding VirnetX had not shown prejudice from Apple’s joinder, but “le[ft]
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`open the question of whether prejudice could arise” on remand. VirnetX, 778 F.
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`App’x at 901-02. The Federal Circuit also held that the Board erred in denying
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`VirnetX leave to file a motion seeking additional discovery into the relationship
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`between Mangrove Partners Master Fund, Ltd. (“Mangrove”) and RPX Corporation
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`(“RPX”). Id. at 904.
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` Claim Construction
`A. The Phillips Claim Construction Standard Applies on Remand
`Because the ’135 patent expired on October 29, 2019,2 the Board should apply
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`2 Petitioners incorrectly state that the ’135 patent expires in February 2020. See
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`Petitioners’ Remand Brief, Paper 95 (“PRB”) at 8 n.5. The correct expiration date
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`is October 29, 2019 because the ’135 patent is a continuation-in-part of an
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`application filed on October 29, 1999 and has no patent term adjustment. See Nat.
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`Alternatives Int’l, Inc. v. Iancu, 904 F.3d 1375, 1383 (Fed. Cir. 2018); see also
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`2
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`the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
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`Case No. IPR2015-01046
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`banc), when construing the patent claims at issue on remand. See, e.g., In re CSB-
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`Sys. Int’l, Inc., 832 F.3d 1335, 1342 (Fed. Cir. 2016) (“once a patent expires, the
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`PTO should apply the Phillips standard for claim construction”); Sipnet EU S.R.O.
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`v. Straight Path IP Grp., Inc., IPR2013-00246, Paper 73 at 5 (P.T.A.B. May 23,
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`2016) (construing, on remand, “expired patent claims according to the standard
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`applied by the district courts,” and “apply[ing] the principles set forth in Phillips”)
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`(citing In re Rambus, 694 F.3d 42, 46 (Fed. Cir. 2012)); Google Inc. v. Intellectual
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`Ventures II LLC, IPR2014-00787, Paper 68 at 3 (P.T.A.B. Oct. 18, 2018) (same).
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`“Client Computer”
`B.
`Under either Phillips or BRI, the correct construction of “client computer” is
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`a “user’s computer.” (PO Response at 15-17.) The claims recite “initiating the VPN
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`between the client computer and the target computer.” (See, e.g., Ex. 1001 at claim
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`1.) One of ordinary skill in the art would read “client computer” in the claims in
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`view of the specification—the “single best guide to the meaning of a disputed term,”
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`MPEP § 2701 (“A patent granted on a continuation, divisional, or continuation-in-
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`part application that was filed on or after June 8, 1995, will have a term which ends
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`twenty years from the filing date of earliest application for which a benefit is claimed
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`… .”) (emphasis added).
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`Phillips, 415 F.3d at 1315. (Ex. 2043 at ¶ 28.) The specification explains that the
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`claimed inventions allow for secure communications between a user’s computer and
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`a target computer. (See, e.g., Ex. 2043 at ¶ 29.) Thus, the “Background of the
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`Invention” describes the importance of securing communications between an
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`originating terminal 100 where a user is located and a destination terminal 110 that
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`hosts a web site. (Ex. 1001 at 1:15-31.) The “Summary of the Invention” offers an
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`example where the originating terminal is a laptop computer used by an executive
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`and that a destination terminal is a server. (See id. at 4:59-5:12.) The “Detailed
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`Description of the Invention” explains that a VPN is created between a user’s
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`computer running a web browser and a secure target site. (See id. at 38:13-33.)
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`The embodiments consistently show that a VPN is established “between [a]
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`user computer” and a “secure target site.” (See, e.g., Ex. 1001 at 38:30-33; Ex. 1001
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`at 39:23-25 (“secure VPN is established between the user’s computer and the secure
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`target”); Ex. 2043 at ¶¶ 27-28.) In these embodiments, the “user computer,” which
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`communicates via VPN with the “target computer,” is the claimed “client
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`computer.” The specification also explains that it is the “user’s computer” that
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`performs “client” functions. It explains that the “user’s computer 2501 includes a
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`client application.” (Ex. 1001 at 37:30-32; see also id. at 38:15-16 (“[a] user’s
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`computer 2601 includes a conventional client (e.g., a web browser)”).) It discloses
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`an embodiment that checks whether “client 3103 is a validly registered user” (id. at
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`45:8-9), and another where “client computer 801” is shown as a user’s computer,
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`namely a laptop device (id. at 16:16-17; Fig. 8). In every example, the computer at
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`the other end of the VPN link from the “target”—the claimed “client computer”—is
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`the computer being operated by the user.
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`The specification also expressly distinguishes the “client computer” from
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`proxies like Kiuchi’s client-side proxy. It explains that a “proxy” is something that
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`is “interposed between client and destination.” (Ex. 1001 at 1:49-53 (emphasis
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`added); see id. at 1:54-55 (distinguishing “proxy” from “originating client”).)
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`As VirnetX’s expert observed, dictionary definitions confirm that the ordinary
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`meaning of “client computer” is consistent with the ’135 patent’s description of the
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`same as a “user’s computer.” (Ex. 2043 at ¶¶ 30-31.) The dictionary defines “client
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`machine” as “[a] user’s workstation that is attached to a network.” (Ex. 2028 at 3.)
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`The definitions for the other client-related terms also unanimously require a user, by
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`identifying a “client” as a “workstation,” “personal computer,” “user’s machine,” or
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`“user’s PC”:
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`Term
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`Client
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`Dictionary
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`A workstation or personal computer in a client/server
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`environment
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`Client application
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`An application running in a workstation or personal
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`computer on a network
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`5
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`Client based
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`Refers to hardware or software that runs in the user’s
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`machine (client)
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`Client program
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`Software that runs in the user’s PC or workstation
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`Client/server
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`An architecture in which the user’s PC (the client) is the
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`requesting machine and the server is the supplying
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`machine[.]
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`(Id.; see also PO Response at 17.) Each of those definitions demonstrates that the
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`“client computer,” as used in the ’135 patent, is a “user’s computer.”3
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`By contrast, Petitioners’ proposed definition of “client computer” as a
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`“computer from which a data request to a server is generated,” Pet. at 16; PRB at 6,
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`3 Petitioners’ assertion that “[n]umerous dictionaries … including ones cited by
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`VirnetX” confirm its position is simply not correct. (PRB at 7 n.4 (citing Exs. 2028,
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`1014, 1037, 1043).) Exhibit 2028 is discussed above and repeatedly equates a client
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`computer with a user’s computer. Exhibit 1014 is an RFC, not a dictionary. In any
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`event, while Exhibit 1014 defines “client” as “[a]n application program that
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`establishes connections for the purpose of sending requests,” it also defines 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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`a definition that supports VirnetX’s construction. Exhibits 1037 and 1043 discuss
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`“client” in a similar manner.
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`finds no support in the text of the claims or the specification. Petitioners incorrectly
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`characterize expert testimony when they contend that their expert testified that a
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`skilled artisan “would have understood a ‘client computer’ to refer to the
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`conventional client component of a client/server architecture,” and that “[b]oth
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`experts agreed that a skilled person would have understood a conventional ‘client’
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`to be any application that generates a request for data from a server.” (PRB at 7
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`(citing Ex. 1003 ¶ 19; Ex. 1036 at 97:8-15, 101:1-10).) Neither expert said anything
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`of the kind. In the passage Petitioners invoke, their expert, Dr. Guerin, only
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`described the process by which Kiuchi’s “client-side proxy establishes a closed
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`virtual network over the Internet with a server-side proxy, through which a user
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`agent associated with the client-side proxy may request information stored on an
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`origin server associated with the server-side proxy.” (Ex. 1003 ¶ 19.) Dr. Guerin
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`said nothing about how a skilled artisan would have understood the term “client
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`computer”; if anything, his reference to “a user agent” being the one to “request
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`information stored on an origin server,” id., supports VirnetX’s proposed
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`understanding of a “user computer” being the claimed “client computer.”
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`Nor did VirnetX’s expert, Dr. Monrose, “agree[]” that a “client” would denote
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`“any application that generates a request for data from a server.” (PRB at 7.) Dr.
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`Monrose mentioned that the term “client computer” should be viewed “in the context
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`of a client/server relationship” (Ex. 1036 at 97:8-15), but emphasized that, in light
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`of the ’135 patent and the specification’s “repeated references and connections
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`Case No. IPR2015-01046
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`between the user’s computer and the client computer,” a skilled artisan would
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`“view[] the client computer as the user’s computer” (Ex. 1036 at 97:1-6). And Dr.
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`Monrose explained that he provided no opinion on Petitioners’ proposed
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`construction (Ex. 1036 at 101:1-10), although he observed that it does not reflect the
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`specification’s “repeated references and connections between the user’s computer
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`and the client computer” (Ex. 1036 at 97:1-7).
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`More importantly, Petitioners’ proposed construction would effectively mean
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`that any device that sends a data request to a server is a “client computer.”
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`Paradoxically, that could even include the server itself, which can generally request
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`data from another server. Such an illogical construction—one that does violence to
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`the claim language and the specification—cannot be correct.
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`Petitioners attempt to anchor their proposed construction in the specification,
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`PRB at 8-9, but profoundly misread it. They invoke the statement that “[a] user’s
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`computer 2601 includes a conventional client (e.g., a web browser) 2605.” (Ex.
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`1001 at 38:14-15, quoted in PRB at 8.) That example, however, shows that the
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`“client computer” is a “user’s computer,” 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. It thus
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`supports VirnetX’s construction, not Petitioners’.4
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`Petitioners also rely on the specification’s statement that “[t]he user’s security
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`level can also be determined by transmitting a request message back to the user’s
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`computer.” (Ex. 1001 at 39:17-20, quoted in PRB at 8.) Again, this reference
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`reinforces VirnetX’s proposed construction. The security level sent back to the
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`“user’s computer” is for a user, and the computer that receives that message is the
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`computer employed by the user to request information from the secure target site
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`(e.g., item 2601 depicted in Figure 26). These features are entirely consistent with
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`those relating to the claimed “client computer” (defined as a “user’s computer”) in
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`the context of the claims.
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`Similarly, the specification’s reference to “a secure VPN [that] is established
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`between the user’s computer and the secure target site … by allocating a hopping
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`regime that will be carried out between the user’s computer and the secure target
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`site,” Ex. 1001 at 39:22-29, quoted in PRB at 8-9, is entirely consistent with the
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`features relating to the claimed “client computer” in the context of the claims. Here,
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`4 As explained below, infra at Section IV.C, this construction is irreconcilable with
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`Petitioners’ argument that Kiuchi’s client-side proxy is the claimed “client
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`computer.” It is undisputed that Kiuchi’s client-side proxy does not contain any such
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`user-facing software, such as a browser.
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`the specification describes establishment of a VPN between the user’s computer and
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`the secure target site, but does not distinguish a “client computer” from a “user’s
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`computer.” On the contrary, they are described synonymously.
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`Another portion of the specification Petitioners invoke (Ex. 1001 at 44:40-45,
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`cited in PRB at 9) describes a “Signaling Synchronizer” embodiment where a large
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`number of users communicate with a central node. The description of a user’s
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`computer in that portion is again consistent with that of a “client computer” as a
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`computer used by a user to access a web site. (See Ex. 1001 at 44:15-30.) Nothing
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`in this portion of the specification draws a distinction between a user’s computer and
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`a client computer; instead, the two terms are entirely consistent with each other.
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`Petitioners also argue that their construction is supported by embodiments
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`“where a VPN is initiated by a ‘client’ that is not running on a computer portrayed
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`as being operated by a user.” (PRB at 9.) None of the embodiments Petitioners
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`invoke support their proposed construction. As already explained, the first portion
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`of the specification Petitioners cite (Ex. 1001 at 38:14-15) simply explains that the
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`“conventional client” can include software, such as a web browser. The second
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`portion (Ex. 1001 at 38:38-44) is entirely inapposite; it refers to a secure
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`administrative VPN between the DNS proxy 2610 and the user computer 2601 of
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`the resolved address. But this is not the VPN recited in the claims, which is
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`established between the client computer and the target computer. Moreover,
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`Petitioners’ argument ignores the Federal Circuit’s construction of the claimed VPN
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`as requiring direct communications between the client and the target computers. See
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`VirnetX, 778 F. App’x at 909-10.
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`The remaining portions of the specification cited by Petitioners (see PRB at 9)
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`are equally inapposite. The first portion (Ex. 1001 at 31:57-64) simply describes
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`Figure 20; it lends no support to Petitioners’ claim that “a VPN is established
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`between two computers described simply as a ‘first and second computer’ and not
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`showing any user involvement” (PRB at 9). This portion of the specification
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`describes routers and an ISP, and does not speak to the establishment of a VPN as
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`recited in the claims (and as construed by the Federal Circuit). Petitioners’ reference
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`to the next portion of the specification (Ex. 1001 at 36:26-28) is equally unavailing.
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`This portion refers to Figure 24, and describes use of routers to assist in
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`communications between computers 2401 and 2402. Nothing in this disclosure
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`describes the claimed VPN.
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`VirnetX’s proposed construction is further reinforced by relevant extrinsic
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`evidence from the proceedings in the parallel district-court litigation. There,
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`Petitioner Apple’s own expert acknowledged that Kiuchi’s user agent—i.e., the web
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`browser operated by the user, not the client-side proxy—“would be read naturally as
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`a client computer.” Ex. 2048 at 50:7-24; VirnetX, 767 F.3d at 1324.
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`For these reasons, whether under Phillips or BRI, the claimed term “client
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`computer” is a “user’s computer.
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`“Virtual Private Network (VPN)”
`C.
`The Federal Circuit gave effect to VirnetX’s disclaimer, which in its view
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`“clearly and unmistakably state[d] that a ‘VPN between the client computer and the
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`target computer’ requires direct communication between the client and target
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`computers.” VirnetX, 778 F. App’x at 910. The Federal Circuit thus instructed the
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`Board to assess whether Kiuchi discloses direct communications. Id.
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`Petitioners argue that the Federal Circuit “did not define” “‘direct’
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`communication,” and offer—for the first time—a construction of that term. (PRB
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`at 9-10.) But even if that belated attempt were proper, Petitioners cannot prevail
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`under any construction permissible in light of the Federal Circuit’s mandate. While
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`the Court did not precisely define “direct communications,” it explained what is
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`excluded from “direct communications.” It explained that VirnetX disclaimed a
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`“system in which a client computer communicates with an intermediate server via a
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`singular, point-to-point connection,” wherein “[t]hat intermediate server then relays
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`the data to a target computer on the same private network on which the server
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`resides.” VirnetX, 778 F. App’x at 910. The mandate rule precludes the Board from
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`adopting a claim construction that would cover that ceded claim scope. And because
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`Kiuchi describes exactly the sort of relay-based communications excluded from the
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`claims, it cannot anticipate. Infra at Section IV.
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`Case No. IPR2015-01046
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` Kiuchi Does Not Anticipate Claims 1, 3, 4, 7, 8, 10, and 125
`“Anticipation requires that ‘every element and limitation of the claimed
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`invention must be found in a single prior art reference, arranged as in the claim.’”
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`VirnetX, 778 F. App’x at 907 (quoting Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir.
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`2001)). The claims require establishing “direct communications” between a “client
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`computer” and a “target.” Kiuchi does not disclose direct communications; its client
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`computer and target server communicate through “proxies”—exactly the kind of
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`“relay”-based communications the Federal Circuit found excluded from the claim
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`scope. In Kiuchi, only the client- and server-side proxies communicate directly, but
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`those cannot be the claimed “client computer” and “target.”
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`5 Petitioners appear to have abandoned their argument that dependent claim 8 is
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`separately rendered obvious. That argument fails in any event. Claim 8 depends
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`from, and includes all the features of, independent claim 1. Petitioners relied on
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`RFC 1034 in an effort to make up for certain deficiencies of Kiuchi with respect to
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`claim 8’s additional limitations, but never argued that RFC 1034 makes up for any
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`of Kiuchi’s deficiencies with respect to the limitations recited in claim 1. (Pet. at
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`35-37.)
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`Case No. IPR2015-01046
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`A. Kiuchi Discloses Relay-Based Communications
`The Federal Circuit’s mandate makes this an a fortiori case. The Federal
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`Circuit found that VirnetX’s disclaimer excludes any system where the client
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`computer communications with an “intermediate server” that “then relays the data”
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`to the target computer. 778 F. App’x at 910. It also provided a detailed description
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`of Kiuchi that shows it discloses precisely such “relay”-based communications. The
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`Court explained that Kiuchi’s “system consists of five relevant elements: a user
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`agent (also referred to as a client), a client-side proxy, a C-HTTP name server, a
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`server-side proxy, and an origin server.” Id. at 905. “The user agent and client-side
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`proxy communicate behind one firewall, and the origin server and server-side proxy
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`communicate behind another.” Id. “When the user agent requests access to a host,
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`the client-side proxy asks the C-HTTP name server whether it can communicate with
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`that host,” which causes “[t]he C-HTTP name server to check[] whether the server-
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`side proxy associated with that host is registered on the network and is permitted to
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`accept the connection from the client-side proxy.” Id. “If [the C-HTTP name server]
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`determines the communication is not permitted, it returns an error code to the client-
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`side proxy, which then acts as a typical DNS.” Id. On the other hand, “[i]f the
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`communication is permitted, the C-HTTP name server sends the server-side proxy’s
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`information to the client-side proxy, which then sends a connection request to the
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`server-side proxy.” Id. “The server-side proxy similarly communicates with the C-
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`HTTP server to verify the request,” and then, “[o]nce verified, a connection between
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`Case No. IPR2015-01046
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`the client-side and server-side proxies is established, and communication occurs
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`over a secure, encrypted protocol.” Id. “All encryption and decryption occur at the
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`proxies, and the user agent and origin server receive the relevant decrypted
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`information from their respective proxies.” Id.
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`As the Federal Circuit explained, Kiuchi discloses three separate links: the
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`“user agent and client-side proxy communicate” via one link, and “the origin server
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`and server-side proxy communicate” via another. 778 F. App’x at 905. Then, there
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`is a third “secure, encrypted” “connection between the client-side and server-side
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`proxies.” Id.; see id. (user agent and origin server “receive . . . information” not from
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`each other, but “from their respective proxies”); see also VirnetX, 767 F.3d at 1325
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`(“Kiuchi’s client-side and server-side proxies terminate the connection, process
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`information, and create a new connection”).
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`Petitioners’ “User Agent to Origin Server” Mapping Is Deficient
`B.
`Petitioners’ first mapping of claim 1—where Kiuchi’s user agent is mapped
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`to the claimed “client computer” and its origin server is mapped to the claimed
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`“target computer,” (PRB at 13)—is nothing more than a thinly veiled attempt to
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`relitigate arguments they already lost at the Federal Circuit. Kiuchi does not disclose
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`any direct connection between the user agent and origin server, and therefore this
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`mapping cannot disclose a “VPN between the client computer and the target
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`computer,” as claimed.
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`Case No. IPR2015-01046
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`As VirnetX previously demonstrated (PO Response at 31-32), and as the
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`Federal Circuit explained, see supra at Section IV.A, the proxy servers in Kiuchi
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`terminate communications and thus preclude the user agent and origin server from
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`directly communicating with one another. The proxy servers wrap/unwrap
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`messages, encrypt/decrypt their contents, re-format, and ultimately re-send
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`messages. (See, e.g., Ex. 1002 at 8 (“[i]n the client-side proxy, the HTML document
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`is rewritten”), 9 (client-side proxy encrypts and re-formats HTTP/1.0 requests to C-
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`HTTP format and that the client-side proxy decrypts and re-formats C-HTTP
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`responses to HTTP/1.0 format); see also id. at 11 (“C-HTTP-based communication
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`is performed only between two types of C-HTTP proxies and between a C-HTTP
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`proxy and C-HTTP name server,” whereby these intermediary components “do not
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`communicate directly with various types of user agents and servers using C-
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`HTTP.”); Ex. 2043 at ¶ 58.)
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`Petitioners’ contrary arguments (PRB at 18-24) lack merit. Petitioners fail to
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`address the Federal Circuit’s understanding of Kiuchi, which shows that it discloses
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`the non-direct system VirnetX disclaimed. The Federal Circuit explained that
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`VirnetX’s disclaimer “described a system in which a client computer communicates
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`with an intermediate server via a singular, point-to-point connection,” whereby
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`“[t]hat intermediate server then relays the data to a target computer on the same
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`private network on which the server resides.” VirnetX, 778 F. App’x at 910. This
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`Case No. IPR2015-01046
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`is precisely the sort of system that Kiuchi describes. The user agent communicates
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`with the intermediate server-side proxy—indeed, “[f]rom the view of the user agent
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`… all resources appear to be located in [the] server-side proxy” (Ex. 1002 at 9)—
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`and the “server-side proxy forwards requests to the origin server,” which is in the
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`same network as the server-side proxy (id.); see also VirnetX, 767 F.3d at 1325
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`(“Kiuchi’s client-side and server-side proxies terminate the connection, process
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`information, and create a new connection—actions that are not ‘direct’ within the
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`meaning of the asserted claims.”).
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`Petitioners contend Kiuchi discloses an “encrypted C-HTTP connection …
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`between the user agent … and the origin server.” (PRB at 16-17.) To the contrary,
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`the C-HTTP link exists only between the proxies, which “terminate the connection”
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`and “create a new connection.” 767 F.3d at 1324. Petitioners’ own expert admitted
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`that “the client-side proxy and the server-side proxy are communicating using C-
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`HTTP, and you have user agent and origin servers that are only running HTTP/1.0”
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`(Ex. 2047 at 19:7-18) and that “encrypted communications in the C-HTTP
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`connection between the proxies . . . doesn’t extend past [the] proxies to the origin
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`server or the user agent” (id. at 21:3-7).
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`The Federal Circuit rejected the same argument based on Kiuchi in a prior
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`case involving Petitioner Apple. VirnetX, 767 F.3d at 1324. There, the Court
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`rejected Apple’s argument that Kiuchi anticipated claim 1 of the ’135 patent, finding
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`Case No. IPR2015-01046
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`substantial evidence to support the view that Kiuchi “do[es] not teach ‘direct
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`communications’” because “Kiuchi’s client-side and server-side proxies terminate
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`the connection, process information, and create a new connection.” VirnetX, 767
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`F.3d at 1324.
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`Petitioners steamroll over the Federal Circuit’s repeated pronouncements on
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`the meaning of “direct” and what Kiuchi discloses, by arguing that “the user agent
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`[in Kiuchi] can communicate with the origin server by directly addressing the origin
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`server.” (PRB at 18.) This is not accurate. While the URL that may be selected in
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`Kiuchi corresponds to the resource on the origin server, Kiuchi’s C-HTTP name
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`server does not return the IP address of the URL in the request. Rather, as
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`Petitioners’ expert admitted, it returns a server-side proxy’s IP address. (See Ex.
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`2047 at 25:5-13 (explaining that the C-HTTP name server returns the IP address of
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`the server-side proxy), 93:20-94:10 (same); 95:9-14 (explaining that the URL in the
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`request in Kiuchi identifies a resource stored at the origin server), 99:21-100:11
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`(same).) Indeed, in a finding Petitioners did