Paper No. 62
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`THE MANGROVE PARTNERS MASTER FUND, LTD., APPLE INC., and
`BLACK SWAMP IP, LLC,
`Petitioners,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2015-010471
`U.S. Patent No. 7,490,151
`
`––––––––––––––––––
`
`PETITIONERS’ IDENTIFICATION OF REPLY ARGUMENTS
`
`
`
`1 Apple Inc. and Black Swamp IP, LLC, who filed petitions in IPR2016-00063 and
`IPR2016-00167, respectively, have been joined as Petitioners in the instant
`proceeding.
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`THE MANGROVE PARTNERS MASTER FUND, LTD., APPLE INC., and
`BLACK SWAMP IP, LLC,
`Petitioners,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2015-010471
`U.S. Patent No. 7,490,151
`
`––––––––––––––––––
`
`PETITIONERS’ IDENTIFICATION OF REPLY ARGUMENTS
`
`
`
`1 Apple Inc. and Black Swamp IP, LLC, who filed petitions in IPR2016-00063 and
`IPR2016-00167, respectively, have been joined as Petitioners in the instant
`proceeding.
`
`
`
`IPR2015-01047
`
`Petitioners’ Identification of Reply Arguments
`
`The Board authorized Patent Owner to identify “sections of the [reply briefs]
`
`believed by Patent Owner to be improper,” and authorized Petitioners to identify
`
`where those sections “were previously presented” or how they are responsive to
`
`Patent Owner’s Response. As explained below, no identified section is improper.
`
`Position #1: Patent Owner argues that Petitioners newly rely on an
`
`alternative mapping of the claimed “client” and “secure server” to the user agent
`
`and server-side proxy. Paper 61, 1-2. The Petition explained “[t]he user agent is a
`
`“client,” under that term’s broadest reasonable interpretation, because the user
`
`agent is a computer or program from which a data request to a server is generated.”
`
`Pet., 26. The Petition also explained “both the server-side proxy and origin server
`
`are [] secure servers, under that term’s broadest reasonable interpretation.” Pet., 28;
`
`see also IPR2016-00167, Pet., 14, 16-17. Dr. Guerin similarly testified that
`
`“[b]oth the server-side proxy and origin server are secure servers.” Ex. 1003, ¶29.
`
`Position #2: Patent Owner argues that Petitioners newly rely on Kiuchi’s
`
`appendices to argue Kiuchi’s hostname corresponds to an institution’s server-side
`
`proxy. Paper 61, 2. Dr. Guerin relied on the entirety of Kiuchi’s disclosure,
`
`including appendices, to conclude that the client-side proxy, using the hostname of
`
`the server-side proxy, requests and receives the server-side proxy’s IP address in
`
`response to the C-HTTP name request. See, e.g., Ex. 1003, ¶29 (citing Ex. 1002,
`
`72-73 (Appendix 2)). The Petition then relied on Dr. Guerin’s understanding of
`
`1
`
`
`
`IPR2015-01047
`
`Petitioners’ Identification of Reply Arguments
`
`this functionality to explain how Kiuchi anticipates the claims. See, e.g., Pet., 30-
`
`31 (citing Ex. 1003, ¶¶23-25, 28-29, 31). The Petition also explained that “the
`
`hostname … designates the server-side proxy,” Pet., 27, and if “the requested
`
`server-side proxy associated with the hostname is registered in the closed network,
`
`then the client-side proxy receives, from the C-HTTP server, the IP address … of
`
`the server-side proxy.” Pet., 29 (alterations and quotations omitted). The sections
`
`of the Reply identified by Patent Owner also respond to its contention (Resp., 15-
`
`16; Ex. 2038, ¶¶43-44) that the hostname refers only to the origin server, and not
`
`the server-side proxy. See Reply, 5-8.
`
`Position #3: Patent Owner argues that Petitioners newly rely on the
`
`collective actions of the client-side proxy and C-HTTP name server for the claimed
`
`“determining” step. Paper 61, 2. The Petition explained that “the client-side proxy
`
`determines whether the request corresponds to a secure server by asking ‘the C-
`
`HTTP name server.’” Pet., 28-29. The C-HTTP name server then “determines
`
`whether a ‘server-side proxy [associated with the hostname] is registered,” Pet.,
`
`22, and, if so, sends a response with the server-side proxy’s IP address, Pet., 22.
`
`The Petition then explained how Kiuchi’s client-side proxy and C-HTTP name
`
`server are both involved in the claimed “determining.” Pet. 28-29, 30-31; see also
`
`Pet., 47 (“[T]he function of DNS proxy is distributed across the client-side proxy
`
`and the C-HTTP name server.”).
`
`2
`
`
`
`IPR2015-01047
`
`Petitioners’ Identification of Reply Arguments
`
`Position #4: Patent Owner argues that Petitioners newly rely on RFC 1945
`
`(Ex. 1014) as defining HTTP/1.0 as used in Kiuchi. Paper 61, 2-3. Dr. Guerin
`
`explicitly relied on RFC 1945 as defining HTTP/1.0 as used in Kiuchi. Ex. 1003,
`
`¶18; Pet., 25-26 (citing same). Petitioners reliance’ on RFC 1945 to show the
`
`meaning of “host” in the context of HTTP/1.0, Reply, 6, is also responsive to
`
`Patent Owner’s argument equating a URL’s “host” with the entire URL, Resp., 16.
`
`Petitioner Apple Inc.’s Separate Reply Filing: Patent Owner argues that
`
`Petitioner Apple “goes beyond responding to Patent Owner’s Response” because
`
`Patent Owner “did not suggest changes to the schedule.” Paper 61, 3. Patent
`
`Owner did, however, urge the Board to “terminate this proceeding” regardless of a
`
`§ 315(b) issue if it found a missing RPI. Resp., 56-57. Petitioner Apple explained
`
`that, even if an RPI was mistakenly omitted, the Board should exercise its
`
`discretion to maintain the current schedule of this proceeding due to Patent
`
`Owner’s behavior in this and related proceedings before the Office. Paper 59.
`
`For the foregoing reasons, Petitioners’ papers are proper.
`
`Dated: May 19, 2016
`
`Respectfully Submitted,
`
`/ Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`Attorney for Petitioner Apple
`
`/Thomas H. Martin/
`Thomas H. Martin
`
`/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
`
`3
`
`
`
`IPR2015-01047
`
`Petitioners’ Identification of Reply Arguments
`
`Reg. No. 34,383
`MARTIN & FERRARO, LLP
`Attorney for Petitioner Black Swamp
`
`Attorneys for Petitioner Mangrove
`
`4
`
`
`
`IPR2015-01047
`
`Petitioners’ Identification of Reply Arguments
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 19th day of
`
`May, 2016, I caused to be served a true and correct copy of the foregoing and any
`
`accompanying exhibits by e-mail on the following counsel:
`
`Joseph E. Palys
`josephpalys@paulhastings.com
`
`Naveen Modi
`naveenmodi@paulhastings.com
`
`Dated: May 19, 2016
`
`Respectfully Submitted,
`
`/ Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`Attorney for Petitioner Apple
`
`/Thomas H. Martin/
`Thomas H. Martin
`Reg. No. 34,383
`MARTIN & FERRARO, LLP
`Attorney for Petitioner Black Swamp
`
`/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
`
`
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