IPR2015-01046, Paper No. 70
`IPR2015-01047, Paper No. 79
`August 9, 2016
`
`trials@uspto.gov
`
`571-272-7822
`
`
`
`
`RECORD OF ORAL HEARING
`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,
`Petitioner,
`
`vs.
`
`VIRNETX, INC.,
`Patent Owner.
`- - - - - -
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`Technology Center 2100
`- - - - - -
`Oral Hearing Held: Thursday, June 30, 2016
`
`Before: MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Thursday,
`June 30, 2016, at 9:00 a.m., Hearing Room A, taken at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`REPORTED BY: RAYMOND G. BRYNTESON, RMR, CRR, RDR
`
`
`IPR2015-01047, Paper No. 79
`August 9, 2016
`
`trials@uspto.gov
`
`571-272-7822
`
`
`
`
`RECORD OF ORAL HEARING
`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,
`Petitioner,
`
`vs.
`
`VIRNETX, INC.,
`Patent Owner.
`- - - - - -
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`Technology Center 2100
`- - - - - -
`Oral Hearing Held: Thursday, June 30, 2016
`
`Before: MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Thursday,
`June 30, 2016, at 9:00 a.m., Hearing Room A, taken at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`REPORTED BY: RAYMOND G. BRYNTESON, RMR, CRR, RDR
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF PETITIONER, MANGROVE:
`
`ABRAHAM KASDAN, ESQ.
`Wiggin and Dana LLP
`450 Lexington Avenue, 38th Floor
`New York, New York 10017-3913
`(212) 551-2841
`
`ON BEHALF OF PETITIONER, APPLE:
`
`JEFFREY P. KUSHAN, ESQ.
`SAMUEL A. DILLON, ESQ.
`THOMAS A. BROUGHAN, III, ESQ.
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8914
`
`ON BEHALF OF PETITIONER, BLACK SWAMP:
`
`THOMAS H. MARTIN, ESQ.
`Martin & Ferraro, LLP
`1557 Lake O'Pines Street, NE
`Hartville, Ohio 44632
`(330) 877-0700
`
`ON BEHALF OF THE PATENT OWNER:
`
`JOSEPH E. PALYS, ESQ.
`DANIEL ZEILBERGER, ESQ.
`NAVEEN MODI, ESQ.
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, D.C. 20005
`(202) 551-1700
`
`
`2
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`P R O C E E D I N G S
`
`(9:00 a.m.)
`JUDGE TIERNEY: Please be seated. Welcome,
`everybody, for the hearings for Inter Partes Review on
`IPR2015- 01046 and 01047. My understanding is that each
`side will have an hour today.
`We have three parties on the Petitioner’s side. It
`was understood that the parties would agree on the Petitioner's
`side as to how to allocate the time. Has there been an
`agreement?
`MR. KUSHAN: Yes, Your Honor. The allocation
`will be I will be presenting arguments on patentability issues,
`and Mr. Kasdan for the remainder will be presenting on RPI
`issues, and our intention is to have the RPI issues addressed
`during the rebuttal case.
`JUDGE TIERNEY: Thank you. Today, just so we
`understand, the parties would have time -- what we are
`planning on is Petitioner, followed by Patent Owner, followed
`by Petitioner. To the extent Patent Owner would like to have
`a closing statement we will offer that today also.
`But for Petitioner, is there a time you would like to
`reserve for rebuttal today?
`MR. KUSHAN: Yes, Your Honor, 30 minutes
`approximately.
`
`
`
`3
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`JUDGE TIERNEY: 30 minutes. So you are going
`to use only 30 minutes for your opening?
`MR. KUSHAN: I may use a little bit more, I will
`reserve the balance, but I will aim for 30.
`JUDGE TIERNEY: I will put 30 on the clock. And
`before we begin, one last thing, are there any procedural
`issues we should clarify today?
`MR. PALYS: Yes, Your Honor. This is Joe Palys.
`One issue that we just want to make sure the Board is aware
`of, that when we get into RPI issues that we could be
`discussing confidential information which is subject to the
`protective order that the parties addressed. And we notice
`that there are people in the boardroom today that may or may
`not be subject to the protective order.
`We have discussed this issue with Mangrove and we
`just want to make sure that the Board was aware. Mangrove is
`happy to address that issue with the Board directly.
`JUDGE TIERNEY: Will we be discussing anything
`that is under seal with this public forum?
`MR. KASDAN: I don't believe so.
`JUDGE TIERNEY: Okay. So let me just make it
`clear. Do we need to clear the room when we discuss RPI
`issues?
`
`MR. KASDAN: Sorry?
`
`
`
`4
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`JUDGE TIERNEY: Do we need to clear the room
`and close the hearing at that point?
`MR. KASDAN: No, no, no.
`JUDGE TIERNEY: Okay. Should anything come
`up where we need to address that issue, please alert us, but
`otherwise the public will be present during the entirety of the
`hearing today.
`MR. PALYS: Your Honor, I just want to be clear.
`Mangrove may not be going into it, but we probably will be
`going into information that is sealed. So I just want to make
`sure that he is aware of that so he can make that call.
`JUDGE TIERNEY: Counsel for Mangrove,
`understand, again, if this needs to be --
`MR. KASDAN: Well, in that case I think we
`should clear the room just to be on the safe side.
`JUDGE TIERNEY: All right. We're going to
`confer for just a moment. We have an option that we are
`going to discuss and then we will get back to the parties
`briefly.
`
`(Pause)
`JUDGE TIERNEY: Counsel, I would like to run the
`following by you, because we may have to potentially close
`the hearing, and we had not anticipated this.
`Would it be possible to do bifurcated, where we
`take up the patentability issues, finish the patentability issues,
`
`
`5
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`and then afterward we would then have a mini-proceeding
`essentially on RPI where we would close the room? Counsel
`for Patent Owner?
`MR. PALYS: Yes, I think we are probably on the
`same page as Apple's counsel. I am going to be presenting on
`issues with respect to the prior art. Mr. Zeilberger is going to
`address the RPI issues. And we were going to split up our
`time initially.
`So at that transition point that could be the RPI
`issue. I think at that point it may be easier on all parties. If
`they want to clear the room, that's fine, and then we can bring
`them back if there are other issues. And I will let the Board
`decide how they want to proceed, but we can segment it that
`way, if that's okay with you.
`JUDGE TIERNEY: Sure. Would it be possible to
`have the entirety of the patentability we go Petitioner, Patent
`Owner, Petitioner, and at that point you would have a closing
`statement, and at that point we would stop, clear the room, if
`needed, to close it and then we have a separate section on
`RPI?
`
`MR. PALYS: We can certainly do that. We can
`address all of the RPI issues at the end, if that is what the
`Board would like. Yeah, I think we can handle that.
`JUDGE TIERNEY: We could go RPI first if that is
`more convenient.
`
`
`6
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`MR. PALYS: I think we are okay waiting until the
`end. It is totally at the Board's discretion. We are okay to
`separate it and wait until the end and he can address the RPI
`issues.
`
`JUDGE TIERNEY: Okay. Petitioner, would that be
`acceptable?
`MR. KASDAN: Yes.
`JUDGE TIERNEY: Any objection from the room?
`Hearing no objection, we will go with that.
`Now, we have one hour each. How should we
`bifurcate? The question is do we need a full hour on
`patentability and then a mini, or should we take the hour and
`carve out of the hour? I'll start with Patent Owner.
`MR. PALYS: I think we can carve out the hour. I
`don't intend to use the whole hour for the patentability issues,
`Your Honor.
`JUDGE TIERNEY: Do you have any suggestion on
`how we should set it up?
`MR. PALYS: My suggestion is I was planning on
`reserving maybe 20 minutes or 30 minutes for Mr. Zeilberger,
`or 15. So how about in my initial arguments we will shoot for
`30 minutes and then split it up from there? I think we will
`have plenty of time.
`JUDGE TIERNEY: So here is what we will do:
`Petitioner, would 30 minutes, since we've already had the
`
`
`7
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`clock set for 30 minutes, for the entirety, would 30 minutes on
`patentability, we'll have each side have 30 minutes on that,
`and then we'll close it, and then each side would then get 30
`minutes to discuss RPI?
`Is that acceptable to Petitioner, or would you like a
`little more.
`MR. KUSHAN: I think what I would like to do is
`reserve some portion of the remaining 30 minutes on
`patentability rebuttal, and then I don't know whether that is
`going to be 5, 10, 15 minutes for the RPI issue on rebuttal,
`but why don't we aim for about 45 minutes total for our
`patentability section.
`JUDGE TIERNEY: Let me confer.
`(Pause)
`JUDGE TIERNEY: All right. The Panel has
`conferred. What we are going to do here is, just so we are all
`on the same page, we will allow 45 minutes each side for the
`patentability issues. To the extent needed, the RPI issues will
`have 15. And if they need more we will generously allow
`more time.
`We do not want to constrain the parties because this
`has come up as an issue, closing the room. So we will start
`off with each side getting 45 minutes. RPI issues will be
`designated 15 plus whatever is needed.
`Any concerns, starting with Petitioner?
`
`
`
`8
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`MR. KUSHAN: No, Your Honor.
`JUDGE TIERNEY: Patent Owner?
`MR. PALYS: No, Your Honor.
`JUDGE TIERNEY: Again, we will be generous,
`and if you need 25, take 25. If you need 30, you will have 30.
`Any questions?
`MR. PALYS: No, Your Honor.
`JUDGE TIERNEY: Thank you. With that we will
`now begin. Beginning with the 45 minutes reserved for
`patentability, how much time would you like to reserve,
`Petitioner?
`MR. KUSHAN: I will reserve 15 minutes on
`rebuttal with a 30-minute opening.
`JUDGE TIERNEY: All right. We will start with 30
`minutes for the opening and begin when you are ready.
`MR. KUSHAN: Thank you, Your Honors. Good
`morning. And, first of all, thank you for accommodating our
`request to go to a larger room. We appreciate that.
`I'm Jeff Kushan from Sidley on behalf of Apple.
`With me is Tom Broughan, Scott Border and Sam Dillon. We
`have other counsel for the other Petitioners who can introduce
`themselves if they wish.
`MR. KASDAN: Abraham Kasdan on behalf of the
`Mangrove Partners Master Fund.
`
`
`
`9
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`MR. MARTIN: Tom Martin with Martin & Ferraro
`for Black Swamp IP.
`MR. KUSHAN: And as I indicated earlier, I will be
`presenting on the patentability issues.
`What I would like to do is, first of all, go over the
`two proceedings very briefly. As you know, the 1046
`proceeding concerns the '135 patent, and there are grounds
`based on anticipation. Most of the grounds are based on
`anticipation. And claim 8 is also addressed as an obvious
`issue.
`
`The primary reference in the 1046 for both
`proceedings is the Kiuchi reference, which is Exhibit 1002.
`The two secondary references for claim 8 were Exhibit 1005
`in RFC 2660 which is Exhibit 1004.
`The 1047 proceeding concerns the '151 patent and
`there are both obviousness and anticipation grounds, again, on
`the same references.
`What I would like to do, the Kiuchi reference that
`is the basis of the grounds for each of the two proceedings has
`already been addressed in two written decisions of the Board.
`Those were IPR2014- 0404 involving the '274 patent, and
`IPR2014- 0482 which is concerning the '180 patent, all
`members of the same patent family.
`What I would propose to do since you have already
`addressed Kiuchi's teachings, I would propose to move into
`
`
`10
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`kind of the issues that are in dispute in the case unless you
`would like for me to go over how Kiuchi works. I'm happy to
`proceed.
`
`So if you could put up slide 7, please. Now, in this
`proceeding claim -- I'm sorry, why don't you start with claim
`1 just very briefly. This is on slide 2. Claim 1 of the '135
`patent is a process for setting up or transparently creating a
`virtual private network, or VPN, between a client computer
`and a target computer. And it recites three steps.
`One is generating a client computer, at the client
`computer a domain name service request that requests an IP
`address corresponding to a domain name associated with the
`target computer.
`The second step is determining whether the DNS
`request as transmitted is requesting access to a secure site.
`And the third step is determining whether the DNS
`request when it is requesting access to a secure site
`automatically initiated a VPN.
`Now, Kiuchi describes a system which precisely
`maps to that claim, and that's why we believe there is a strong
`history of anticipation. Go to slide 7.
`In our petition what we explained was that in the
`Kiuchi system there is a central component which consists of
`two proxies, a client-side proxy and a server-side proxy. And
`
`
`
`11
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`the server-side proxy and client-side proxy can interact with
`secure C-HTTP name service.
`Now, on either end of the proxies are a user agent
`on the client-side, and that's going to be behind a private
`network and, likewise, an origin server on the other side of
`the server-side proxy.
`And as we point out in our petition, this system
`includes not only just the connections between the client-side
`proxy and the server-side proxy but extends out to the two
`agents on either side of the proxies. Can you go to slide 18?
`Now, in the briefing what you will see is there are
`disputes roughly over three main issues, and Patent Owner is
`arguing that Kiuchi does not satisfy a few elements of the
`claims.
`
`The first one I want to focus on is the VPN
`requirement. And here the Patent Owners are arguing that
`there are three additional requirements that have to be met for
`there to be a VPN. First, there needs to be the use of
`encryption. Second, there needs to be a network. And the
`third element is something called direct communication, and I
`would like to focus on that.
`Now, if you go back to slide 2, just so we are all on
`the same page, the language of the claim does not import into
`the word virtual private network any special requirements.
`There is nothing, you can see from the language of the claim,
`
`
`12
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`that makes it a requirement that you have all of these
`elements.
`If you go back to slide 18, there is also no
`disclosure in the patent specification of a requirement for
`particularly the direct communication requirement. When you
`look at all of the examples and instances in the patent
`specification, you won't find any definitional language or any
`other language that compels a conclusion that VPN requires
`direct communication.
`Now, there is an issue that has been framed in this
`case based on the briefing about whether there was a
`disclaimer made during the examination of the --
`reexamination of the '135 patent.
`And in concurrent District Court litigation there
`was a finding by the Court that there was a disclaimer. The
`disclaimer was over a different reference called the Aventail
`reference. And I think that's the thing that has to be
`somewhat unpacked from this decision, is what was that
`disclaimer and what was going on in that District Court case.
`Now, the claims and the disclaimer -- could you go
`to slide 28 -- what the Court found was that the requirement,
`there was a requirement for direct communications within the
`context of the VPN, and when you look in the record of the
`District Court case what you will see is an explanation of
`
`
`
`13
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`what direct communications was talking about, what that
`requirement was.
`This is some trial testimony from their expert
`witness, and he is addressing what the direct communication
`requirement was. And as you can tell from his testimony
`before the Court, he explained that the direct communication
`is referring to the direct addressability of the communications.
`Now, Judge Easthom, there was a hearing on
`Monday and you asked a question directly related to this, and
`counsel for VirnetX also echoed this point, that the direct
`communication requirement is referring to this notion of
`direct addressability of the communications.
`And we think that is very important to understand.
`If you were to read that disclaimer into the language of the
`claims here, what you would find is that Kiuchi satisfies those
`requirements. And what I would like to do is direct you to --
`by the way, this is Exhibit 1044, at column -- sorry, page 50,
`line 25, to page 51 at 5. This is the testimony from their
`witness at trial.
`If you can go to slide 30, please. This is a set of
`experts from the Kiuchi reference. Again, Exhibit 1002 is
`Kiuchi. We have put these three things together to
`demonstrate that there is no question in the Kiuchi scheme
`there is direct addressing of the communications. In the
`communications that go out from one side to the other, you
`
`
`14
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`will see there is this HTTP URL, and in it is the host name
`that the communication is being directed to.
`That's the server in connection string. And this is
`at Kiuchi at page 66.
`JUDGE EASTHOM: So just to clarify a little bit
`for me, in the Federal Circuit case VirnetX vs. Cisco, 767
`F.3d 1308, they didn't discuss disclaimer, is that correct, they
`just accepted the parties' agreement that there was a direct
`requirement?
`MR. KUSHAN: I think that is fairly accurate. I
`mean, what happened, so the issue as it was presented to the
`Federal Circuit was reviewing a denial of a JMOL motion at
`trial. So Apple moved for JMOL and the court denied the
`JMOL motion.
`And what that was founded on is the finding was
`there evidence to support the jury's verdict. And the court
`found there was evidence to support the jury's verdict.
`Now, that was the issue that was on appeal in the
`Federal Circuit decision. And the Federal Circuit looked in
`the record and said we don't see an error in the decision of the
`court to deny the Apple JMOL motion.
`And that's very important to understand because the
`Federal Circuit didn't take up and have an exposition on what
`the teachings of Kiuchi were. They were reviewing a
`particular issue of the procedure of the court below. It was
`
`
`15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`that decision by the court on the JMOL notion and whether
`there was sufficient evidence to support the jury verdict.
`Now, when we look in the record here, and I think
`it is important to appreciate also that in this proceeding you
`are not bound by the finding of no invalidity for reason of
`anticipation, which was the Federal Circuit decision, and there
`are three reasons for that. First, you use a different claim
`construction standard. Second, you use a different evidentiary
`standard. But I think most importantly you have a different
`record of evidence in front of you.
`And what we want to point out particularly is that
`the evidence that has come into this case, particularly the
`testimony from the two experts, the different mappings that
`are being considered, the Kiuchi reference relative to the
`claims. Those are things that are different in substance
`between what occurred in the District Court and in this
`proceeding.
`And you will notice in the recent Cuozzo decision
`there was an explanation of a recognition that these two
`proceedings that happened, emanating from the District Court
`and emanating from the Patent Office, often can yield
`different outcomes.
`JUDGE EASTHOM: So that's part of the record
`here, too? I mean, it seems in the Federal Circuit Court case,
`
`
`
`16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`direct means something different than what it meant in the
`District Court case. Is that correct?
`MR. KUSHAN: Well, I think, Your Honor, what we
`are concerned with, when you look in their papers they don't
`ever tell you what direct communications require. And so
`what we thought would be useful is to go back into the record
`to try to help understand what the direct communication was
`understood to mean in the context of the VPN requirement.
`And what that direct communication requirement is,
`as it was brought in through a disclaimer, was a requirement
`for the communication to have direct addressability. And that
`I think is very important to kind of navigate the discussion
`that is happening because, when you look in the papers, what
`you see is you see a lot of different things being identified as
`possibly destroying direct communications.
`That's not the focus of the District Court case. The
`focus of the District Court case was centered on this
`requirement for direct addressability. And there is no
`question in the Kiuchi scheme there is direct addressability.
`If you can go to slide 4, please.
`The expert, Dr. Guerin, presented this depiction of
`the scheme. This is kind of explaining how Kiuchi works.
`And I just briefly explain and it is important to understand
`how this works in the scheme of direct addressability.
`
`
`
`17
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`When the user agent makes a request, it has a
`domain name in it. It goes to the client- side proxy. The
`client-side proxy then makes a request to the C-HTTP secure
`name service. That returns an IP address at the server-side
`proxy.
`
`Once that server-side address has been returned,
`then there is a direct connection between the server-side
`proxy and the client-side proxy and that is encrypted.
`In that process -- and if you go back to slide 28, I'm
`sorry, 30 -- and this is, again, the excerpts from Kiuchi, the
`communications that are sent have the identification at the
`first instance of the server in connection. And that's the name
`that gets resolved into the IP address by the C-HTTP name
`service.
`
`So that is pointing to the computer that it is going
`to speak to, and that's the direct addressability element. So
`Kiuchi is going to satisfy the issue as it was framed under the
`disclaimer element in the District Court case because it meets
`this requirement for direct addressability.
`And, again, there has been a fair amount of
`additional evidence that has been presented in this proceeding
`that clarifies this. If you could turn to slide 29.
`We have gone over a number of aspects of the
`Kiuchi scheme with Dr. Monrose who is Patent Owner's
`
`
`
`18
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`expert, and what we have on this slide is Exhibit 1036 with an
`excerpt of 240:21 to 241:14 from his testimony.
`What you see on the slide is an explanation, a back
`and forth between me and Dr. Monrose, where he is
`confirming that the URL which is used to specify the
`destination is, in fact, doing that. It has the server name in it.
`And he is confirming first that it is specifying a particular
`resource on the origin server and then he is also confirming
`that the URL is the address of the resource.
`And this is something which comes in and confirms
`that's what the string in that communication, in the URL,
`U-R-L, is doing in the Kiuchi scheme. It is pointing to the
`destination.
`Now, we don't believe it would be appropriate in
`this proceeding to bring the word direct communications in as
`a construction of VPN, mostly because the language is just
`something unnecessary because of the Kiuchi -- if you go to
`what the disclaimed term was in the District Court case, we
`have no question that Kiuchi is going to satisfy that, so there
`is no real reason to bring that in.
`A second reason you shouldn't bring it in, based on
`the briefing you've received, is that we don't really know what
`direct communications might mean. And, again, I will invite
`you to look at their Patent Owner response and see if you can
`
`
`
`19
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`find an objective definition of what direct communication
`requires. And you won't find it.
`What you find is an attempt to point to different
`differences that they perceive to exist between the Kiuchi
`scheme and their scheme, but then when you start to inspect
`those differences that breaks down.
`If you could go to slide 31. Now, I just want to
`flag one thing. You already have addressed the direct
`communication requirement in another. In the 404 proceeding
`you found that Kiuchi satisfies it. It is not a requirement that
`you felt was appropriate to bring into the claims in that case,
`and I think you should reach the outcome here.
`Just very briefly I would like to go through some of
`the back and forth in the briefing that relates to the Patent
`Owner's arguments about trying to compare the Kiuchi scheme
`to their own patent. Go to slide 25.
`One of the types of communication techniques that
`is described in the '135 patent is something called TARP.
`And this is an example they have identified in their papers as
`an example that would meet the direct communication
`requirement.
`What we have done here is presented an excerpt
`describing some of the features of the TARP technique and
`comparing it to an excerpt from Kiuchi. So in the top it is
`
`
`
`20
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`Kiuchi at page 66. On the bottom is the '135 patent at column
`13, lines 33 to 39.
`And if you look at page 31 of their Patent Owner
`response -- I'm just going to read you a quote from that --
`they argue that the Kiuchi system does not use direct
`communications because its computers in its stop
`communications with the proxies, wrap and unwrap messages,
`encrypt/decrypt their contents, reformat and ultimately resend
`the messages.
`So you see them by trying to distinguish by four
`variables that happened in the Kiuchi system.
`Well, if you look at the TARP scheme you see
`almost, among all of those steps, you see encryption, you see
`wrapping and unwrapping the packets, and you see sending to
`another destination.
`So the only one that is left that they had listed was
`this idea of reformatting of the document.
`JUDGE EASTHOM: But are those unwrapping and
`wrapping and encryption, are those performed at their proxy
`server or are they performed at the target in the origination
`computers?
`MR. KUSHAN: So the TARP routing scheme uses
`these types of intermediaries which are like proxy servers.
`They are transmitting the traffic through a number of different
`
`
`
`21
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`stops between the original starting point and the destination.
`So it is very analogous to the path that's proceeding --
`JUDGE EASTHOM: I mean, are they getting
`re- encrypted and encrypted along the path?
`MR. KUSHAN: Yes.
`JUDGE EASTHOM: They are getting new
`addresses. Right? I guess they are getting re -encrypted.
`MR. KUSHAN: So there are a variety of examples
`in the patent. And some of them, I mean, there is one
`example actually that has two separate VPNs that is going
`to -- that the communication transits through. And that will
`definitely have entirely separate encryption techniques.
`But the way they are depicting this overall process
`of TARP is very analogous to the processing that happens in
`the flow of Kiuchi, where you take an incoming packet, you
`wrap it in another packet to then send it to the next
`destination. You encrypt the information in it.
`And, by the way, in Kiuchi the encryption, there are
`two points of encryption, there is the server-side proxy to the
`client-side proxy. And so there is no additional round of
`encryption in that scenario.
`And so, as I said, the only thing that is really
`missing just when you put these two sections of the Kiuchi
`reference next to the '135 patent is this reformatting of
`
`
`
`22
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`messages idea. And we don't think that would cause the loss
`of direct communications either.
`In the Kiuchi scheme what that is referring to is,
`when an HTML file is being transferred between two
`destinations in the Kiuchi system, and it has URLs in the
`document, the Kiuchi system will append a connection ID
`which was created at the start of this session of
`communications. And that connection ID is put next to the
`URL. So when that URL is processed, or moving it around, if
`it sees the connection ID it doesn't need to do an additional
`round of authenticating the client and additional name
`resolution. It is there to facilitate the direct communications
`between the starting and endpoint of the process.
`And we don't think that is enough to disqualify a
`communication from being not direct communications and,
`more importantly, Kiuchi by its own terms is explaining that
`only happens for these types of documents, HTML documents
`that have these URLs that need to have connection IDs.
`So in the scenario where a file might be an image
`file, or the binary file, those don't get reformatted. HTML
`documents that don't have these embedded URLs don't get
`reformatted. So even when you look at their example, it
`breaks down because there are scenarios of file transfers in
`Kiuchi that don't implicate that reformatting technique.
`
`
`
`23
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`Case IPR2015-01046 (Patent 6,502,135 B1)
`Case IPR2015-01047 (Patent 7,490,151 B1)
`
`
`
`And all of this really comes to the point that, as
`you have seen in a number of cases, that if a claim
`construction doesn't alter the outcome of the proceeding, there
`is really no point in engaging in it.
`Here this additional reason, which is that if you
`bring this term in, we don't really know where the boundaries
`of the claim might be because they have not offered an
`objective definition.
`And here what I would like to do is just go back to
`Dr. Monro
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
