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., APPLE INC., AND
`BLACK SWAMP, LLC,
`Petitioner
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`v.
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`VIRNETX INC.,
`Patent Owner
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`Case IPR2015-010471
`Patent No. 7,490,151
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`PATENT OWNER VIRNETX INC.’S NOTICE OF APPEAL
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`1 Apple Inc. and Black Swamp, LLC, which filed petitions in IPR2016-00063 and
`IPR2016-00167, respectively, have been joined as Petitioners in the instant
`proceeding.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`THE MANGROVE PARTNERS MASTER FUND, LTD., APPLE INC., AND
`BLACK SWAMP, LLC,
`Petitioner
`
`v.
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`VIRNETX INC.,
`Patent Owner
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`Case IPR2015-010471
`Patent No. 7,490,151
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`PATENT OWNER VIRNETX INC.’S NOTICE OF APPEAL
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`
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`1 Apple Inc. and Black Swamp, LLC, which filed petitions in IPR2016-00063 and
`IPR2016-00167, respectively, have been joined as Petitioners in the instant
`proceeding.
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`
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`Case IPR2015-01047
`Patent 7,490,151
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`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
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`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Patent Owner
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`VirnetX Inc. (“VirnetX”) appeals to the United States Court of Appeals for the
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`Federal Circuit from the Final Written Decision entered on September 9, 2016,
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`(Paper 80) (the “Final Written Decision”) by the United States Patent and
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`Trademark Office, Patent Trial and Appeal Board (the “Board”), and from all
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`underlying orders, decisions, rulings, and opinions, as well as the Board’s Decision
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`on Request for Rehearing, entered on October 20, 2016 (Paper 83). A copy of the
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`Final Written Decision and the Decision on Request for Rehearing is attached.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), VirnetX indicates that the
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`issues on appeal include, but are not limited to, the Board’s interpretation and
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`application of 35 U.S.C. § 312(a)(2), the Board’s interpretation and application of
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`35 U.S.C. § 315(b)-(c), the Board’s determination of unpatentability of claims 1, 2,
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`6-8, and 12-14 of U.S. Patent No. 7,490,151 under 35 U.S.C. § 102 and 35 U.S.C.
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`§ 103, and any finding or determinations supporting or related to those rulings
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`including, without limitation, the Board’s construction and application of the claim
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`1
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`language, the Board’s interpretation of the references, and the Board’s
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`Case IPR2015-01047
`Patent 7,490,151
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`interpretation of expert evidence.
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`Simultaneous with this submission, a copy of this Notice of Appeal is being
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`filed with the Board. In addition, the Notice of Appeal and the required fee are
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`being filed electronically with the Clerk of Court for the United States Court of
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`Appeals for the Federal Circuit.
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`Respectfully submitted this 20th day of December, 2016.
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`By: /Naveen Modi/
`Naveen Modi
`Registration No. 46,224
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, DC 20005
`(202) 551-1700
`naveenmodi@paulhastings.com
`
`Counsel for VirnetX Inc.
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`2
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`CERTIFICATE OF SERVICE
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`Case IPR2015-01047
`Patent 7,490,151
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`The undersigned certifies that, in addition to being filed electronically
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`through Patent Trial and Appeal Board End to End (PTAB E2E), the original
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`version of this Notice of Appeal was filed by hand on December 20, 2016 with the
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`Director of the United States Patent and Trademark Office, at the following
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`address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`The undersigned also certifies that a true and correct copy of this Notice of
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`Appeal and the required fee were filed electronically via CM/ECF on December
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`20, 2016, with the Clerk of Court for the United States Court of Appeals for the
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`Federal Circuit.
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`The undersigned also certifies that a true and correct copy of this Notice of
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`Appeal was served on December 20, 2016 on counsel of record for Petitioner
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`Apple Inc. by electronic mail (by agreement of the parties) at the following
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`
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`address:
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`
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`Case IPR2015-01047
`Patent 7,490,151
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`
`Abraham Kasdan (akasdan@wiggin.com)
`James T. Bailey (jtb@jtbaileylaw.com)
`IP@wiggin.com
`
`Jeffrey P. Kushan
`Scott Border
`Thomas A. Broughan III
`iprnotices@sidley.com
`
`Thomas H. Martin
`Wesley C. Meinerding
`tmartin@martinferraro.com
`docketing@martinferraro.com
`
`
`
`
`By: /Naveen Modi/
`
`
`
`Naveen Modi
`Registration No. 46,224
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, DC 20005
`(202) 551-1700
`naveenmodi@paulhastings.com
`
`Counsel for VirnetX Inc.
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`Date: December 20, 2016
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`
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`Trials@uspto.gov
`Tel: 571-272-7822
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`
`Paper 80
`Entered: Sept. 9, 2016
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`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,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
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`Case IPR2015-010471
`Patent 7,490,151 B2
`____________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
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`
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and C.F.R. § 42.73
`
`
`The Mangrove Partners Master Fund, Ltd., Apple Inc., and Black
`Swamp IP, LLC (collectively, “Petitioner”) requested inter partes review of
`claims 1, 2, 6–8, and 12–14 of U.S. Patent No. 7,490,151 B2 (“the ’151
`
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`1 Apple Inc. and Black Swamp IP, LLC, which filed petitioners in IPR2016-
`00063 and IPR2016-00167, respectively, have been joined as Petitioners in
`the instant proceeding.
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`IPR2015-01047
`Patent 7,490,151 B2
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`patent”). We issued a Decision to institute an inter partes review (Paper 11,
`“Inst. Dec.”) of claims 1, 2, 6–8, and 12–14 of the ’151 patent as
`unpatentable under 35 U.S.C. 102 as anticipated by Kiuchi2 or under 35
`U.S.C. 103(a) over the combination of Kiuchi, RFC 1034,3 and Rescorla4 or
`the combination of Kiuchi and any one of Rescorla or RFC1034. Inst. Dec.
`3, 12; Paper 24 1–2.
`After institution of trial, VirnetX Inc. (“Patent Owner”) filed a Patent
`Owner’s Response (Paper 54 (redacted version), “PO Resp.” and Paper 54
`(non-redacted version)), to which Petitioner replied (Paper 58 (redacted
`version), “Pet. Reply”; Paper 56 (non-redacted version); and Paper 59, “Pet.
`Separate Reply”). Patent Owner and Petitioner also each filed a Motion to
`Exclude, a corresponding Patent Owner’s Opposition to Petitioner’s Motion
`to Exclude and Petitioner’s Opposition to Patent Owner’s Motion to
`Exclude, and corresponding Petitioner’s Reply to Patent Owner’s Opposition
`to Motion to Exclude and Patent Owner’s Reply to Petitioners’ Opposition
`of Motion to Exclude. Papers 64, 66, 68, 69, 70, 71. Patent Owner and
`Petitioner each also filed a Motion to Seal. Paper 47, 57. Oral argument
`was conducted on June 30, 2016. Transcripts of that argument has been
`made of record. Paper 79, “Tr.”; see also Paper 78.
`
`
`2 Takahiro Kiuchi and Shigekoto Kaihara, C-HTTP – The Development of a
`Secure, Closed HTTP-Based Network on the Internet, PROCEEDINGS OF THE
`SYMPOSIUM ON NETWORK AND DISTRIBUTED SYSTEM SECURITY, IEEE 64-75
`(1996) (Ex. 1002, “Kiuchi”).
`3 P. Mockapetris, Domain names – Concepts and Facilities, Network
`Working Group, Request for Comments: 1034 (1987) (Ex. 1005, “RFC
`1034”).
`4 E. Rescorla and A. Schiffman, The Secure HyperText Transfer Protocol,
`Feb. 1996 (Ex. 1004, “Rescorla”).
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`2
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`We have jurisdiction under 35 U.S.C. § 318(a). After considering the
`evidence and arguments of both parties, and for the reasons set forth below,
`we determine that Petitioner met its burden of showing, by a preponderance
`of the evidence, that claims 1, 2, 6–8, and 12–14 of the ’151 patent are
`unpatentable.
`
`
`RELATED MATTERS
`The ’151 patent is the subject of the following civil actions: (i) Civ.
`Act. No. 6:13-cv-00211-LED (E.D. Tex.), filed February 26, 2013; (ii) Civ.
`Act. No. 6:12-cv-00855-LED (E.D. Tex.), filed November 6, 2012; and (iii)
`Civ. Act. No. 6:10-cv-00417-LED (E.D. Tex.), filed August 11, 2010. Pet.
`1.
`
`The ’151 patent is also the subject of Reexamination Control Nos.
`95/001,697 and 95/001,714. Pet. 2.
`
`
`THE ’151 PATENT (EX. 1001)
`The ’151 patent discloses a system and method for automatic creation
`of a virtual private network (VPN) in response to a domain-name server
`look-up function. Ex. 1001, 36:58–60.
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`
`ILLUSTRATIVE CLAIM(S)
`Independent claim 1 is representative of the claimed subject matter.
`Claim 1 is reproduced below:
`1.
`A data processing device, comprising memory
`storing a domain name server (DNS) proxy module that
`intercepts DNS requests sent by a client and, for each intercepted
`DNS request, performs the steps of:
`(i)
`determining whether the intercepted DNS request
`corresponds to a secure server;
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`(ii) when the intercepted DNS request does not
`correspond to a secure server, forwarding the DNS request to a
`DNS function that returns an IP address of a nonsecure computer,
`and
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`(iii) when the intercepted DNS request corresponds to a
`secure server, automatically initiating an encrypted channel
`between the client and the secure server.
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`
`OVERVIEW OF PRIOR ART
`Kiuchi
`Kiuchi discloses closed networks (i.e., closed HTTP (Hypertext
`Transfer Protocol)-based network (C-HTTP)) of related institutions on the
`Internet. Ex. 1002, 64. A client and client-side-proxy “asks the C-HTTP
`name server whether it can communicate with the [specified] host” and, if
`“the query is legitimate” and if “the requested server-side proxy is registered
`in the closed network and is permitted to accept the connection,” the “C-
`HTTP name server sends the [requested] IP address.” Ex. 1002, 65. After
`confirmation by the C-HTTP name server “that the specified server-side
`proxy is an appropriate closed network member, a client-side proxy sends a
`request for connection to the server-side proxy, which is encrypted.” Id.
`The server-side proxy “accepts [the] request for connection from [the]
`client-side proxy” (Ex. 1002, 65) and, after the C-HTTP name server
`determines that “the client-side proxy is an appropriate member of the closed
`network,” that “the query is legitimate,” and that “the client-side proxy is
`permitted to access . . . the server-side proxy,” the “C-HTTP name server
`sends the IP address [of the client-side proxy].” Ex. 1002, 66. Upon receipt
`of the IP address, the server-side proxy “authenticates the client-side proxy”
`and sends a connection ID to the client-side proxy. After the client-side
`proxy “accepts and checks” the connection ID, “the connection is
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`established,” after which time, the client-side proxy forwards “requests from
`the user agent in encrypted form using C-HTTP format.” Ex. 1002, 66.
`
`
`RFC1034
`RFC 1034 discloses that a “name server may be presented with a
`query” and that the name server may either “pursue[] the query for the client
`at another server” (recursive approach) or “refer[] the client to another server
`and lets the client pursue the query” (iterative approach). Ex. 1005, 4.
`
`
`Rescorla
`Rescorla discloses syntax for securing messages sent using Hypertext
`Transfer Protocol. Ex. 1004, 1.
`
`
`ANALYSIS
`Patentability issues
`As Petitioner explains, Kiuchi discloses, for example, a data
`processing device, comprising memory storing a domain name server (DNS)
`proxy module that intercepts DNS requests sent by a client. See, e.g., Pet.
`25-28; Ex. 1003 at 18, 20–22, 27, 28, 31; Ex. 1002, 64–66. Kiuchi also
`discloses determining whether the intercepted DNS request corresponds to a
`secure server (Pet. 28–29; Ex. 1003, 23, 24, 26; Ex. 1002, 65), when the
`intercepted DNS request does not correspond to a secure server, forwarding
`the DNS request to a DNS function that returns a IP address of a nonsecure
`computer (Pet. 29–30; Ex. 1003, 23; Ex. 1002, 65), and when the intercepted
`DNS request corresponds to a secure server, automatically initiating an
`encrypted channel between the client and the secure server (Pet. 30–32; Ex.
`1003 23–25, 28–31; Ex. 1002, 64–66).
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`DNS Features
`Patent Owner argues that “Kiuchi does not disclose the recited DNS
`features” (PO Resp. 13) because “Kiuchi repeatedly differentiates its C-
`HTTP features from DNS.” PO Resp. 14 (citing Ex. 2038 41–42).
`Claim 1 recites a DNS request. The DNS request is “sent by a client,”
`potentially “corresponds to a secure server,” and may result in any one of a
`return of an IP address of a nonsecure computer or the initiation of an
`encrypted channel between the client and the secure server. Claim 1 does
`not appear to recite any other specific features of the DNS request.
`As Petitioner explains, Kiuchi discloses the “client-side proxy asks the
`C-HTTP name server whether it can communicate with the host specified in
`a given URL,” that the C-HTTP name server “examines whether the
`requested server-side proxy . . . is permitted to accept the connection from
`the client-side proxy,” and if so, “sends the IP address . . . of the server-side
`proxy.” Ex. 1002 65; Pet. 29.
`Patent Owner argues that the “request” of Kiuchi differs from the
`claimed “DNS request” because “Kiuchi explains that the C-HTTP name
`service is used ‘instead of DNS.’” PO Resp. 14. As Patent Owner points
`out, Kiuchi discloses that “[i]n a C-HTTP-based network” a “C-HTTP-based
`secure, encrypted name and certification service is used” “instead of DNS.”
`Ex. 1002, 64, Abstract. However, other than what is tantamount to a mere
`difference in nomenclature, Patent Owner does not point out specific
`differences between the “request” of Kiuchi and the “request” as claimed.
`As discussed above, Kiuchi discloses a “request” from a user agent (i.e.,
`“client”) that requests an IP address corresponding to a domain name with
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`subsequent formation of an encrypted channel (i.e., secure communication
`link) between the user agent (i.e., “client”) and origin server (i.e., “the secure
`server”), which appears to be the same as the request as claimed with the
`only apparent difference being the use of the descriptor “DNS” recited in
`claim 1. Furthermore, Patent Owner has argued in related proceedings that
`its claimed “secure domain name” “cannot be resolved by a conventional
`domain name service.” See, e.g., Apple Inc. v. Virnetx Inc., IPR2015-00870,
`slip. op. at 22 (PTAB Jan. 25, 2016) (Paper 23) (citing related reexamination
`proceedings advancing the argument) (emphasis added). This further
`obscures what Patent Owner intends to cover by the term “DNS.”
`In addition, we credit testimony of Dr. Fabian Monrose that the claim
`term “domain name service request” “does not limit it to . . . specific RFCs”
`and Dr. Monrose’s observation of the lack of “any analysis as to [a domain
`name service request] being limited or not thereof to a specific RFC.” Ex.
`1036, 104:21-22, 105:18-19; see also Ex. 1036, 106:15-16 (“I haven’t
`provided any analysis that [a request as claimed] must comply with any
`RFC”). During oral argument, in response to a questions asking what a DNS
`requires, Patent Owner declined to define it, generally contending that
`whatever it is, Kiuchi does not disclose it. See Tr. 70:6–12 (“I think one of
`ordinary skill in the art would know that. But clearly when a reference
`specifically tells you it is not using DNS, you don’t even have to go down
`that road,” id. 71:8–9 (processing the DNS request in Patent Owner’s
`invention “might not be conventional”), id. 71:1–74:24, 84:4–24 (“It is still a
`DNS request. . . . whether you want to call it conventional - - non-
`conventional or whatever.”). Hence, we disagree with Patent Owner’s
`implied contention that renaming a request that requests an IP address
`corresponding to a domain name that is capable of requesting access to a
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`secure web site (as disclosed by Kiuchi and as recited in claim 1) from
`“DNS request” to “C-HTTP-based . . . service . . . instead of DNS” alone is
`sufficient to create a patentable difference between requests that appear
`identical in all other respects.
`Patent Owner also argues that Kiuchi’s “request” differs from the
`claimed “request” because Kiuchi discloses “that the . . . DNS lookup is
`generated only if an error condition occurs in which C-HTTP connectivity
`fails.” PO Resp. 14. However, claim 1 does not appear to recite any
`specific steps to be performed with respect to an error condition or whether
`connectivity fails (or not) in conjunction with the (non-recited) error
`condition.
`
`Determining whether the DNS request corresponds to a Secure Server
`Petitioner explains that Kiuchi discloses “[t]he C-HTTP name server
`‘determin[es]’ whether the host in the C-HTTP name request sent by the
`client-side proxy is part of the closed network and whether the connection is
`permitted, and if so, returns an IP address and public key.” Pet. Reply. 8
`(citing Ex 1002 65). Hence Petitioner argues that Kiuchi discloses a client
`(i.e., client-side proxy) that sends a request to a domain name server (DNS)
`proxy module (i.e., C-HTTP name server) that returns a corresponding IP
`address. We agree with Petitioner. Ex. 1002, 65.
`Patent Owner argues “Kiuchi does not anticipate claim 1” because “it
`is the C-HTTP name server [of Kiuchi] . . . that examines whether the
`server-side proxy is registered in the closed network” (PO Resp. 17). Hence,
`Patent Owner does not appear to dispute that Kiuchi discloses a C-HTTP
`name server (or domain name server proxy module) that determines whether
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`the DNS request corresponds to a secure server, as recited in claim 1, for
`example.
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`Automatically initiating
`Patent Owner argues that Kiuchi fails to disclose automatically
`initiating an encrypted channel between the client and the secure server, as
`recited in claim 1, “because encryption does not extend to Kiuchi’s user
`agent” and “Kiuchi discourages end-to-end encryption, from a client to a
`target device.” PO Resp. 18. However, claim 1 does not recite “end-to-end
`encryption” or that encryption must extend to the user agent. For at least
`this reason, we are not persuaded by Patent Owner’s argument.
`In any event, as previously discussed, Kiuchi discloses establishing an
`encrypted channel between a client (i.e., “client-side proxy”) and a secure
`server (i.e., “server-side proxy”). Even assuming Patent Owner’s contention
`to be correct that one of skill in the art would have broadly but reasonably
`understood that a channel that is “between [A] and [B]” requires that the
`channel “extend[] from [A] and [B]” such that the channel “should be
`provided all the way from [one component] to [the other component]” (PO
`Resp. Br. 11), we agree that Petitioner has met its burden by a
`preponderance of the evidence that Kiuchi discloses an encrypted channel
`that extends from the client-side proxy (i.e., “client”) and the server-side
`proxy (i.e., “secure server”) or, alternatively, that an encrypted channel is
`“provided all the way from” the client-side proxy (i.e., “client”) to the server
`side proxy (i.e., “secure server”). See e.g., Paper 58 14; Ex. 1002 65-66.
`Patent Owner does not demonstrate persuasively a difference between such a
`channel and the encrypted channel between the client (“client-side proxy”)
`and secure server (“server-side proxy”) of Kiuchi.
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`Client
`Patent Owner argues that Petitioner relies “on Kiuchi’s client-side
`proxy for the ‘client’ part of the claimed ‘encrypted channel’” but that
`Kiuchi’s client-side proxy cannot be equated with ‘the “client” part of the
`claimed “encrypted channel” because “Petitioner Black Swamp is already
`relying on the client-side proxy for the claimed ‘domain name server (DNS)
`proxy module’.” PO Resp. Br. 19 (citing IPR2016-00167 Pet. 13).
`Petitioner Black Swamp explains that Kiuchi discloses an embodiment in
`which the “client-side proxy asks the C-HTTP name server whether it can
`communicate with the host.” IPR2016-00167 Pet. 20. In other words, in
`this embodiment relied upon by Petitioner and contrary to Patent Owner’s
`assertion, Petitioner equates Kiuchi’s “C-HTTP name server” (and not the
`client-side proxy) with the claimed DNS proxy module. Patent Owner does
`not explain sufficiently a difference between Kiuchi’s client-side proxy and
`the claimed client with respect to this issue.
`Patent Owner also argues that “Kiuchi’s client-side proxy is not a
`user’s computer” because “Kiuchi does not disclose any user associated with
`the client-side proxy.” PO Resp. Br. 20. Hence, Patent Owner disputes
`Petitioner’s mapping of Kiuchi’s client-side proxy to the claimed “client.”
`Pet. Reply. 10–12. We are not persuaded by Patent Owner’s argument.
`Claim 1 recites “client” but does not recite “user’s computer.” To the
`extent that Patent Owner argues that Kiuchi’s client-side proxy is not a
`“client,” as recited in claim 1 and even assuming Patent Owner to be correct
`that a “client,” as recited in claim 1, must be “associated with” a user, we are
`not persuaded by Patent Owner that Kiuchi fails to disclose that the client-
`side proxy is “associated with” a user. For example, Kiuchi discloses that
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`users within an institution (e.g., “hospitals and related institutions” – Ex.
`1002 64) are provided with access to “information [that is] shared among”
`institutions in which a “client-side proxy” receives a request for access from
`a user agent. One of skill in the art would have understood that in order for
`a user or “user agent” in an “institution” to provide a request to access
`information, the “user agent” (itself being “associated with” a user) would
`be “associated with” the “client-side proxy” to which the user agent sends a
`request. Otherwise, the user would be unable to send a request to the client-
`side proxy, the client-side proxy not being associated with the user in the
`first place. Hence, even assuming Patent Owner’s proposed definition to be
`correct that a “client” must be “associated with” a user, Patent Owner does
`not demonstrate sufficient differences between a “client-side proxy” of
`Kiuchi that is “associated with” a user (and receives a request from the
`associated user) and the claimed “client” that Patent Owner argues must be
`also be somehow “associated with” a user.
`Patent Owner argues that Kiuchi’s “client-side proxy” is distinct from
`the claimed “client” because, according to Patent Owner, Kiuchi provides
`“separate references to the ‘client’ and ‘client-side proxy.’” PO Resp. Br.
`21. We are not persuaded by Patent Owner’s argument at least because even
`assuming that Kiuchi refers to a “client” and “client-side proxy” separately
`as Patent Owner contends, Patent Owner does not point out sufficient
`differences between the “client-side proxy” of Kiuchi and a “client,” as
`recited in claim 1 for at least the previously stated reasons.
`Patent Owner argues that the Federal Circuit “found ‘evidence that the
`‘client’ of Kiuchi is actually a web browser, a component that is
`distinguishable from the client-side proxy.” PO Resp. 21 (citing VirnetX,
`Inc. v. Cisco Systems, Inc., 767 F.3d 1308, 1324 (Fed. Cir. 2014))).
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`Presumably, Patent Owner argues that the “client-side proxy” cannot be
`equated with the “client,” as recited in claim 1, because the Federal Circuit
`held that the “web browser” of Kiuchi must be equated with the claimed
`“client.” We are not persuaded by Patent Owner’s implied argument.
`First, the Federal Circuit held that “the district court did not err in
`denying [Defendant’s] JMOL motion with respect to invalidity” because
`“there was evidence that the ‘client’ of Kiuchi is actually a web browser.”
`Cisco, 767 F.3d at 1324. We disagree with Patent Owner’s implied
`argument that the Federal Circuit held that 1) Kiuchi’s “web browser” must
`be equated with the claimed “client,” 2) Kiuchi’s “client-side proxy” must
`not be equated with the claimed “client,” and 3) Kiuchi’s “web browser”
`(which is supposedly mandated by the Federal Circuit to be exclusively
`equated with the claimed “client”) differs materially from the claimed
`“client” such that Kiuchi fails to disclose a “client.” Rather, the Federal
`Circuit actually held that there was sufficient “evidence” that Kiuchi
`discloses a web browser as a “client” such that the district court did not err
`in denying defendant’s JMOL motion. See id. This holding does not
`address whether Kiuchi’s client-side proxy (which Petitioner equates with
`the claimed “client” in this embodiment) is the same as or is different (and,
`if so, in what way) from the claimed “client.”
`Second, as Patent Owner points out, the district court and the Federal
`Circuit do not construe claim terms under a broadest reasonable
`interpretation standard as we do. PO Resp. Br. 21–22. Hence, even
`assuming that the Federal Circuit held that the claim term “client” must be
`construed a particular way under a claim construction standard other than the
`broadest reasonable standard, Patent Owner does not explain sufficiently
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`how this would apply to the present proceedings in which a broadest
`reasonable standard is used.
`Patent Owner argues that despite the differing standards of claim
`construction, the Federal Circuit “has emphasized that the Board
`nevertheless has an ‘obligation to acknowledge that interpretation’ and ‘to
`assess whether it is consistent with the broadest reasonable construction of
`the term.” PO Resp. Br. 21–22 (citing Power Integrations, Inc. v. Lee, 797
`F.3d 1318, 1326 (Fed. Cir 2015)). We acknowledge the district court’s
`construction as being slightly narrower than our construction and as
`involving different evidence, arguments, and standards of proof. See
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–2146 (2016).
`Third, as previously discussed, Patent Owner contends that the
`Federal Circuit “found evidence that the ‘client’ of Kiuchi is actually a web
`browser, a component that is distinguishable from the client-side proxy.”
`Hence, the Federal Circuit states that the district court was presented with
`evidence that Kiuchi discloses a web browser that is a client and is not the
`same as the client-side proxy of Kiuchi. In other words, the Federal Circuit
`makes no comment on claim construction at all (under any standard, much
`less a broadest reasonable standard) since the “web browser” and the “client-
`side proxy” are both terms disclosed by Kiuchi and neither term is recited in
`claim 1, for example.
`
`
`Each Intercepted DNS Request
`Patent Owner argues that Kiuchi fails to disclose each step recited in
`claim 1 “for each intercepted DNS request.” PO Resp. Br. 24. As discussed
`above, Petitioner equates Kiuchi’s client-side proxy with the claimed
`
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`“client.” Kiuchi discloses that the “client-side proxy asks the C-HTTP name
`server whether it can communicate with the host specified in a given URL,”
`in response, the C-HTTP name server “examines whether the requested
`server-side proxy is . . . permitted to accept the connection,” and, if so, “the
`C-HTTP name server sends the IP address and public key of the server-side
`proxy [to the client-side proxy]” (Ex. 1002 65), and subsequently, “the
`connection is established.” Ex. 1002 66. Kiuchi does not appear to also
`disclose that this process is not performed. Therefore, we are not persuaded
`by Patent Owner’s argument.
`Hence, Petitioner has met its burden of demonstrating by a
`preponderance of the evidence that claim 1 is unpatentable.
`
`
`
`Claims 2, 6–8, and 12–14
`Claim 2 recites determining whether the client is authorized to access
`the secure server. Patent Owner argues that Kiuchi only discloses “checking
`whether” a server “is registered in the network” but fails to disclose
`determining whether a client is “authorized” to access the secure server, as
`recited in claim 2, because “whether the server-side proxy [of Kiuchi] is
`permitted to connect says nothing as to the client computer’s authorization.”
`PO Resp. 26. However, Patent Owner does not assert or demonstrate
`sufficiently a difference between 1) determining if a device is “permitted” to
`connect (as disclosed by Kiuchi) and establishing a connection between a
`client and the server only if the device is determined to be “permitted” to
`connect and 2) determining if the client is “authorized” to access the secure
`server. One of skill in the art would have understood that a client that is
`determined to be “permitted to connect” also would be determined to be
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`“authorized” to do so. Otherwise, the client would not be permitted to
`connect with the server, which would be contrary to the determination that
`the device is “permitted to connect.”
`Patent Owner does not provide additional arguments in support of
`claims 6–8 and 12–14 with respect to Kiuchi. PO Resp. Br. 25–26. As
`such, on this record, Petitioner has met its burden of demonstrating by at
`least a preponderance of the evidence that claims 2, 6–8 and 12–14 are
`unpatentable.
`
`Obviousness - Kiuchi and Rescorla and/or RFC 1034
`Patent Owner argues that Rescorla or RFC 1034 “do not remedy the
`deficiencies of Kiuchi.” PO Resp. Br. 28. However, as previously discussed
`and taking Patent Owner’s arguments into consideration, Petitioner has met
`its burden by demonstrating by at least a preponderance of the evidence that
`the disputed claims are unpatentable over Kiuchi. As such, no
`“deficiencies” of Kiuchi are identified. Therefore, we are not persuaded by
`Patent Owner’s argument.
`In any event, Petitioner relies upon Rescorla only to the extent that
`Kiuchi fails to disclose or suggest automatically initiating (or creating) a
`secure channel between a client and secure server or a secure channel
`“between” a client and a secure server. Pet 37–38. As discussed above, we
`agree with Petitioner that Petitioner has met its burden by demonstrating by
`at least a preponderance of the evidence that Kiuchi discloses these features.
`Petitioner relies upon RFC 1034 only in the event that the issue of
`whether Kiuchi only discloses “the allegedly ‘wrong’ network entity within
`Kiuchi’s architecture has responsibility for a given task” is raised. We do
`not identify an alleged “wrong” network entity performing a “responsibility
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`for a given task.” At least for this additional reason, we are not persuaded
`by Patent Owner’s argument.
`Patent Owner also argues that it would not have been obvious to one
`of ordinary skill in the art to have combined the teachings of Kiuchi with
`any one or both of Rescorla and/or RFC1034 because there was a “long-felt
`need” for “ways to easily and conveniently establish secure communication
`links, such as VPN communication links,” “others attempted to create easy-
`to-enable secure communications [but] failed,” “the technology was . . . met
`with skepticism,” “the claimed inventions have experienced commercial
`success, with multiple companies licensing the technology,” and “[t]hose in
`the industry have also praised the inventions.” PO Resp. 29, 31, 32, 33, 34.
`Hence, Patent Owner argues secondary considerations to rebut the prima
`facie showing of obviousness.
`
`Long Felt Need
`Patent Owner argues that “[p]rior to the claimed inventions, it was
`widely recognized that providing secure remote access to a LAN or WAN
`was extremely difficult for IT support desks” and that the claimed invention
`“combine[s] both the ease of use and the security aspects of a VPN, without
`sacrificing one or the other . . . by automatically initiating an encrypted
`channel between a client and a secure server through a DNS process as
`claimed.” PO Resp. 29 (citing Ex. 2050, 8, 9, 11, 131-132).
`Based on the evidence of record, we are not persuaded by Patent
`Owner’s argument that “it was widely recognized that providing secure
`remote access . . . was extremely difficult.” Rather, Patent Owner’s
`evidence indicate that “[r]emote access . . . [is] insecure and unreliable” but
`that “[y]ou can solve the security problem using client-to-LAN virtual
`
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`private network (VP
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