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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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`
`
`
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`THE MANGROVE PARTNERS MASTER FUND, LTD., APPLE INC., and
`BLACK SWAMP IP, LLC,
`Petitioner
`v.
`VIRNETX INC.,
`Patent Owner
`
`
`
`Case IPR2015-010471
`Patent 7,490,151
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`
`
`Patent Owner’s Opposition Brief
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`1 Apple Inc. and Black Swamp IP, LLC, who filed petitions in IPR2016-00063 and
`IPR2016-00167, respectively, have been joined as a Petitioner in the instant
`proceeding.
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`Case No. IPR2015-01047
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`The Federal Circuit’s Decision ........................................................................ 1
` Claim Construction .......................................................................................... 2
`A.
`“Client” .................................................................................................. 2
`B.
`“Between [A] and [B]” .......................................................................... 9
` Kiuchi Does Not Anticipate Claims 1, 2, 6-8, and 12-14 .............................10
`A. Kiuchi’s System ..................................................................................11
`B.
`Petitioners’ Mapping Fails to Demonstrate Anticipation ...................12
` Kiuchi Combined with RFC 1034, With or Without Rescorla, Does
`Not Render Obvious Claims 1, 2, 6-8, and 12-14 .........................................16
` The Board Should Not Rely on Dr. Guerin’s Testimony ..............................25
` The Board Should Draw an Adverse Inference Regarding the RPI or
`Privity Relationship Between Mangrove and RPX, and Terminate the
`Proceeding .....................................................................................................26
` A New Panel Should Consider this Remand Proceeding To Avoid
`Constitutional Concerns ................................................................................29
` The Proceedings Should Be Terminated in View of 35 U.S.C.
`§ 315(b) ..........................................................................................................29
`Conclusion .....................................................................................................30
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`Case No. IPR2015-01047
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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) ........................................................................... 27
`Applications in Internet Time, LLC v. RPX Corp.,
`897 F.3d 1336 (Fed. Cir. 2018) .......................................................................... 28
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019) .......................................................................... 29
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 2
`U.S. v. $671,160.00 in U.S. Currency,
`730 F.3d 1051 (9th Cir. 2013) ............................................................................ 28
`VirnetX Inc. v. Cisco Systems Inc.,
`767 F.3d 1308 (Fed. Cir. 2014) ............................................................ 1, 9, 12, 21
`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, 28, 29, 30
`35 U.S.C. § 315(c) ..................................................................................................... 2
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`Case No. IPR2015-01047
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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. 7,490,151 (“the ’151 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, and directed the
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`Board to construe the term “client.” The Court “agree[d] with VirnetX that the
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`Board erred in failing to resolve the claim construction dispute as to the meaning of
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`‘client.’” VirnetX, 778 F. App’x at 908. The Federal Circuit observed that
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`“VirnetX’s proposed construction [of ‘client’] is a user’s computer, not any device
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`that is associated with a user, however indirectly,” and instructed the Board to
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`“analyz[e] the language of [VirnetX’s] proposed construction, which the patent
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`owner response makes clear does not cover the client-side proxy.” Id.
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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 909, 911.
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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 Federal Circuit declined to address
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`that argument, finding VirnetX had not shown prejudice from Apple’s joinder, but
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`“le[ft] open the question of whether prejudice could arise” on remand. VirnetX, 778
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`F. 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
`“Client”
`A.
`The proper construction of “client” is a “user’s computer.” (PO Response at
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`8-10.) The claims recite initiating/creating the encrypted/secure channel between a
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`client and a secure server. (See, e.g., Ex. 1001 at claim 1.) One of ordinary skill in
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`the art would read “client computer” in the claims in view of the specification—the
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`“single best guide to the meaning of a disputed term,” Phillips v. AWH Corp., 415
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`F.3d 1303, 1315 (Fed. Cir. 2005) (en banc). (Ex. 2038 at ¶ 26.) The specification
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`explains that the claimed inventions allow for secure communications between a
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`user’s computer and a target computer. Thus, the “Background of the Invention”
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`describes the importance of securing communications between an originating
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`terminal 100 where a user is located and a destination terminal 110 that hosts a web
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`site. (Ex. 1001 at 1:26-42.) The “Summary of the Invention” offers an example
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`where the originating terminal is a laptop computer used by an executive and that a
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`destination terminal is a server. (See id. at 4:66-5:19.) The “Detailed Description
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`of the Invention” explains that a VPN is created between a user’s computer running
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`a web browser and a secure target site. (See id. at 37:50-38:2.)
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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 37:66-38:2; 38:60-
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`61 (“secure VPN is established between the user’s computer and the secure target”);
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`Ex. 2038 at ¶ 26.) In these embodiments, the “user computer,” which communicates
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`via VPN with the “target computer,” is the claimed “client.” The specification also
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`explains that it is the “user’s computer” that performs “client” functions. It explains
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`that the “user’s computer 2501 includes a client application.” (Ex. 1001 at 37:1-3;
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`see also id. at 37:51-52 (“[a] user’s computer 2601 includes a conventional client
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`(e.g., a web browser)”).) It discloses an embodiment that checks whether “client
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`3103 is a validly registered user” (id. at 44:43-44), and another where “client
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`computer 801” is shown as a user’s computer, namely a laptop device (id. at 15:61-
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`62; Fig. 8). In every example, the computer at the other end of the encrypted/secure
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`channel from the “secure server”—the claimed “client”—is the computer being
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`operated by the user.
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`The specification also expressly distinguishes the “client” from proxies like
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`Kiuchi’s client-side proxy. It explains that a “proxy” is something that is “interposed
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`between client and destination.” (Ex. 1001 at 1:60-64 (emphasis added); see id. at
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`1:64-65 (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” is consistent with the ’151 patent’s description of the same as a
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`“user’s computer.” (Ex. 2038 at ¶¶ 27-28.) The dictionary defines “client machine”
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`as “[a] user’s workstation that is attached to a network.” (Ex. 2028 at 3.) The
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`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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`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 9-10.) Each of those definitions demonstrates that the
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`“client,” as used in the ’151 patent, is a user’s computer.2
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`By contrast, Petitioners’ proposed definition of “client” as a “device,
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`computer, system, or program from which a data request to a server is generated,”
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`Pet. at 15; Petitioners’ Remand Brief, Paper 104 at 6-7, finds no support in the text
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`of the claims or the specification. Petitioners incorrectly characterize expert
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`testimony when they contend that “[b]oth experts agreed that a skilled person would
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`2 Petitioners’ assertion that “[n]umerous dictionaries … including ones cited by
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`VirnetX” confirm its position is simply not correct. (Petitioners’ Remand Brief,
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`Paper 104 at 7 n.3 (citing Exs. 2028, 1014, 1037, 1043).) Exhibit 2028 is discussed
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`above and repeatedly equates a client with a user’s computer. Exhibit 1014 is an
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`RFC, not a dictionary. In any event, while Exhibit 1014 defines “client” as “[a]n
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`application program that establishes connections for the purpose of sending
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`requests,” it also defines a “user agent” as “[t]he client which initiates a request,”
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`Ex. 1014 at 5 (emphasis added)—a definition that supports VirnetX’s construction.
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`Exhibits 1037 and 1043 discuss “client” in a similar manner.
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`5
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`have understood a conventional ‘client’ to be any application that generates a request
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`for data from a server.” (Petitioners’ Remand Brief, Paper 104 at 7 (citing Ex. 1003
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`¶ 16; Ex. 1036 at 97:8-15, 101:1-10).) Dr. Monrose mentioned that the term “client
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`computer” in U.S. Patent No. 6,502,135 (“the ’135 patent”) should be viewed “in
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`the context of a client/server relationship” (Ex. 1036 at 97:8-15), but emphasized
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`that, in light of the ’135 patent and the specification’s “repeated references and
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`connections between the user’s computer and the client computer,” a skilled artisan
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`would “view[] the client computer as the user’s computer” (Ex. 1036 at 97:1-6).
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`And Dr. 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.” Paradoxically, that
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`could even include the server itself, which can generally request data from another
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`server. Such an illogical construction—one that does violence to the claim language
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`and the specification—cannot be correct.
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`Petitioners attempt to anchor their proposed construction in the specification,
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`Petitioners’ Remand Brief, Paper 104 at 8-9, but profoundly misread it. They invoke
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`the specification’s statement that “[a] user’s computer 2601 includes a conventional
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`client (e.g., a web browser) 2605.” (Ex. 1001 at 37:51-52, quoted in Petitioners’
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`Remand Brief, Paper 104 at 8.) That example, however, shows that the “client” is a
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`“user’s computer,” running applications like web browsers that would run on a
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`computer being operated by a user, and not on a proxy. It thus supports VirnetX’s
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`construction, not Petitioners’.3
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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 38:54-57, quoted in Petitioners’ Remand Brief, Paper 104
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`at 8.) Again, this reference reinforces VirnetX’s proposed construction. The
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`security level sent back to the “user’s computer” is for a user, and the computer that
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`receives that message is the computer employed by the user to request information
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`from the secure target site (e.g., item 2601 depicted in Figure 26). These features
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`are entirely consistent with those relating to the claimed “client” (defined as a “user’s
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`computer”) in 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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`3 As explained below, infra at Section V, this construction is irreconcilable with
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`Petitioners’ argument that Kiuchi’s client-side proxy is the claimed “client.” It is
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`undisputed that Kiuchi’s client-side proxy does not contain any such user-facing
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`software, such as a browser.
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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 38:59-66, quoted in Petitioners’ Remand Brief, Paper 104 at 8, is
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`entirely consistent with the features relating to the claimed “client” in the context of
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`the claims. Here, the specification describes establishment of a VPN between the
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`user’s computer and the secure target site, but does not distinguish a “client” from a
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`“user’s computer.” On the contrary, they are described synonymously.
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`Another portion of the specification Petitioners invoke (Ex. 1001 at 44:8-11,
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`cited in Petitioners’ Remand Brief, Paper 104 at 8) describes a “Signaling
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`Synchronizer” embodiment where a large number of users communicate with a
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`central node. The description of a user’s computer in that portion is again consistent
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`with that of a “client” as a computer used by a user to access a web site. (See Ex.
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`1001 at 43:50-65.) Nothing in this portion of the specification draws a distinction
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`between a user’s computer and a client; instead, the two terms are entirely consistent
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`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.” (Petitioners’ Remand Brief, Paper 104 at 9.) None of
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`the embodiments Petitioners invoke support their proposed construction. The first
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`portion of the specification Petitioners cite (Ex. 1001 at 31:26-33) 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” (Petitioners’ Remand Brief, Paper 104 at 9). This
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`portion of the specification describes routers and an ISP, and does not speak to the
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`establishment of a VPN. Petitioners’ reference to the next portion of the
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`specification (Ex. 1001 at 35:65-67) is equally unavailing. This portion refers to
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`Figure 24, and describes use of routers to assist in communications between
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`computers 2401 and 2402. Nothing in this disclosure 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, the Board should construe the claimed term “client” as a
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`“user’s computer.
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`“Between [A] and [B]”
`B.
`Claims 1, 2, 6-8, and 12-14 all include a phrase written in the form “between
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`[A] and [B].” In related district court proceedings, Patent Owner’s adversaries
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`argued that “between [A] and [B]” should be construed as “extending from [A] to
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`[B].” (See, e.g., Ex. 2031 at 25-26.) The district court reached the same
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`construction. (See, e.g., Ex. 2029 at 26.) This construction is supported by the
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`claims and the specification. (Ex. 2038 at ¶¶ 29-30.) For example, claim 1 recites
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`“automatically initiating an encrypted channel between the client and the secure
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`server.” (Ex. 1001 at 46:66-67 (emphasis added).) The specification explains that
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`security and anonymity should be provided all the way from an originating terminal
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`to a destination terminal. (Id. at 1:30-48.) As Petitioner Apple has previously
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`recognized, if “between [A] and [B]” does not mean “extending from [A] to [B],”
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`“the entire security objective of the patents would be undermined because there
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`would be unprotected gaps along the way.” (Ex. 2031 at 22.)4
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` Kiuchi Does Not Anticipate Claims 1, 2, 6-8, and 12-14
`“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)). Petitioners attempt to contort Kiuchi to support their arguments, but Kiuchi
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`is a fundamentally different system than that required by challenged claims 1, 2, 6-
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`4 While the Board previously noted that “claim 1 does not recite ‘end-to-end
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`encryption’ or that encryption must extend to the user agent,” (Paper 80 at 9),
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`resolution of the construction was not relevant under the Board’s prior client-side
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`proxy to server-side proxy mapping.
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`8, and 12. Because Kiuchi does not disclose each and every feature of claims 1, 2,
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`6-8, and 12, it cannot anticipate these claims.
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`A. Kiuchi’s System
`The Federal Circuit provided a detailed description of how Kiuchi works. As
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`an initial matter, “[i]ts system consists of five relevant elements: a user agent (also
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`referred to as a client), a client-side proxy, a C-HTTP name server, a server-side
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`proxy, and an origin server.” VirnetX, 778 F. App’x at 905. “The user agent and
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`client-side proxy communicate behind one firewall, and the origin server and server-
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`side proxy communicate behind another.” Id. “When the user agent requests access
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`to a host, the client-side proxy asks the C-HTTP name server whether it can
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`communicate with that host,” which causes “[t]he C-HTTP name server to check[]
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`whether the server-side proxy associated with that host is registered on the network
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`and is permitted to accept the connection from the client-side proxy.” Id. “If [the
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`C-HTTP name server] determines the communication is not permitted, it returns an
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`error code to the client-side proxy, which then acts as a typical DNS.” Id. On the
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`other hand, “[i]f the communication is permitted, the C-HTTP name server sends the
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`server-side proxy’s information to the client-side proxy, which then sends a
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`connection request to the server-side proxy.” Id. “The server-side proxy similarly
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`communicates with the C-HTTP server to verify the request,” and then, “[o]nce
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`verified, a connection between the client-side and server-side proxies is established,
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`and communication occurs over a secure, encrypted protocol.” Id. “All encryption
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`and decryption occur at the proxies, and the user agent and origin server receive the
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`relevant decrypted 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’ Mapping Fails to Demonstrate Anticipation
`B.
`The Federal Circuit found on appeal that “substantial evidence does not
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`support the Board’s finding of anticipation of claims 1-2, 6-8, and 12-14 of the ’151
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`based on Kiuchi.” VirnetX, 778 F. App’x at 911. Petitioners nonetheless ask for a
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`second bite at the apple and argue that Kiuchi can anticipate if its client-side proxy
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`is mapped to the claimed “DNS proxy module.” (Petitioners’ Remand Brief, Paper
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`104 at 10.) For context, as the Federal Circuit observed, this is a mapping that
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`Petitioners originally offered in their Petition, but later abandoned on reply. VirnetX,
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`778 F. App’x at 906.5 It does not appear the Federal Circuit even intended for
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`anticipation to be revisited, as the Federal Circuit did not instruct the Board to do so,
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`and instead instructed the Board to “consider Petitioners’ obviousness challenges in
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`light of this opinion.” VirnetX, 778 F. App’x at 908. Petitioners’ rediscovered
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`mapping suffers from much of the same problems as those in the mapping rejected
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`by the Federal Circuit and cannot withstand scrutiny.
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`First, in finding that substantial evidence did not support the Board’s finding
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`of anticipation, the Federal Circuit provided critical guidance. In particular, it
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`explained that
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`the DNS proxy module
`that
`[t]he claims require
`“forward[s] the DNS request to a DNS function that
`returns an IP address of a nonsecure computer” “when the
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`5 Petitioners seem to hesitate on their basis since, at one point, they suggest they are
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`relying on the combination of Kiuchi’s client-side proxy and C-HTTP name server.
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`(Petitioners’ Remand Brief, Paper 104 at 13.) However, all of the analysis presented
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`by Petitioners focuses solely on attempting to show that Kiuchi’s client-side proxy
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`can be mapped to the claimed “DNS proxy module.” (See id. at 10-15; see also id.
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`at 15 (contending that “[t]here is no such ‘merging’”).) As such, any subsequent
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`attempt by Petitioners to rely on the combination in these remand proceedings should
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`be rejected.
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`intercepted DNS request does not correspond to a secure
`server.” That is not how Kiuchi’s system works. Instead,
`if a connection between the client-side and server-side
`proxies is not permitted, the C-HTTP name server sends
`an error status to the client-side proxy. … Upon receipt,
`the client-side proxy “performs DNS lookup, behaving
`like an ordinary HTTP/1.0 proxy.” … The C-HTTP name
`server does not forward a DNS request to a DNS function,
`but rather sends an error message back to what the Board
`relied on as the claimed “client.”
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`VirnetX, 778 F. App’x at 906-07 (emphasis added). Kiuchi’s client-side proxy fares
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`no better. Indeed, Petitioners do not even attempt to explain how the client-side
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`proxy “forward[s] the DNS request to a DNS function that returns an IP address of
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`a nonsecure computer,” as recited in all of the independent claims. It does not.
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`Rather, as the Federal Circuit observed, Kiuchi simply discloses that “[i]f the client-
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`side proxy receives an error status, then it performs DNS lookup, behaving like an
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`ordinary HTTP/1.0 proxy.” (Ex. 1002 at 8.) Just like the Federal Circuit observed
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`with respect to the C-HTTP name server, there is no disclosure of any forwarding of
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`the DNS request to a DNS function. This is fatal to Petitioners’ position and supports
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`a finding that Petitioners failed to meet their burden to prove anticipation.
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`Second, Kiuchi’s client-side proxy does not disclose “determining whether
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`[the/a] [intercepted DNS request / DNS request sent by a client] corresponds to a
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`14
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`secure server,” as recited in all of the independent claims. Indeed, Petitioners only
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`Case No. IPR2015-01047
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`point to operations performed by the C-HTTP name server—which the Federal
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`Circuit said cannot map to the DNS proxy module—to show that this “determining”
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`step is performed by the DNS proxy module. (See, e.g., Petitioners’ Remand Brief,
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`Paper 104 at 11-12.) And while Petitioners appear to suggest that the C-HTTP name
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`server’s determination can be imputed to the client-side proxy because the client-
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`side proxy receives information responsive to the C-HTTP name server’s
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`determination, Petitioners cite no legal support for that contention. (Id. at 12-13.)
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`Indeed, the Board appears to have previously agreed that only the C-HTTP name
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`server performs an operation that it believed could map to the claimed
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`“determining.” (Final Written Decision, Paper 80 at 8-9.)
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`Third, Petitioners’ anticipation-based mapping suffers from yet another
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`problem. Claims 1 and 7 require “an encrypted channel between the client and the
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`secure server,” and claim 13 similarly requires “a secure channel between the client
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`and the secure server.” Kiuchi, however, only discloses a C-HTTP link between the
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`client-side proxy and the server-side proxy. (See, e.g., Ex. 2039 at 19:7-18
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`(Petitioners’ expert admitting that “the client-side proxy and the server-side proxy
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`are communicating using C-HTTP, and you have user agent and origin servers that
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`are only running HTTP/1.0”), 21:3-7 (Petitioners’ expert admitting that the
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`“encrypted communications in the C-HTTP connection between the proxies . . .
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`15
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`doesn’t extend past [the] proxies to the origin server or the user agent”).) Indeed,
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`Case No. IPR2015-01047
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`Kiuchi explains that its “approach is aimed at assuring proxy-proxy security” and is
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`“fundamentally different” from “[o]ther secure protocols [that] are designed to be
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`implemented in origin servers and user agents in order to assure ‘end-to-end’
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`security protection.” (Ex. 1002 at 10-11.) Kiuchi discourages end-to-end
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`encryption, from a client to a target device, so that “no end-user has any chance to
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`obtain keys for encryption or decryption” and compromise security. (Id. at 11.) As
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`such, Kiuchi cannot disclose the claimed “[encrypted/secure] channel between the
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`client and the secure server.”6 Petitioners’ analysis comes down to the bare assertion
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`that Kiuchi “establishes an encrypted C-HTTP connection which allows the user
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`agent and origin server to securely communicate.” (Petitioners’ Remand Brief,
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`Paper 104 at 12-13.) Kiuchi’s C-HTTP connection, however, does not extend
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`between the user agent and origin server. (Ex. 1002 at 11 (“C-HTTP-based
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`communication is performed only between two types of C-HTTP proxies and
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`between a C-HTTP proxy and C-HTTP name server.”).) For this additional reason,
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`Petitioners failed to meet their burden to demonstrate anticipation by Kiuchi.
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` Kiuchi Combined with RFC 1034, With or Without Rescorla, Does Not
`Render Obvious Claims 1, 2, 6-8, and 12-14
`Petitioners’ obviousness-based mapping suffers from even more problems
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`6 Petitioners rely on encryption to address the limitations of claim 13.
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`than their anticipation-based mapping, and likewise cannot support a finding of
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`Case No. IPR2015-01047
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`unpatentability of the challenged claims.
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`First, Petitioners’ acknowledge that their “obviousness ground relies on
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`Kiuchi’s client-side proxy as the ‘client’.” (Petitioners’ Remand Brief, Paper 104 at
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`16; see also id. at 24.) Kiuchi’s client-side proxy is not a “client” under VirnetX’s
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`construction of the term. Kiuchi does not disclose any user associated with the
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`client-side proxy; in fact, Petitioner Apple’s own expert admitted so in district court
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`litigation. (See, e.g., Ex. 2041 at 37:9-18, 43:10-13, 46:16-19, 53:18-23.) Indeed,
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`Apple’s expert was unequivocal. When asked to confirm that “there’s no user … at
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`this client-side proxy,” he emphatically stated “No. There’s no user,” and suggested
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`only that his opinion could stand because he did not “think that’s needed in the
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`claims.” (Id. at 53:18-23.) In Kiuchi, the user’s computer is the user agent, not the
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`client-side proxy. (See, e.g., Ex. 1002 at 8; Ex. 2038 at ¶ 48; see also Ex. 2041 at
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`50:7-14 (the user agent “would be read naturally as a client computer”).)
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`Petitioners nonetheless argue that “Kiuchi’s client-side proxy is a ‘client’ even
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`under VirnetX’s construction.” (Petitioners’ Remand Brief, Paper 104 at 27.)
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`Specifically, Petitioners argue that “[t]he Board was [previously] correct to
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`determine that” Kiuchi’s client-side proxy is a client even under VirnetX’s
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`construction because it is associated with the user agent. (Id.) The Federal Circuit
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`has already weighed in on this approach and rejected it:
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`17
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`Case No. IPR2015-01047
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`The Board declined to explicitly construe “client”
`because, in its view, Kiuchi’s client-side proxy is a client
`even under VirnetX’s construction. But it only reached
`this determination by redefining VirnetX’s proposed
`construction so that the client-side proxy is a “client” as
`long as it is associated with a user. After twisting
`VirnetX’s proposed construction, the Board found that the
`client-side proxy meets this definition because it is
`“associated with” the user agent, which is “associated
`with” a user. … VirnetX’s proposed construction is a
`user’s computer, not any device that is associated with a
`user, however indirectly.
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`VirnetX, 778 F. App’x at 908.
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`Petitioners also argue that “Kiuchi’s firewall proxies have ‘users’ in the form
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`of the ‘administrators of proxies on the firewall.’” (Petitioners’ Remand Brief, Paper
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`104 at 27.) This is a new argument that Petitioners did not present in their Petition
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`or their Reply during the original proceeding, and thus is not properly within the
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`scope of remand. VirnetX would be prejudiced if the Board were to consider this
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`argument, as VirnetX has had no opportunity to submit evidence (e.g., expert
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`testimony, documentary evidence, etc.) on the issue. Regardless, Petitioners are
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`wrong to twist VirnetX’s construction to somehow equate “user” with any “human”
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`out of context. Any administrator of Kiuchi’s client-side proxy would not be a user
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`of the claimed system as required by the claims, but rather an administrator for
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`18
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`processes associated with the proxy operations. In fact, the one place where Kiuchi
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`Case No. IPR2015-01047
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`mentions an administrator, Kiuchi notes that in some cases, “administrators of
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`proxies on the firewall can not know the contents of any information exchanged.”
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`(Ex. 1002 at 12.) Thus, Kiuchi distinguishes a user at a user agent, who initiates a
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`request for information at the origin server, from any potential administrator
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`associated with a client-side proxy. This point is consistent with the ’151 patent,
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`which explicitly distinguishes between users and administrators. (Se
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