Paper No. 17
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`VIRNETX INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2016-00331
`U.S. Patent No. 8,504,696
`
`––––––––––––––––––
`
`PETITIONER’S REPLY BRIEF
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`VIRNETX INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2016-00331
`U.S. Patent No. 8,504,696
`
`––––––––––––––––––
`
`PETITIONER’S REPLY BRIEF
`
`
`
`
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`IPR2016-00331
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`Petitioner’s Reply (Paper 17)
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`Table of Contents
`
`I.
`
`II.
`
`Introduction .................................................................................................... 1
`
`Effect of Recent Federal Circuit Decisions ................................................. 2
`
`III. Claim Construction ....................................................................................... 3
`
`IV. Beser and RFC 2401 Render Claims 1-11, 14-25, and 28-30 Obvious ..... 5
`
`A. A Person of Ordinary Skill Would Have Combined Beser and RFC
`2401 ....................................................................................................... 6
`
`B.
`
`Independent Claims 1 and 16 .............................................................. 11
`
`1.
`
`2.
`
`3.
`
`As Found in Prior Final Written Decisions Handling
`Substantially Similar Claims, Beser Teaches a Request to
`Lookup an IP Address ............................................................... 11
`
`Beser Teaches “Intercepting” a Request to Lookup an IP
`Address as the Board has Repeatedly Found ............................ 15
`
`Beser and RFC 2401 Teach a “Virtual Private Network
`Communication Link” .............................................................. 17
`
`C.
`
`Dependent Claims ............................................................................... 18
`
`1.
`
`2.
`
`3.
`
`Claims 3 and 18 ......................................................................... 18
`
`Claims 4-5 and 19-20 ................................................................ 19
`
`Claims 2, 6-11, 14-15, 17, 21-25, and 28-30 ............................ 20
`
`V. RFC 2401 Is a Prior Art Printed Publication ........................................... 20
`
`VI. Dr. Tamassia’s Testimony is Probative ..................................................... 22
`
`VII. Conclusion .................................................................................................... 25
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`IPR2016-00331
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`Petitioner’s Reply (Paper 17)
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`TABLE OF AUTHORITIES
`
`Cases
`
`Page(s)
`
`Arthrocare Corp. v. Smith & Nephew, Inc.,
`406 F.3d 1365 (Fed. Cir. 2005) .......................................................................... 14
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .................................................................... 24, 25
`
`Bourns, Inc. v. U.S.,
`537 F.2d 486 (Ct. Cl. 1976) .................................................................................. 2
`
`Brand v. Miller,
`487 F.3d 862 (Fed. Cir. 2007) ............................................................................ 24
`
`Guangdong Xinbao Elec. Appliances Holdings v. Adrian Rivera,
`IPR2014-00042, Paper 50 (Feb. 6, 2015) ........................................................... 24
`
`Ohio Willow Wood Co. v. Alps South, LLC,
`735 F.3d 1333 (Fed. Cir. 2013) ........................................................................ 2, 5
`
`Poole v. Textron, Inc.,
`192 F.R.D. 494 (D. Md. 2000) ........................................................................... 22
`
`S. Corp v. U.S.,
`690 F.2d 1368 (Fed. Cir. 1982) (en banc) ............................................................ 2
`
`Schumer v. Lab. Computer Sys., Inc.,
`308 F.3d 1304 (Fed. Cir 2002) ........................................................................... 24
`
`Sundance, Inc. v. Demonte Fabricating Ltd,
`550 F.3d 1356 (Fed. Cir. 2008) .......................................................................... 23
`
`Titanium Metals Corp. v. Banner,
`778 F.2d 775 (Fed. Cir. 1985) ............................................................................ 25
`
`U.S. v. Taylor,
`166 F.R.D. 356 (M.D.N.C.) aff’d, 166 F.R.D. 367 (M.D.N.C.
`1996) ................................................................................................................... 22
`
`Virnetx Inc. v. Apple Inc.,
`No. 2016-1211, 2016 WL 7174131 (Fed. Cir. Dec. 9, 2016) .......................... 1, 3
`
`ii
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`IPR2016-00331
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`Petitioner’s Reply (Paper 17)
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`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) .............................................................................. 5
`
`Statutes
`
`35 U.S.C. § 6 ............................................................................................................ 25
`
`35 U.S.C. § 318(b) ..................................................................................................... 5
`
`Other Authorities
`
`37 CFR 42.73(d)(3) ............................................................................................ 2, 4, 5
`
`Fed. R. Evid. 702 ..................................................................................................... 23
`
`IPR2014-00237, Paper 41(May 14, 2014) ........................................................passim
`
`IPR2014-00481, Paper 35 (Aug. 24, 2015) ........................................................... 1, 3
`
`IPR2015-000812, Paper 43 ........................................................................................ 4
`
`IPR2015-00810, Paper 44 (Aug. 30, 2016) ......................................................passim
`
`IPR2015-00812, Paper 43 (Aug. 30, 2016) ............................................................... 1
`
`IPR2015-00866, Paper 39 (Sept. 28, 2016) ......................................................passim
`
`IPR2015-00868, Paper 39 (Sept. 28, 2016) ......................................................... 1, 19
`
`IPR2015-00870, Paper 39 (Sept. 28, 2016) ............................................................... 1
`
`
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`iii
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`IPR2016-00331
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`Petitioner’s Reply (Paper 17)
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`Ex. #
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`
`1009
`1010
`1011
`1012
`1013
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`1014
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`1015
`1016
`1017
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`1018
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`1019
`1020
`1021
`1022
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`UPDATED EXHIBIT LIST
`
`Reference Name
`U.S. Patent 8,504,696
`U.S. Patent 8,504,696 File History
`[RESERVED]
`[RESERVED]
`Declaration of Roberto Tamassia
`Curriculum Vitae of Roberto Tamassia
`U.S. Patent 6,496,867 to Beser
`Kent, S., et al., RFC 2401, “Security Architecture for the Internet
`Protocol” (November 1998)
`Aventail Connect v3.01/v2.51 Administrator’s Guide (1996-1999)
`Aventail Connect v3.01/v2.51 User’s Guide (1996-1999)
`Aventail ExtraNet Center v3.0 Administrator’s Guide (NT and UNIX)
`U.S. Patent 5,237,566 to Brand
`Handley, M., et al., RFC 2543, SIP: Session Initiation Protocol (March
`1999)
`RFC 793, DARPA Internet Program Protocol Specification
`(September 1991)
`U.S. Patent Number 6,430,176 to Christie
`U.S. Patent Number 6,930,998 to Sylvain
`Patent Owner Preliminary Response, IPR2014-00237, Paper 12
`(March 6, 2014)
`Leech, M., et al., RFC 1928, SOCKS Protocol Version 5 (March
`1996)
`Microsoft Computer Dictionary (4th Ed.)
`U.S. Patent Number 6,408,336 to Schneider
`U.S. Patent Number 5,633,934 to Hember
`Declaration of James Chester, Reexamination 95/001,697
`
`i
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`IPR2016-00331
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`Petitioner’s Reply (Paper 17)
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`Ex. #
`1023
`1024
`1025
`1026
`
`1027
`1028
`
`1029
`1030
`1031
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`1038
`
`1039
`
`1040
`1041
`
`1042
`
`Reference Name
`Declaration of Chris Hopen, Reexamination 95/001,697
`U.S. Patent 6,557,037 to Provino
`Gunter, M., “Virtual Private Networks Over the Internet” (1998)
`Patent Owner Preliminary Response, IPR2014-00404, Paper 9 (May
`19, 2014)
`von Sommering, S., Space Multiplexed-Electrochemical Telegraph
`Licklider, J.C.R., Memorandum for Members and Affiliates of the
`Intergalactic Computer Network (December 11, 2001)
`BBN Report No. 1822, Interface Message Processor (January 1976)
`Koblas, D., et al., “SOCKS-Usenix Unix Security Symposium III”
`Windows NT for Dummies
`Mockapetris, P., RFC 882, “Domain Names – Concepts and Facilities”
`(November 1983)
`Mockapetris, P., RFC 883, “Domain Names – Implementation and
`Specification” (November 1983)
`Mockapetris, P., RFC 1034, “Domain Names – Concepts and
`Facilities” (November 1987)
`Mockapetris, P. RFC 1035, “Domain Names – Implementation and
`Specification” (November 1987)
`Bradner, S., RFC 2026, “The Internet Standards Process – Revision 3”
`(October 1996)
`Rosen, E., et al., RFC 2547, “BGP/MPLS VPNs” (March 1999)
`W3C and WAP Forum Establish Formal Liason Relationship
`(December 8, 1999)
`Wireless Application Protocol (WAP) Architecture Specification
`(April 30, 1998)
`H.323 ITU-T Recommendation (February, 1998)
`Kiuchi, T., et al., “C-HTTP – The Development of a Secure, Closed
`HTTP-Based Network on the Internet” (IEEE 1996) LOC Stamped
`VirnetX’s Opening Claim Construction brief, VirnetX, Inc. v. Cicso
`Systems, Inc., et al., Civil Action No. 6:10-cv-417 (EDTX)
`ii
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`IPR2016-00331
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`Ex. #
`
`1043
`1044
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`1050
`1051
`1052
`1053
`1054
`1055
`
`1056
`1057
`1058
`1059
`1060
`
`
`1061
`
`
`1062
`
`Reference Name
`(November 4, 20111)
`Declaration of Michael Fratto, Reexamination 95/001,682
`U.S. Patent 5,898,830 to Wesinger
`Steiner, J., et al., “Kerberos: An Authentication Service for Open
`Network Systems” (January 12, 1988)
`Harkins, D., et al., RFC 2409, “The Internet Key Exchange (IKE)
`(November 1998)
`Maughan, D., et al., “Internet Security Association and Key
`Management Protocol (ISAKMP)” (November 1998)
`Data-Over-Cable Interface Specifications (DOCIS), Radio Frequency
`Interface Specification (March 26, 1997)
`U.S. Patent 6,886,095 to Hind et al.
`[RESERVED]
`[RESERVED]
`U.S. Patent 6,609,148 to Salo et al.
`Dell Computer Corp., Fiscal 1999 in Review (1999)
`Charlie Scott et al., Virtual Private Networks (2nd ed. 1999)
`Deposition of Fabien Newman Monrose, PhD., IPR2014-00237,
`Exhibit 1083 (October 23, 2014)
`Declaration of Scott M. Border
`[RESERVED]
`[RESERVED]
`[RESERVED]
`Declaration of Sandy Ginoza on behalf of the RFC Publisher for the
`Internet Engineering Task Force, dated January 23, 2013, submitted in
`Investigation No. 337-TA-858
`Kent, S., et al., RFC 2401, “Security Architecture for the Internet
`Protocol” (November 1998), bearing Bates Nos. 337-TA-858-
`IETF001122 through 001183
`Redline comparison of Exhibit 1008 (IPR2015-00810) to Exhibit 1061
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`iii
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`Ex. #
`1063
`
`1064
`
`1065
`
`1066-76
`1077
`
`Reference Name
`Transcript of Feb. 8, 2013 deposition of Sandy Ginoza, ITC Inv. No.
`337-TA-858
`The Reality of Virtual Private Networks, InfoWorld, Aug. 16, 1999
`(Advertising Supplement)
`Mark Gibbs, IP Security: Keeping your business private,
`NetworkWorld, Mar. 15, 1999
`[RESERVED]
`Transcript of Mar. 3, 2016 deposition of Fabian Monrose (IPR2015-
`00810, 811, 812)
`
`iv
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`
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`IPR2016-00331
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`I.
`
`Introduction
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`
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`Petitioner’s Reply (Paper 17)
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`In its Institution Decision, the Board correctly found that Beser and RFC
`
`2401 render claims 1-11, 14-25, and 28-30 of the ’696 patent obvious. Paper 9
`
`(Dec.), 12-29. The Board’s findings are consistent with other Final Written
`
`Decisions concerning related patents, in which claims substantially similar to the
`
`’696 claims were likewise found obvious in view of Beser and RFC 2401. E.g.,
`
`IPR2015-00812, Paper 43 (Aug. 30, 2016); IPR2015-00866, Paper 39 (Sept. 28,
`
`2016).1
`
`In its Response (“Resp.”) (Paper 14), Patent Owner advances the same
`
`arguments it made in those prior proceedings2 and relies on the same expert
`
`testimony. And recognizing that the issues and claims at issue here are
`
`
`1 See also IPR2015-00810, Paper 44 (Aug. 30, 2016); IPR2015-00868, Paper 39
`
`(Sept. 28, 2016); and IPR2015-00870, Paper 39 (Sept. 28, 2016); IPR2014-00237,
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`Paper 41(May 14, 2014); aff’d on other grounds, No. 2015-1934, 2016 WL
`
`7174130 (Fed. Cir. Dec. 9, 2016) (Pet. re’hrg en banc pending); Virnetx Inc. v.
`
`Apple Inc., No. 2016-1211, 2016 WL 7174131, at *1 (Fed. Cir. Dec. 9, 2016)
`
`(affirming IPR2014-00403, IPR2014-00404, IPR2014-00481, IPR2014-00482).
`
`2 Patent Owner recognizes it is making the same arguments the Board has
`
`previously rejected. Resp., 1 n.1.
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`1
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`Petitioner’s Reply (Paper 17)
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`substantially similar to those in prior proceedings (e.g., in IPR2015-00866 and
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`IPR2014-00237), Patent Owner simply resubmits its expert’s earlier testimony.
`
`Resp., 4 n.5. Indeed, no issues are raised in this matter that have not already been
`
`previously considered and decided by the Board, and Patent Owner’s arguments
`
`rest largely on unwarranted or incorrect assertions about its claims and the
`
`teachings of Beser and RFC 2401. The Board’s initial determination that the
`
`challenged claims are unpatentable was correct and should be maintained.
`
`II. Effect of Recent Federal Circuit Decisions
`
`The Federal Circuit recently affirmed seven final decisions of the Board
`
`holding claims unpatentable in patents related to the ’696 patent. See Paper 16. In
`
`five of those appeals, the mandate has now issued. Id. Under both PTAB rules
`
`and the traditional doctrine of collateral estoppel, Patent Owner is precluded from
`
`taking positions in this proceeding that are inconsistent with the final judgment in
`
`those proceedings. 37 CFR 42.73(d)(3); see Ohio Willow Wood Co. v. Alps South,
`
`LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013) (“Our precedent does not limit
`
`collateral estoppel to patent claims that are identical. Rather, it is the identity of the
`
`issues that were litigated that determines whether collateral estoppel should
`
`apply.”); Bourns, Inc. v. U.S., 537 F.2d 486, 492 (Ct. Cl. 1976) (finding “collateral
`
`estoppel [is] applicable to unadjudicated claims where it was shown that the
`
`adjudicated and unadjudicated claims presented identical issues”); S. Corp v. U.S.,
`
`2
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`IPR2016-00331
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`Petitioner’s Reply (Paper 17)
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`690 F.2d 1368, 1369 (Fed. Cir. 1982) (en banc) (holding decisions of the Court of
`
`Claims are binding precedent).
`
`Given these final decisions, Patent Owner in this proceeding is prohibited
`
`from maintaining its arguments related to the construction of “[VPN]
`
`communication link,” as those arguments have already been rejected by the Board
`
`in decisions affirmed by the Federal Circuit. See IPR2014-00481, Paper 35 at 7-11
`
`(Aug. 24, 2015); Virnetx, 2016 WL 7174131, at *1 (“[W]e find no error in the
`
`[Board’s] claim constructions or findings in the 403 and 481 proceedings.”).
`
`III. Claim Construction
`
`In its Institution Decision, the Board correctly found that it did not need to
`
`construe all but one of the disputed claims terms, noting that under any reasonable
`
`construction of those terms, Beser and RFC 2401 render the claims obvious.
`
`In addition, the construction of the term the Board construed –
`
`“intercept[ing]… a request” – is consistent with the ’696 specification and should
`
`be maintained. Pet., 12-13; Ex. 1001, 39:26-28, 40:26-32. In its Response, Patent
`
`Owner simply advances the same construction and arguments it made in its
`
`Preliminary Response and in prior proceedings. Resp., 17-18. In the alternative,
`
`Patent Owner argues that the “intercept[ing]” term needs no construction. Id.
`
`On the first point, the Board has already considered and rejected Patent
`
`Owner’s proposed construction (“receiving a request to look up an internet
`
`3
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`IPR2016-00331
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`Petitioner’s Reply (Paper 17)
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`protocol address and, apart from resolving it into an address, performing an
`
`evaluation on it related to establishing a virtual private network communication
`
`link”), and should do so again here for the same reasons. See, e.g., IPR2015-
`
`000812, Paper 43 at 6-10; IPR2014-00237, Paper 41 at 10-12.
`
`As to the latter argument (that no construction is needed), that too conflicts
`
`with the Board’s earlier determinations. Specifically, in other proceedings, the
`
`parties disputed whether Beser and RFC 2401 teach the “intercepting” limitation,
`
`and in response, the Board concluded this term need construction and adopted the
`
`same construction the panel did here. See, e.g., IPR2015-000812, Paper 43 at 6-
`
`10. The Board’s initial construction was correct and should be maintained.
`
`Patent Owner also argues the Board should construe the term “[VPN]
`
`communication link” to mean “a communication path between two devices in a
`
`virtual private network,” (Resp., 3-15) the same construction it proposed in earlier
`
`proceedings. The Board can reject this argument because Patent Owner is
`
`estopped from advancing it in this proceeding pursuant to, inter alia, 37 C.F.R.
`
`§ 42.73(d)(3). Specifically, in the Final Written Decision in IPR2014-00481
`
`involving a patent that shares a common specification with the ’696 patent, the
`
`Board applied the same claim construction standard and rejected the same
`
`arguments Patent Owner makes here about the proper construction of the term
`
`“[VPN] communication link.” Paper 35 at 7-11. The Federal Circuit affirmed the
`
`4
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`IPR2016-00331
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`Petitioner’s Reply (Paper 17)
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`Board’s constructions, and has issued a mandate; therefore, that Final Written
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`Decision is now final and Patent Owner estopped from advancing a different
`
`position on the meaning of “[VPN] communication link.”3 See 37 CFR
`
`42.73(d)(3); Ohio Willow Wood, 735 F.3d at 1342.
`
`In addition, the Board need not provide a special construction of the term
`
`“[VPN] communication link” because as explained below, Beser and RFC 2401
`
`disclose this limitation under any reasonable interpretation of this phrase.
`
`IPR2015-00866, Paper 39 at 10 (Sept. 28, 2016); Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be
`
`construed to the extent necessary to resolve the case).
`
`IV. Beser and RFC 2401 Render Claims 1-11, 14-25, and 28-30 Obvious
`
`The Board correctly found that Beser and RFC 2401 render claims 1-11, 14-
`
`25, and 28-30 obvious. In its Response, Patent Owner raises four primary
`
`challenges: (i) a person of ordinary skill would not have combined Beser and RFC
`
`2401, (ii) Beser does not disclose a “request to lookup an IP address,” (iii) Beser
`
`does not disclose “intercepting” such a request, and (iv) Beser and RFC 2401 do
`
`
`3 All claims were found to be unpatentable, and all appeals have been exhausted.
`
`The only step remaining is for the Office to issue a certificate canceling the claims.
`
`35 U.S.C. § 318(b).
`
`5
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`IPR2016-00331
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`Petitioner’s Reply (Paper 17)
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`not disclose a “[VPN] communication link.”
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`Initially, this panel should reject Patent Owner’s arguments about Beser and
`
`RFC 2401 because they have already been considered and rejected in multiple
`
`Final Written Decisions involving closely related patents with substantially similar
`
`claims. E.g., IPR2014-00237, Paper 41 at 22-28, 37-41; IPR2015-00812, Paper 43
`
`at 23-32, 35-38; IPR2015-00866, Paper 39 at 23-31, 34-39.4 In the current
`
`proceeding, Patent Owner simply rehashes those same rejected arguments. Even if
`
`the Board reconsiders those arguments on the merits, they are wrong and must be
`
`rejected.
`
`A. A Person of Ordinary Skill Would Have Combined Beser and
`RFC 2401
`
`As explained in the petition and by Dr. Tamassia, a person of ordinary skill
`
`in the art would have found it obvious to combine Beser and RFC 2401 to provide
`
`end-to-end encryption in an IP tunnel between Beser’s originating and terminating
`
`end devices. Pet., 31-35; Ex. 1005, ¶¶228-34. The Beser IP tunnel would provide
`
`anonymity by hiding the true addresses of two communicating end devices, and
`
`that a skilled person would have been motivated to follow Beser’s suggestion to
`
`4 Patent Owner recognizes the ’696 claims are substantially similar to those in prior
`
`proceedings (e.g., in IPR2015-00866) because it extensively relies testimony from
`
`those proceedings. See Exhibits 2009, 2018, 2019, 2022, 2025, and 2026.
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`6
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`IPR2016-00331
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`Petitioner’s Reply (Paper 17)
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`use IPsec (RFC 2401) to hide the data transmitted between the devices. Pet., 33;
`
`Ex. 1005, ¶234. In its Institution Decision, the Board agreed. Dec., 24-26.
`
`In its Response, Patent Owner relies on the same evidence5 and repeats the
`
`same arguments it has raised and the Board has rejected in numerous previous
`
`IPRs. E.g., IPR2014-00237, Paper 41 at 37-41; IPR2015-00866, Paper 39 at 34-
`
`37. It again incorrectly contends that statements in Beser indicating that
`
`encryption can present practical challenges in certain circumstances “teaches
`
`away” from the use of encryption. Resp., 31-38. Patent Owner’s arguments still
`
`cannot be squared with Beser’s actual disclosure.
`
`Beser recognizes encryption ordinarily should be used when the contents of
`
`a communication need to be protected (Ex. 1007, 1:54-56), and it discloses using
`
`encryption when user-identifiable data are sent over the network such as during
`
`establishment of the IP tunnel, (id., 11:22-25). Pet., 29, 32. Beser also criticizes
`
`prior art IP tunneling methods that sometimes prevent use of encryption, (Ex.
`
`1007, 2:1-8, 2:22-24), and states its tunneling method is intended to overcome such
`
`problems, (id., 2:43-45). A person of ordinary skill reading Beser would have
`
`understood that encryption should ordinarily be used to protect the contents of
`
`
`5 Patent Owner did not submit a new declaration from Dr. Monrose, but simply
`
`filed declarations that were submitted in related proceedings. See Exs. 2009, 2018.
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`7
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`IPR2016-00331
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`Petitioner’s Reply (Paper 17)
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`communications in an IP tunnel, and that encryption is compatible with Beser. Ex.
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`1005, ¶¶224-26, 228, 230-31.
`
`Patent Owner has not asserted that Beser’s tunneling method cannot be
`
`implemented using encryption—at most it alleges that certain practical concerns
`
`can arise that, even if present, affect only certain system configurations. Dr.
`
`Monrose has admitted there IPsec is not inherently incompatible with encrypting
`
`multimedia data, and that a skilled person would have considered the
`
`computational concerns identified in Beser to be limited to configurations
`
`involving certain types of encryption. Ex. 1077, 80:20-81:8, 82:7-17.
`
`Dr. Monrose also admitted that a skilled person would have been able to
`
`adjust a system’s configuration to allow encryption of multimedia data. Id., 79:3-
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`11; see Ex. 1055, 206:20-208:6 (Dr. Monrose admitting more powerful computers
`
`or lower recording fidelity would resolve Beser’s concerns), 211:16-212:2.
`
`Petitioner’s expert Dr. Tamassia similarly explained that a skilled person would be
`
`able to change a system’s configuration to accommodate use of encryption in
`
`Beser’s IP tunnel. Ex. 1005, ¶¶224-25 (adding more computing power or using a
`
`lower resolution media stream could solve any issues).
`
`Patent Owner also argues Beser teaches away from encryption because its
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`tunneling method was designed to have a low computational burden on a system,
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`and therefore, it was designed to replace computationally expensive security
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`techniques such as encryption. Resp., 34, 35-36. But Patent Owner
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`mischaracterizes the purpose of Beser’s design. Beser was designed to provide a
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`better method for ensuring user privacy by allowing communications over the
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`Internet to be anonymous, thus addressing a distinct security concern. Ex. 1007,
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`2:36-40, 3:4-9. Beser explains users increasingly had privacy concerns, (id., 1:13-
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`25), and that it was easy for computer hackers to determine the identity of two
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`users communicating over the Internet because the source and destination
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`addresses of IP packets were viewable, (id., 1:26-53). While encrypting data could
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`protect a communication’s the contents, encryption did not provide privacy
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`because it did not hide the identities of the communicating devices. Id., 2:1-5; id.,
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`1:56-58. Beser then discusses conventional tunneling techniques, which could
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`provide privacy but were sometimes incompatible with encryption. Ex. 1007,
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`2:22-24; see id., 1:54-2:35; see Pet., 32-33. Beser also notes that both encryption
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`and prior art IP tunnels were computationally expensive. Id., 1:60-63, 2:12-17,
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`2:33-35.
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`Beser explains that its IP tunneling technique was designed to overcome
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`these problems with the prior art. Ex. 1007, 2:43-45. Beser’s IP tunnel hides the
`
`identities of communicating devices, but in contrast to prior art IP tunnels which
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`were computationally expensive, (id., 2:33-35), Beser has a low “computational
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`burden,” (id., 3:4-9). Because of its low computational burden, Beser’s method is
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`Petitioner’s Reply (Paper 17)
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`flexible and can be combined with other security techniques. See Ex. 1005, ¶¶228-
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`34; Ex. 1007, 3:4-9, 4:55-5:2. Beser’s tunneling method also can be combined
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`with encryption: Beser specifically notes that its IP tunnel can improve the security
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`of encryption by helping to “prevent a hacker from intercepting all media flow
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`between the ends,” (Ex. 1007, 2:36-40), and from “accumulating... sufficient
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`information to decrypt the message,” (id., 1:56-58). IPsec was known to be highly
`
`adaptable, enabling it to accommodate computational burdens by adjusting
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`parameters of the IPsec protocol (e.g., adjusting the strength or type of encryption
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`used). See Ex. 1008, 4, 7, 10. Thus, the evidence demonstrates that Beser’s IP
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`tunneling technique complements encryption.
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`Patent Owner also argues that using encryption in Beser’s system would be
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`“redundant” because Beser teaches hiding the identities of the end devices instead
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`of protecting the contents of a communication. Resp., 36. But Beser never states
`
`its technique is intended to replace encryption. In fact, Beser distinguishes
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`between using encryption to protect the data inside packets and using IP tunnels to
`
`hide the true addresses of the end devices, as Patent Owner recognizes. Resp., 35-
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`36. Dr. Monrose likewise agreed that using a security technique to provide
`
`anonymity is not a substitute for using encryption to protect the contents of the
`
`communications. Ex. 1077, 74:4-15; 74:25-75:3.
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`Thus, the Board correctly found a person of ordinary skill would have
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`Petitioner’s Reply (Paper 17)
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`combined Beser and RFC 2401 and thereby would have found it obvious to add
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`encryption to Beser.
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`B.
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`Independent Claims 1 and 16
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`The Board correctly found Beser and RFC 2401 teach all of the elements of
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`claims 1 and 16. Dec., 14-26. Patent Owner disagrees, asserting that Beser and
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`RFC 2401 do not teach three limitations. See Resp., 22-31. Each of Patent
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`Owner’s contentions reflects a repeated misunderstanding of its own claims and a
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`continued mischaracterization of what Beser actually discloses.
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`1.
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`As Found in Prior Final Written Decisions Handling
`Substantially Similar Claims, Beser Teaches a Request to
`Lookup an IP Address
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`The tunneling request sent by originating device 24 is a “request to lookup
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`an [IP] address” because in response to receiving the request, the Beser trusted
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`device 30 looks up two IP addresses. Pet., 37-38. First, it consults an internal
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`database of registered devices to look up the IP address of second device 16 that is
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`associated with the unique identifier. Id, 21-22, 37-38; Ex. 1007, 11:45-58.
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`Second, it looks up a private IP address for terminating device 26 by sending a
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`message to device 16 requesting the address. Pet., 22-23, 37-38; Ex. 1007, 9:29-
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`30, 12:16-19, 14:14-27, Figs. 6 & 9. As a result of this process, originating device
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`24 receives an IP address for terminating device 26. Pet., 22; Ex. 1007, 21:48-52;
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`see Ex. 1077, 103:22-104:3.
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`Petitioner’s Reply (Paper 17)
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`In numerous prior Final Written Decisions, the Board agreed both these
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`processes disclosed a “request to lookup an IP address.” IPR2015-00810, Paper 44
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`at 33-40; IPR2015-00866, Paper 39 at 23-28. There is no reason to find differently
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`here where Patent Owner admittedly relies on the same evidence and arguments
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`made in those proceedings.
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`Patent Owner nonetheless argues the tunneling request cannot be a request to
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`“lookup an IP address” because trusted device 30 does not “look up” any IP
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`addresses in response to the request. Resp., 23. Initially, that argument is
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`irrelevant to the claims, which specify intercepting “a request to lookup an [] IP
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`address,” and under the broadest reasonable construction, do not require a lookup
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`to be performed, let alone specify that a particular device perform the lookup. In
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`other words, Patent Owner’s lookup arguments can be dismissed because the
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`claims do not require a lookup.
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`Relying on its incorrect theory that a lookup is required, Patent Owner
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`argues that neither of Beser’s lookups actually lookup an IP address. First, Patent
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`Owner argues that trusted device 30 does not perform a “lookup” of network
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`device 16’s public IP address. Resp., 24-25. Patent Owner admits that trusted
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`device 30 contains a database or similar structure that correlates each unique
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`identifier to the public IP addresses of a second network device 16 and terminating
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`device 26, but asserts Beser “never suggests that this data structure is looked up
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`when the tunnel request is received by device 30.” Resp., 24. Patent Owner also
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`argues that because the database of registered identifiers is part of Beser’s
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`modification to the conventional DNS functionality, where the trusted-third-party
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`device is a DNS server, it would only perform a lookup on its conventional DNS
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`tables and would not consult the database. Resp., 24-26. Those positions are
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`contrary to Beser’s explicit disclosure.
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`Beser describes the database as an example of how the trusted-third-party
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`network device 30 performs the associating step (Step 116) of Figure 5, which it
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`performs in response to receiving the tunneling request. Ex. 1007, Fig. 5, 11:26-
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`58. Beser walks through each of the four steps of Figure 5 sequentially on 9:64 to
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`12:19. See Ex. 1077, 104:25-107:13. Beser discusses Step 116 in two sequential
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`paragraphs that appear at 11:26-58, as Dr. Monrose agreed. Ex. 1077, 107:15-
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`108:8. The first paragraph explains trusted device 30 associates the public IP
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`address for second device 16 with the unique identifier in the request. Ex. 1007,
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`11:26-32. The second paragraph describes an example of how the association is
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`performed, stating “the trusted-third-party network device 30 may... retain[]a list of
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`E.164 numbers of its subscribers [and] [a]ssociated with a E.164 number in the
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`directory database is the IP 58 address of a particular second network device 16.”
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`Id., 11:45-50; see id., 11:55-58. Thus, Beser teaches that in Step 116, trusted
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`device 30 receives the tunneling request, (id., 11:9-20), and in response, it
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`associates an IP address with the unique identifier by looking it up in its internal
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`database, (id., 11:26-58). See Ex. 1077, 107:15-108:8.
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`Patent Owner also argues that Beser’s tunneling request cannot be one to
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`“lookup an IP address” because trusted device 30 looks up the public IP address of
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`second device 16 instead of terminating device 26. Resp., 24. But the claims only
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`specify a request to lookup an “[IP] address… based on a domain name associated
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`with second network device,” (Ex. 1001, 56:13-14) (emphasis added), and the ’696
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`specification provides that the IP address looked up “need not be the actual address
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`of the destination computer,” (id. at 40:43-44). In Beser’s system, the IP address
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`of network device 16 is “associated with” the unique identifier (e.g., domain name)
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`of terminating device 26. Thus, the tunneling request meets the claim language.
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`Second, Patent Owner contend that Beser and RFC 2401 do not teach the
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`“lookup” of the private IP address, arguing that the first and second devices, and
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`not trusted device 30, negotiate private IP addresses for the end devices. Resp., 23.
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`That argument is premised on a single embodim
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