Paper No. 17
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`VIRNETX INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2016-00332
`U.S. Patent No. 8,504,696
`
`––––––––––––––––––
`
`PETITIONER’S REPLY BRIEF
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`
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`

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`IPR2016-00332
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`
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`Petitioner’s Reply Brief
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`Table of Contents
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`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Effect of Recent Federal Circuit Decisions ..................................................... 2
`
`III. Claim Construction .......................................................................................... 3
`
`A.
`
`B.
`
`“Virtual Private Network Communication Link” ................................. 3
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`Other Terms ........................................................................................... 5
`
`IV. Aventail in view of RFC 2401 Render Claims 1, 4, 5, 9–11, 14–16, 19, 20,
`24, 25, 28, and 30 ............................................................................................. 6
`
`A. Aventail and RFC 2401 Teaches Claim 1 and 16’s “Determination”
`Step ........................................................................................................ 6
`
`B.
`
`Aventail in view of RFC 2401 Teaches Claims 1 and 16’s “Virtual
`Private Communication Link” ............................................................ 10
`
`C.
`
`Aventail in view of RFC 2401 Renders Claims 14 and 28 Obvious .. 12
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`D. Aventail in view of RFC 2401 Renders Claims 4, 5, 9-11, 15, 19, 20,
`24, 25, and 30 Obvious ........................................................................ 12
`
`E.
`
`F.
`
`Aventail in view of RFC 2401 and RFC 2543 Renders Claims 2, 3, 6–
`8, 17, 18, and 21–23 Obvious: ............................................................ 14
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`Aventail in view of RFC 2401 and Yeager Renders Claims 15 and 30
`Obvious: .............................................................................................. 14
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`V. Dr. Tamassia’s Testimony Is Probative ......................................................... 14
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`VI. Aventail and the RFC References Are Conclusively Prior Art ..................... 17
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`A. Aventail ............................................................................................... 17
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`B.
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`RFCs 2401 and 2543 ........................................................................... 20
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`VII. Conclusion ..................................................................................................... 24
`
`i
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`IPR2016-00332
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`Petitioner’s Reply Brief
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`Table of Authorities
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` Page(s)
`
`Cases
`Apple Inc. v. VirnetX Inc.,
`IPR2014-00481, Paper 35 (Aug. 24, 2015), aff’d, No. 2016-1211,
`2016 WL 7174131 ............................................................................................ 3, 5
`
`Apple Inc. v. VirnetX Inc.,
`IPR2015-00811, Paper 44 (Sept. 8, 2016) .................................................... 1, 6, 7
`
`Apple Inc. v. VirnetX Inc.,
`IPR2015-00811, Paper No. 44 (Sept. 8, 2016) ................................................... 17
`
`Apple Inc. v. VirnetX. Inc.,
`IPR2015-00866, Paper 39 (Sept. 28, 2016) .................................................. 15, 16
`
`Apple Inc. v. VirnetX Inc.,
`IPR2015-00871, Paper 39 (Sept. 28, 2016) .................................................passim
`
`Arthrocare Corp. v. Smith & Nephew, Inc.,
`406 F.3d 1365 (Fed. Cir. 2005) ............................................................................ 9
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .................................................................... 16, 17
`
`Bourns, Inc. v. U.S.,
`537 F.2d 486 (Ct. Cl. 1976) .................................................................................. 2
`
`Brand v. Miller,
`487 F.3d 862 (Fed. Cir. 2007) ............................................................................ 16
`
`Guangdong Xinbao Elec. Appliances Holdings v. Adrian Rivera,
`IPR2014-00042, Paper 50 (Feb. 6, 2015) ........................................................... 16
`
`Kyocera Wireless Corp. v. Int’l Trade Comm’n,
`545 F.3d 1340 (2008) .......................................................................................... 18
`
`Ohio Willow Wood Co. v. Alps South, LLC,
`735 F.3d 1333 (Fed. Cir. 2013) .................................................................. 2, 4, 18
`
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`Petitioner’s Reply Brief
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`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) ........................................................................... 15
`
`Sundance, Inc. v. Demonte Fabricating Ltd,
`550 F.3d 1356 (Fed. Cir. 2008) .......................................................................... 14
`
`Symantec Corp. v. Trustees of Columbia Univ. in the City of N.Y.,
`IPR2015-00371, Paper 13 (July 17, 2015) ......................................................... 23
`
`Tempo Lighting Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) .......................................................................... 4, 5
`
`Titanium Metals Corp. of America v. Banner,
`778 F.2d 775 (Fed. Cir. 1985) ............................................................................ 17
`
`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
`
`Ultratec, Inc. v. Sorenson Commc’ns, Inc.,
`No. 13-CV-346, 2014 WL 4829173 (W.D. Wis. Sept. 29, 2014) ...................... 23
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999) .......................................................................... 4, 6
`
`Statutes
`
`35 U.S.C. § 6 ............................................................................................................ 17
`
`35 U.S.C. § 102(a) ................................................................................................... 17
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`35 U.S.C. § 312(a)(3) ............................................................................................... 10
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`35 U.S.C. § 318(b) ..................................................................................................... 4
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`Other Authorities
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`37 C.F.R. § 42.65(a) ................................................................................................. 23
`iii
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`Petitioner’s Reply Brief
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`37 C.F.R. § 42.104(b)(4) .......................................................................................... 10
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`37 CFR 42.73(d)(3) .................................................................................................... 4
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`37 CFR § 42.73(d)(3) ................................................................................................. 2
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`Fed. R. Evid. 702 ............................................................................................... 14, 15
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`
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`iv
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`IPR2016-00332
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`I.
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`Introduction
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`
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`Petitioner’s Reply Brief
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`The Board correctly found claims 1, 4, 5, 9–11, 14–16, 19, 20, 24, 25, 28,
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`and 30 would have been obvious over Aventail in view of RFC 2401; claims 2, 3,
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`6–8, 17, 18, and 21–23 would have been obvious over Aventail, RFC 2401, and
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`RFC 2543; claims 15 and 30 would have been obvious over Aventail, RFC 2401,
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`and Yeager. Paper 9 (“Dec.”), 13-25. The Board’s findings are consistent with
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`other Final Written Decisions of the Board concerning related patents, in which
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`claims similar to those in the ’696 patent were likewise found obvious in view of
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`Aventail, RFC 2401, and RFC 2543. E.g., IPR2015-00811, Paper 44 (Sept. 8,
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`2016); IPR2015-00871, Paper 39 (Sept. 28, 2016).
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`In its Response (“Resp.”) (Paper 14), Patent Owner advances the same
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`arguments it made in those prior proceedings1 and relies on the same expert
`
`testimony. And despite recognizing that the issues and the claims at issue in this
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`proceeding are substantially similar to those in prior proceedings (e.g., IPR2015-
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`00811, IPR2015-00871), Patent Owner simply resubmits its expert’s earlier
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`declaration and cross-examination testimony. Resp., 4 n.5; Exhibits 2009, 2018,
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`2038, 2039. Indeed, no issues are raised in this matter that have not already been
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`
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`1 Patent Owner recognizes it is making the same arguments the Board has
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`previously rejected. Resp., 1 n.1.
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`1
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`Petitioner’s Reply Brief
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`previously considered and decided by the Board, and Patent Owner’s arguments
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`rest largely on unwarranted or incorrect assertions about its claims and the
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`teachings of Aventail and RFC 2401. The Board’s initial determination that the
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`challenged claims are unpatentable was correct and should be maintained.
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`II. Effect of Recent Federal Circuit Decisions
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`The Federal Circuit recently affirmed seven final decisions of the Board
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`holding claims unpatentable in patents related to the ’696 patent. See Petitioner’s
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`Updated Mandatory Notices, Paper 16. In five of those appeals, the mandate has
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`now issued. Id. Under both PTAB rules and the traditional doctrine of collateral
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`estoppel, Patent Owner is precluded from taking positions in this proceeding that
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`are inconsistent with the final judgment in those proceedings. 37 CFR
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`§ 42.73(d)(3); see Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342
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`(Fed. Cir. 2013) (“Our precedent does not limit collateral estoppel to patent claims
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`that are identical. Rather, it is the identity of the issues that were litigated that
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`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
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`unadjudicated claims where it was shown that the adjudicated and unadjudicated
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`claims presented identical issues”); S. Corp v. U.S., 690 F.2d 1368, 1369 (Fed. Cir.
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`1982) (en banc) (holding decisions of the Court of Claims are binding precedent).
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`2
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`Petitioner’s Reply Brief
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`Given these final decisions, Patent Owner in this proceeding is prohibited
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`from maintaining its arguments related to the construction of “[VPN]
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`communication link,” as those arguments have already been rejected by the Board
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`in decisions affirmed by the Federal Circuit. See IPR2014-00481, Paper 35 at 7-11
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`(Aug. 24, 2015); Virnetx, 2016 WL 7174131, at *1 (“[W]e find no error in the
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`[Board’s] claim constructions or findings in the 403 and 481 proceedings.”).
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`III. Claim Construction
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`A.
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`“Virtual Private Network Communication Link”
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`Patent Owner argues the Board should construe the term “[VPN]
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`communication link” to mean “a communication path between two devices in a
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`virtual private network” (Resp., 3-15) which is the same construction it has
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`proposed in prior proceedings. Initially, the Board can reject Patent Owner’s
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`argument because Patent Owner is estopped from maintaining it. In its Final
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`Written Decision in IPR2014-00481 involving U.S. Patent No. 7,188,180, a patent
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`that shares a common specification with the ’696 patent, the Board applied the
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`same claim construction standard rejected the same arguments Patent Owner
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`makes here about the proper construction of the term “[VPN] communication
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`link.” Paper 35 at 7-11. The Federal Circuit affirmed the Board’s claim
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`constructions in that proceeding and the mandate has issued; therefore, the decision
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`3
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`is final and Patent Owner estopped from rehashing that challenge.2 See 37 CFR
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`42.73(d)(3); Ohio Willow Wood, 735 F.3d at 1342.
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`In addition, the Board need not provide a special construction of the term
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`“[VPN] communication link” because as explained below, Aventail and RFC 2401
`
`disclose this limitation under any reasonable interpretation of this phrase. See,
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`IV.B, infra; IPR2015-00871, Paper 39 at 67 (Sep. 28, 2016) (finding Aventail
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`discloses a “direct” VPN Link). See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
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`200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed to the
`
`extent necessary to resolve the case).
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`To the extent they require consideration at all, Patent Owner’s arguments
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`fail on the merits. Patent Owner contends (at 8-11) prosecution disclaimers limit
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`the scope of the term “VPN communication link,” but fails to establish the
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`requirements for an effective disclaimer. The putative disclaimers are based on
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`statements made during reexamination proceedings—some still pending—and
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`none was accompanied by a claim amendment. Under Tempo Lighting Inc. v.
`
`Tivoli, LLC, 742 F.3d 973 (Fed. Cir. 2014), this means these statements have no
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`
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`2 All claims were found to be unpatentable, and all appeals have been exhausted.
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`The only step remaining is for the Office to issue a certificate canceling the claims.
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`35 U.S.C. § 318(b).
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`4
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`disclaiming effect before the PTO. Id., 978 (“no obligation to accept a claim
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`construction proffered as a prosecution history disclaimer.”). The Tempo Court
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`affirmed the Board’s finding of a disclaimer, but only because it was in
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`conjunction with claim amendments made during the original examination of the
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`patent. Id., 977. Tempo thus confirms the irrelevance of such statements,
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`particularly one made during reexamination, without being accompanied by a
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`claim amendment. Id. Relying on Tempo, the Board previously found that Patent
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`Owner did not disclaim claim scope. IPR2014-00481, Paper 35 at 10 (Aug. 24,
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`2015), aff’d, No. 2016-1211, 2016 WL 7174131, at *1.
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`Finally, nothing in the ’696 patent itself requires “direct” communication.
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`Further, the ’696 specification describes secure communication links that traverse
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`firewalls, edge routers, and proxies between end devices in a connection. Ex. 1001,
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`33:60-34:30, 49:39-43, 53:38-54:32, 55:55-67. Consistent with its previous
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`findings, the Board should not read a nebulous “direct” limitation into the claims in
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`these proceedings where the broadest reasonable interpretation does not require it.
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`See Cuozzo Speed Techs., LLC.v. Lee, 136 S.Ct. 2131, 2144–46 (2016).
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`B. Other Terms
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`Patent Owner advances no patentability arguments based on its proposed
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`constructions for “server,” “domain name,” “secure communication service,”
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`“modulation,” and “intercept[ing] . . . [a/the] request,” so they need not be
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`construed. See Vivid Techs., Inc., 200 F.3d at 803.
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`IV. Aventail in view of RFC 2401 Render Claims 1, 4, 5, 9–11, 14–16, 19, 20,
`24, 25, 28, and 30
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`The Board correctly found claims 1, 4, 5, 9–11, 14–16, 19, 20, 24, 25, 28,
`
`and 30 would have been obvious over Aventail in view of RFC 2401. Most of
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`Patent Owner’s arguments about Aventail were already considered and rejected by
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`multiple panels in Final Written Decisions involving closely related patents with
`
`substantially similar claims. E.g., IPR2015-00811, Paper 44 at 47-54; IPR2015-
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`00871, Paper 39 at 55-63. In the current proceeding, Patent Owner simply
`
`rehashes those same rejected arguments and offers no new evidence. Indeed,
`
`rather than submitting new declaration testimony addressing the ’696 patent, the
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`Patent Owner resubmitted the same declaration and cross-examination testimony
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`from its expert Dr. Monrose in earlier proceedings. See Exs. 2009, 2016, 2018,
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`2038, 2039. Even if the Board reconsiders those arguments on the merits, they are
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`wrong and must be rejected.
`
`A. Aventail and RFC 2401 Teaches Claim 1 and 16’s
`“Determination” Step
`
`The Board correctly determined that Aventail as combined with RFC 2401
`
`likely discloses “determin[ing], in response to the request, whether the second
`
`network device is available for a secure communications service.” Dec. 16-20; Pet.
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`6
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`38-39; Ex. 1005, ¶208. In response, Patent Owner challenges that finding on three
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`bases: (1) Aventail alone does not disclose a remote host that “will require an
`
`encrypted connection” (Resp., 22-23), (2) determining whether a hostname
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`“matches a redirection rule for a destination” is not the same as the claimed
`
`“determination” (id., 23-24), and (3) the Institution Decision adopts positions not
`
`described by the Petition (id., 24-26). Each argument lacks merit, as they did when
`
`made the first time in proceedings on related patent with substantially similar
`
`claims. See, e.g., IPR2015-00811, Paper 44 at 47-54; IPR2015-00871, Paper 39 at
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`55-63.
`
`First, Patent Owner argues Aventail alone does not disclose a remote host
`
`that “with which a secure communication link can be established” because
`
`Aventail “only determines whether to encrypt traffic to the SOCKS server but not
`
`to the remote host.” Resp. 22-23. Initially, these arguments are premised on an
`
`unclaimed requirement of end-to-end encryption. The Board correctly rejected
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`that argument (noting the claim requires “determining whether a device is available
`
`for secure communication,” Dec. 18-19), and instead accepted the evidence that
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`“Aventail Connection consults a table of redirection results to determine whether
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`the request corresponds to a target private device available via an Aventail
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`ExtraNet Server,” Dec. 17 (citing Ex. 1009, 8-12), and “enabling DNS Proxy
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`functionality uses Aventail Connect to route all DNS requests that do not match a
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`7
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`local domain string to the Aventail Extranet Server ‘for interception and
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`resolution,’” Dec. 17-18 (citing Ex. 1005, ¶197-198); see also Ex. 1009, 8-12.
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`Thus, the evidence described in the Petition (Pet. 38-39) and by Dr. Tamassia (Ex.
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`1005, ¶¶200-208) establishes that Aventail, even if considered alone, satisfies this
`
`step under the broadest reasonable interpretation.
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`Further, the Board instituted on obviousness grounds based on Aventail with
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`RFC 2401, in which the Aventail system is modified to include “end-to-end
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`encryption,” i.e., a system in which “all secure devices would be encrypted.” Dec.
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`19-20; Pet. 42-46. A determination by the modified Aventail system that the
`
`domain name requires a proxied connection is a determination whether the second
`
`network device is available for an encrypted connection, because a proxied
`
`connection would be encrypted end-to-end. Thus, Aventail in view of RFC 2401
`
`teaches the claimed “determination” even under Patent Owner’s view of the scope
`
`of its claims.
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`Second, Patent Owner asserts that “determining whether a domain name …
`
`matches a redirection rule for a destination is not the same as determining whether
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`the remote host is available for an encrypted connection” because “the mere fact
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`that a remote host accepts a proxied connection does not disclose or suggest that
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`the remote host is one that is available for an encrypted connection.” Resp. 23-24.
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`Patent Owner relies on the capacity of the Aventail system to be configured to
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`Petitioner’s Reply Brief
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`work differently than the challenged claims specify to incorrectly argue that
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`Aventail must only be configured in such a way. But Patent Owner ignores the
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`configuration described in Aventail and relied on by Petitioner and the Board—a
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`configuration where a match of a redirection rule necessarily results in an
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`encrypted connection. Pet. 38-39; see Dec. 19-20. In that configuration,
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`connections to internal private networks “require all users to use Aventail Connect
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`to authenticate and encrypt their sessions before any connection to the internal
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`private network(s). For this example, the Aventail ExtraNet Server encrypts all
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`sessions with SSL.” Ex. 1009, 73 (emphasis added); Dec. 20; Ex. 1005, ¶¶267-75.
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`As explained in the Petition, this “determin[ation]” in Aventail thus occurs in
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`virtually the same way described in the ’696 patent. Pet. 39 (citing Ex. 1001,
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`40:26-32, 41:9-16.). Patent Owner’s reliance on alternative ways to configure the
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`Aventail system are irrelevant—obviousness does not require every embodiment of
`
`a prior art reference to satisfy the claims. See Arthrocare Corp. v. Smith &
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`Nephew, Inc., 406 F.3d 1365, 1372 (Fed. Cir. 2005) (error “to limit the disclosure
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`of the prior art reference to a preferred embodiment”).
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`Third, Patent Owner criticizes the Board’s Institution Decision for, in effect,
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`responding to its Preliminary Response arguments and explaining why they were
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`unpersuasive. Resp. 24-26. These criticisms are misplaced. The Petition pointed
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`to Aventail’s proxied connections to remote hosts, which in one embodiment will
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`Petitioner’s Reply Brief
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`also necessarily be encrypted, as the “secure communications service.” Pet. 38-39.
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`As combined with RFC 2401, these proxied connections would also be encrypted
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`end-to-end. Id., 42-46. As combined, Aventail’s determination that a connection
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`must be proxied is thus a “determin[ation] … whether the second network device is
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`available for a secure communications service” even under Patent Owner’s theory
`
`of the claims. Nowhere does the Board’s Institution Decision go beyond this
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`mapping—it simply rebuts, point by point, Patent Owner’s arguments to the
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`contrary. See Dec. 18-20. Nor is there any requirement, as Patent Owner seems to
`
`suggest, under 35 U.S.C. § 312(a)(3) or 37 C.F.R. § 42.104(b)(4) that the Petition
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`must preemptively rebut every erroneous or irrelevant counterargument.
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`B. Aventail in view of RFC 2401 Teaches Claims 1 and 16’s “Virtual
`Private Communication Link”
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`The Board correctly determined that Aventail in view of RFC 2401 likely
`
`discloses a “virtual private network communication link.” Dec. 20-22; see also Pet.
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`39-40; Ex. 1005, ¶¶237-243; In response, Patent Owner asserts that the claimed
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`“virtual private network communication link” requires a “direct communication
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`link,” which it contends Aventail does not show. Resp. 27-28. Patent Owner is
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`incorrect.
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`First, as explained in §III.A, supra, the Board should not read a “direct”
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`limitation into this claim term. If Patent Owner believed its claims should be
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`limited to a particular type of “virtual private network communication link,” it
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`Petitioner’s Reply Brief
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`should have presented a claim amendment. It did not, so its arguments can be
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`disregarded.
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`Second, neither Patent Owner nor its expert have attempted to explain what
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`is required by “direct[ness],” Resp. 8-12, 27-28, despite the Board’s repeated
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`requests for a simple definition, see, e.g., IPR2015-00871, Paper 39 at 27
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`(summarizing Patent Owner’s responses during the oral hearing). To the extent the
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`term itself is informative, Aventail describes the “network connections” that are
`
`proxied between client computers and those on the private network as “direct
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`network connections.” Ex. 1009, 72 (“[N]o direct network connections between
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`the public LAN and the private LAN can be created without being securely
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`proxied through the Aventail ExtraNet Server.”); see also Dec. 21. Patent Owner,
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`however, ignores this disclosure.
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`Patent Owner also ignores that Aventail discloses configurations in which
`
`client computers proxy their communications into a private network but
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`communicate directly with target computers as though they were on the same
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`private network. See Pet. 26-27, 40-41; Ex. 1009, 11-12, 94-105; Ex. 1005 ¶¶237-
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`243. For example, Aventail shows remote client computers accessing private
`
`network resources via the “Secure Extranet Explorer” feature. Pet. 40. Using that
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`functionality, users can access computers on the remote network by browsing a
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`dynamic list of available resources “just as [the user] would” using the Windows
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`11
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`Petitioner’s Reply Brief
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`network neighborhood locally. Ex. 1009, 91-92. Patent Owner, however, ignores
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`this disclosure too.
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`C. Aventail in view of RFC 2401 Renders Claims 14 and 28 Obvious
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`Dependent claims 14 and 28 recite that the “determination” is a “function of
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`[the result of] a domain name lookup.” As explained above in § IV.A, supra,
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`Aventail shows that a client computer running Aventail Connect will determine, as
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`part of the process of evaluating a domain name in a connection request, if the
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`specified host in the request requires and can support establishment of a VPN with
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`the client computer. Pet. 50-51; Ex. 1009, 11-12, 72-73; Ex. 1011, 19. Patent
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`Owner raises no unique challenge to these claims, but instead relies on its
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`arguments with respect to claims 1 and 16. Resp. 30-32. Patent Owner asserts that
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`its arguments against claims 14 and 28 are “separate and distinct” because Aventail
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`does not perform the claimed “determination” as “a function of [the result of] a
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`domain name lookup,” but Patent Owner instead points to its same flawed theory
`
`about how matching a redirection rule is not the same as the claimed
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`“determination.” Id., 31. Thus, these claims rise and fall with claims 1 and 16.
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`D. Aventail in view of RFC 2401 Renders Claims 4, 5, 9-11, 15, 19,
`20, 24, 25, and 30 Obvious
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`Patent Owner argues that the Petition failed “to address the language of
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`claim 11,” Resp. 33-34, but never explains what language of claim 11 is
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`supposedly not taught. Claim 11 recites “wherein the one or more servers are
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`configured to intercept the request by receiving the request to determine whether
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`the second network device is available for the secure communications service.”
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`Claim 11 depends on claim 1, which already recites “[one or more servers
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`configured to:] intercept[] … a request” (Pet. 35-38) to then “determine[], in
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`response to the [intercepted] request, whether the second network device is
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`available for a secure communications service” (id., 38-39). Given that
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`“intercept[ing] … a request” includes “receiving” the request even under Patent
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`Owner’s construction, Resp. 17, the only apparent additional requirement of claim
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`11 is that the request is intercepted “to” perform the determination.
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`The Petition explained that both “Aventail Connect and the Aventail
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`Extranet server can intercept requests … to determine whether the request
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`corresponds to a remote host … for which a link needs to be created to allow
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`communications,” i.e., whether a proxy is required. Pet. 50 (emphasis added).
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`Other than a general complaint about a supposed lack of specificity in the Petition,
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`Patent Owner does not (and cannot) contest that Aventail in view of RFC 2401
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`renders claim 11 obvious.
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`Patent Owner otherwise raises no unique challenge to these claims, and thus,
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`these claims rise and fall with claims 1 and 16. Resp. 33.
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`E. Aventail in view of RFC 2401 and RFC 2543 Renders Claims 2, 3,
`6–8, 17, 18, and 21–23 Obvious:
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`Patent Owner raises no unique challenge to these claims, and thus, they rise
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`and fall with claims 1 and 16. See Resp. 35.
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`F. Aventail in view of RFC 2401 and Yeager Renders Claims 15 and
`30 Obvious:
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`Patent Owner raises no unique challenge to these claims, and thus, they rise
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`and fall with claims 1 and 16. See Resp. 35.
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`V. Dr. Tamassia’s Testimony Is Probative
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`Dr. Tamassia is a person of ordinary skill in the art, and he offered probative
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`testimony on many of the factual inquiries underpinning an obviousness analysis:
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`the level of skill and background knowledge of one skilled in the art, the scope and
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`content of the prior art, and the motivation to combine the references. Given the
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`depth of Dr. Tamassia’s experience and the breadth of his analysis in this
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`proceeding, his testimony can certainly “assist the trier of fact to understand the
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`evidence or determine a fact in issue” and it should be accord substantial weight.
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`Fed. R. Evid. 702; cf. Sundance, Inc. v. Demonte Fabricating Ltd, 550 F.3d 1356,
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`1364 (Fed. Cir. 2008) (requiring a witness be qualified in the pertinent art to offer
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`testimony on any of the factual questions underlying obviousness). Patent Owner
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`asserts this testimony should be given no weight because Dr. Tamassia did not
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`opine on the ultimate issue of obviousness. See Resp. 52-56 (“Dr. Tamassia failed
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`to consider, let alone opine on, how any of the claim features are disclosed in
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`asserted references.”). But no rule requires an expert to opine on the ultimate
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`question of obviousness or on every potentially relevant fact at issue for his
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`opinion to be admissible or entitled to weight. See FRE 702. Dr. Tamassia’s
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`opinions can help the Board understand the evidence and determine a fact at issue,
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`and should be considered by the Board.
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`As it has before, Patent Owner continues to rely on a number district court
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`cases involving expert testimony in the context of, e.g., infringement, juries, and
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`summary judgment, that are inapposite. E.g., Schumer v. Lab. Computer Sys., Inc.,
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`308 F.3d 1304 (Fed. Cir 2002) (finding the expert testimony was insufficient
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`because the “burden of proving invalidity [by clear and convincing evidence] on
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`summary judgment is high”). The Board was correct to reject this argument
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`previously, see, e.g., IPR2015-00866, Paper 39 at 13, and Patent Owner has
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`offered no justification for the Board to depart from its previous and correct
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`finding. Again, the setting of Schumer was a declaration supporting a motion for
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`summary judgment—clearly not the circumstance here. And, the Federal Circuit
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`specifically faulted to testimony as “confusing”—again, not the circumstance here.
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`Thus, the Board was correct in its finding that:
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`Schumer confirms the unremarkable proposition that conclusory,
`overly general, confusing, and self-interested testimony should not be
`relied upon. Id.; see also Koito Mfg. v. Turn-Key-Tech, LLC, 381 F.3d
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`1142, 1152 (Fed. Cir. 2004) (“General and conclusory testimony, such
`as that provided by Dr. Kazmer in this case, does not suffice as
`substantial evidence of invalidity.”). Patent Owner has not shown that
`the whole of Dr. Tamassia’s testimony suffers from any of these
`failings.
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`IPR2015-00866, Paper 39 at 13.
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`Patent Owner also incorrectly asserts Petitioner cannot prove the challenged
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`claims are obvious without expert testimony specifically addressing each claim
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`element. No statute or rule requires such testimony. The Board has repeatedly held
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`“[t]estimony from a technical expert can be helpful to show what would have been
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`known to a person of ordinary skill in the art and explain the significance of
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`elements in a claim,” but it “is not a prerequisite for establishing unpatentability by
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`a preponderance of the evidence, . . . just as it is not a prerequisite for a[n] [IPR]
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`petition.” See, e.g., Guangdong Xinbao Elec. Appliances Holdings v. Adrian
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`Rivera, IPR2014-00042, Paper 50 at 22-23 (Feb. 6, 2015).
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`Patent Owner’s reliance on Brand v. Miller, 487 F.3d 862 (Fed. Cir. 2007) is
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`misguided—the Brand court recognized that “the Board’s expertise appropriately
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`plays a role in interpreting record evidence.” Id. at 869. Patent Owner also ignores
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`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015), where the Federal
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`Circuit stated that in an IPR there was no requirement for an expert to “guid[e] the
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`Board as to how it should read prior art” as “Board members, because of expertise,
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`may more often find it easier to understand and soundly explain the teachings and
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`suggestions of prior art without expert assistance.” Id. at 1079; see 35 U.S.C. § 6.
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`The Board is more than capable of doing the “thinking” necessary to analyze the
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`references and to compare those teachings to the claims at issue. See Titanium
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`Metals Corp. of America v. Banner, 778 F.2d 775, 776-79 (Fed. Cir. 1985).
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`VI. Aventail and the RFC References Are Conclusively Prior Art
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`The Board has already determined, based on the same evidence presented