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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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`BLACK SWAMP IP, LLC
`Petitioner
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`v.
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`VIRNETX INC.
`Patent Owner
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`____________
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`Case IPR2016-00693
`Patent Number: 7,418,504
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Case IPR2016-00693
`U.S. Patent No. 7,418,504
`Our Ref. 213.7001-00IPR
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`TABLE OF CONTENTS
`INTRODUCTION. .......................................................................................... 1 
`I. 
`NO REQUIREMENT FOR EXPERT TESTIMONY. .................................... 1 
`II. 
`III.  CLAIM CONSTRUCTION FROM THE PETITION SHOULD BE
`ADOPTED. ...................................................................................................... 5 
`A. 
`“Domain Name Service System.” ......................................................... 5 
`B. 
`“Secure Communications Link.”........................................................... 7 
`C. 
`“Indication.” ........................................................................................ 12 
`IV.  THE ANTICIPATION REJECTION UNDER 35 U.S.C. § 102(B)
`BASED ON KIUCHI. ................................................................................... 16 
`A.  Kiuchi Clearly Discloses the “Indication” Recitations of
`Independent Claims 1, 36, and 60. ...................................................... 16 
`Kiuchi Clearly Discloses the “Plurality of Domain Names and
`Corresponding Network Addresses” Recitations of Independent
`Claims 1, 36, and 60. ........................................................................... 18 
`Kiuchi Clearly Discloses the “Supports Establishing a Secure
`Communication Link” Recitations of Independent Claims 1, 36,
`and 60. ................................................................................................. 20 
`D.  Kiuchi Clearly Discloses the “Machine-Readable Medium
`Comprising Instructions Executable in a Domain Name Service
`System” Recitations of Independent Claim 36. .................................. 22 
`Dependent Claims 15 and 39. ............................................................. 22 
`E. 
`Dependent Claims 16 and 40. ............................................................. 24 
`F. 
`G.  Dependent Claims 27 and 51. ............................................................. 26 
`CONCLUSION .............................................................................................. 26
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`V. 
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`B. 
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`C. 
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`Case IPR2016-00693
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`TABLE OF AUTHORITIES
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`Statutes 
`35 U.S.C. § 102(b) ..................................................................................................... 1
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`Federal Circuit Cases 
`Belden Inc. v. Ber-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015) ................................... 2
`Brand v. Miller, 487 F.3d 862, 869-71 (Fed. Cir. 2007) .......................................2, 3
`SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) .............. 9
`VirnetX Inc. v. Apple Inc., Fed. Cir. Appeal No. 2015-1934, 2015-1935 ................. 4
`Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010) ............................ 2
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`Board Cases
`IPR2014-00614 ........................................................................ 7, 8, 9, 10, 14, 15, 17 
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`Other
`Webster’s Third New International Dictionary (1971) ........................................... 14
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`Case IPR2016-00693
`U.S. Patent No. 7,418,504
`Our Ref. 213.7001-00IPR
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`EXHIBITS
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`U.S. Patent No. 7,418,504.
`Institution Decision dated October 15, 2014 in IPR2014-00612,
`IPR2014-00613, and IPR2014-00614 requested by Microsoft
`Corp. (“Microsoft Institution Decision”).
`Right of Appeal Notice in Inter Partes Reexam. 95/001,788.
`Right of Appeal Notice in Inter Partes Reexam. 95/001,851.
`Takahiro Kiuchi and Shigekoto Kaihara, “C-HTTP – The
`Development of a Secure, Closed HTTP-based Network on the
`Internet,” published by IEEE in the Proceedings of SNDSS
`1996 (“Kiuchi”).
`Patent Owner’s Preliminary Response in IPR2013-00393.
`Patent Owner’s Preliminary Response in IPR2013-00394.
`Selected Portions of Webster’s Third New International
`Dictionary (1971).
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`
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`Exhibit 1001
`Exhibit 1002
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`Exhibit 1003
`Exhibit 1004
`Exhibit 1005
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`Exhibit 1006
`Exhibit 1007
`Exhibit 1008
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`Case IPR2016-00693
`U.S. Patent No. 7,418,504
`Our Ref. 213.7001-00IPR
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`I.
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`INTRODUCTION.
`The present proceeding involves claims 1, 2, 5, 6, 15, 16, 27, 33, 36, 37, 39,
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`40, 51, 57, and 60 (including independent claims 1, 36, and 60) of U.S. Patent No.
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`7,418,504 (“’504 patent”). The present proceeding was instituted by the Board in
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`an Institution Decision dated September 9, 2016 (“Institution Decision”) in
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`accordance with a Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`filed February 29, 2016 (“Petition”).
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`Petitioner submits the following in response to the Patent Owner’s Response
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`dated November 28, 2016 (“Patent Owner’s Response”). As discussed below, (1)
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`the Patent Owner’s stated requirement for expert testimony is unfounded; (2)
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`Petitioner’s claim construction from the Petition should be adopted; and (3) the
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`Board should maintain the anticipation rejection under 35 U.S.C. § 102(b) based
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`on Kiuchi (Ex. 1005).
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`II. NO REQUIREMENT FOR EXPERT TESTIMONY.
`Petitioner submits that the Patent Owner’s position regarding the absolute
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`need for expert testimony to bolster Petitioner’s anticipation position is unfounded.
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`The Patent Owner posits that the absence of expert testimony is somehow
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`dispositive of the merits of Petitioner’s anticipation position. Nothing could be
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`further from the truth.
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`As an initial matter, the Patent Owner does not discuss the controlling
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`precedent, Belden Inc. v. Ber-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015), from the
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`Federal Circuit in this regard. In Belden Inc., the Federal Circuit stated that there
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`was no requirement for an expert to “guid[e] the Board as to how it should read
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`prior art.” (Belden Inc., 805 F.3d at 1079.) The Federal Circuit further stated that
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`“[e]ven in court … ‘expert testimony is not required when the references and the
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`invention are easily understandable.’” (Belden Inc., 805 F.3d at 1079, quoting
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`Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010).) Moreover,
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`because of the expertise of the Board, the Federal Circuit stated that the Board
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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.” (Belden Inc., 805 F.3d at
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`1079.) As here, the Board has applied its expertise in reviewing the anticipation
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`rejection presented in the Petition.
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`Furthermore, the Patent Owner mischaracterizes the cases cited thereby to
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`support its position. Citing to Brand v. Miller, 487 F.3d 862, 869-71 (Fed. Cir.
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`2007), the Patent Owner indicates that “[t]he Board cannot use its own expertise as
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`a substitute for evidence of knowledge of one of ordinary skill in the art.” (Patent
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`Owner’s Response at page 7.) However, the Patent Owner’s indication is
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`misleading. The Court in Brand v. Miller also indicated that “the Board’s expertise
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`appropriately plays a role in interpreting record evidence.” (Brand v. Miller, 487
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`F.3d at 869.) However, in Brand v. Miller, the Board mistakenly “did not just
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`interpret the drawings … from the standpoint of one skilled in the art,” but instead
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`made detailed findings about how a device could be configured in accordance with
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`the claim at issue that were not found in the record evidence. (Brand v. Miller, 487
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`F.3d at 870-71.) Here, the Board made no such mistake. The Board did exactly
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`what the Board is entitled to do – interpret the prior art in view of Petitioner’s
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`anticipation position.
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`Additionally, the Patent Owner mischaracterizes the applicability of the
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`other Federal Circuit cases cited thereby. The Federal Circuit cases cited by the
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`Patent Owner are applicable to court proceedings, where the courts, unlike the
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`Board, do not have any specialized expertise. These cases, in view of Belden Inc.,
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`do not control the present inter partes review before the Board. In fact, although in
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`a non-precedential opinion, the Federal Circuit has recently opined on this issue in
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`a case involving the Patent Owner. In a Decision dated December 9, 2016 in
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`VirnetX Inc. v. Apple Inc., Fed. Cir. Appeal No. 2015-1934, 2015-1935, the
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`Federal Circuit indicated that “to the extent that VirnetX contends that the PTAB
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`must consider expert testimony, no authority supports that proposition.” (VirnetX
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`Inc. v. Apple Inc., slip op. at page 7 (emphasis in original).) Furthermore, the
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`Federal Circuit indicated the following:
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`If the PTAB finds that the technology in a particular case is
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`sufficiently complex that expert testimony is essential, it may rely
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`upon that evidence. But even if the record contains such testimony,
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`the PTAB must weigh that testimony against other record evidence in
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`reaching its conclusion, and it may give that testimony less weight, so
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`long as it supports its decision with substantial evidence. The PTAB
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`is entitled to weigh the credibility of the witnesses in light of their
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`qualifications and evaluate their assertions accordingly. Thus, even if
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`the record contains expert testimony, the law does not require the
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`PTAB to rely upon it.
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`(VirnetX Inc. v. Apple Inc., slip op. at pages 7-8 (internal quotations and citation
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`omitted) (emphasis in original).) As such, Petitioner submits that the Patent
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`Owner’s position regarding the absolute need for expert testimony to bolster
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`Petitioner’s anticipation position is without merit.
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`III. CLAIM CONSTRUCTION FROM THE PETITION SHOULD BE
`ADOPTED.
`In the Institution Decision, the Board declined to adopt any express
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`construction for the claim terms identified by Petitioner in the Petition.
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`Nevertheless, Petitioner requests that the following claim terms should be
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`construed.
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`A.
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`“Domain Name Service System.”
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`The Patent Owner has repeatedly asserted to the Board that no construction
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`of the claim term “domain name service system” is required. (Ex. 1006 at pages
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`33-35, Ex. 1007 at pages 29-31, and Patent Owner’s Response at pages 10-11.)
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`According to the Patent Owner, the claims themselves define the characteristics of
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`the domain name service system. (Ex. 1006 at page 33, Ex. 1007 at page 29; and
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`Patent Owner’s Response at page 11.) As such, Petitioner submits that it is
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`reasonable, in view of Patent Owner’s position, to consider the claim term “domain
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`name service system” to encompass any system with the features of the claims.
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`From a reading of the ‘504 patent, it is clear that the word “system” (in the
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`claim term “domain name service system”) means one or more discrete computers
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`or devices. To illustrate, column 40, lines 35-48, of the ‘504 patent (Ex. 1001)
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`describes a domain name service system including a modified DNS server 2602
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`and a gatekeeper server 2603. According to the ‘504 patent, “[g]atekeeper 2603
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`can be implemented on a separate computer (as shown in FIG. 26) or as a function
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`within modified DNS server 2602.” (‘504 patent (Ex. 1001) at column 40, lines
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`35-37.) Furthermore, according to the ‘504 patent, “although element 2602 is
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`shown as combining the functions of two servers, the two servers can be made to
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`operate independently.” (‘504 patent (Ex. 1001) at column 40, lines 45-47.)
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`Also, in the ‘788 and ‘851 reexaminations, the Examiner agreed that the
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`broadest reasonable construction of a system in the context of the ‘504 patent
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`encompasses a single or multiple devices. According to the Examiner, a “DNS
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`system is reasonably interpreted as comprising a single device or multiple
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`devices.” (Ex. 1003 at page 17, and Ex. 1004 at page 20 (emphasis in originals).)
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`Accordingly, Petitioner submits that the claim term “domain name service
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`system” encompasses any system with the features of the claims, where the system
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`may include one or more computers or devices.
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`B.
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`“Secure Communications Link.”
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`The Patent Owner has repeatedly asserted to the Board that the claim term
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`“secure communication link” should mean a “direct communication link that
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`provides data security through encryption.” (Ex. 1006 at pages 35-39, Ex. 1007 at
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`pages 31-35, and Patent Owner’s Response at pages 11-20.) Petitioner disagrees.
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`The claim term “secure communication link” does not require a direct
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`communication link or encryption.
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`As an initial matter, Petitioner notes that the Board previously construed the
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`claim term “secure communication link” in IPR2014-00614 directed to the ‘504
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`patent. The Board in IPR2014-00614 indicated that the claim term “‘secure
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`communication link’ means ‘a transmission path that restricts access to data,
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`addresses, or other information on the path, generally using obfuscation methods to
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`hide information on the path, including, but not limited to, one or more of
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`authentication, encryption, or address hopping.’” (Microsoft Institution Decision
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`(Ex. 1002) at page 11.) As discussed in the Petition, Petitioner agrees with the
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`meaning assigned by the Board to the claim term “secure communication link” in
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`IPR2014-00614.
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`1. “Secure Communications Link” Does Not Require Encryption.
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`The Patent Owner erroneously concludes that the claim term “secure
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`communication link” requires encryption. Initially, Petitioner notes that the ‘504
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`patent indicates that “[d]ata security is usually tackled using some form of data
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`encryption.” (‘504 patent (Ex. 1001) at column 1, lines 55-56.) As such, the ‘504
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`patent implies that the “security” may include, but does not require, encryption.
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`The ‘504 provides a specific example that employs “unencrypted message
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`packets,” while using “different levels of authentication,” and, under some
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`circumstances, “a keyed hopping sequence.” (‘504 patent (Ex. 1001) at column
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`54, lines 40-67.) Furthermore, the ‘504 patent also describes “various
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`embodiments” that form “secure communication” by “‘hopping’ different
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`addresses using one or more algorithms and one or more moving windows that
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`track a range of valid addresses to validate received packets,” and using this
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`hopping technique on “[p]ackets transmitted according to one or more of the
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`inventive principles will be generally referred to as ‘secure’ packets or ‘secure
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`communications.’” (‘504 patent (Ex. 1001) at column 21, lines 46-55.)
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`Because of this disclosure from the ‘504 patent, the Board previously
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`indicated in IPR2014-00614 that “given the different examples and general
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`descriptions that encompass a wide variety of techniques, the ‘504 [patent]
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`describes different levels of security by using different methods to obtain different
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`security levels, rendering the term ‘secure’ relative.” (Microsoft Institution
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`Decision (Ex. 1002) at page 10.) Thus, the Board concluded and Petitioner agrees
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`that the claim term “secure communication link” does not require encryption.
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`Furthermore, Petitioner notes that dependent claims 28 and 52 depending
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`from independent claims 1 and 36, respectively, each recite “wherein the secure
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`communication link uses encryption." According to the Federal Circuit in SRI Int’l
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`v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985): “It is settled law
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`that when a patent claim does not contain a certain limitation and another claim
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`does, that limitation cannot be read into the former claim in determining either
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`validity or infringement.” As such, contrary to the Patent Owner’s position, the
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`recitation of “encryption” in dependent claims 28 and 52 or a requirement for
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`encryption should not be read into independent claims 1 and 36. By extension, a
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`requirement for encryption also should not be read into independent claim 60.
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`2. “Secure Communication Link” Does Not Require Direct
`Communication.
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`The Patent Owner erroneously contends that the secure communication link
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`requires direct communication. The claims of the ‘504 patent do not include the
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`word “direct,” and the specification of the ‘504 patent does not provide any clear
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`explanation of what “direct” means. In the Patent Owner’s own words, the ‘504
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`patent describes that “the link traverses a network (or networks) through which it is
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`simply passed or routed via various network devices such as Internet Service
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`Providers, firewalls, and routers.” (Patent Owner’s Response at page 15.)
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`However, the ‘504 patent does not indicate which, if any, of these configurations
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`would render communications “indirect,” rather than “direct.” Without a clear
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`explanation of what is or what is not being excluded by use of the term “direct”
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`communication, there cannot be clear and unequivocal disavowal of “indirect”
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`communications.
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`In assigning meaning to the claim term “secure communication link,” the
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`Board previously indicated in IPR2014-00614 that “the record does not support,
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`and we decline to impart,” an implied requirement for a “direct” communication
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`link. (Microsoft Institution Decision (Ex. 1002) at pages 7-8.) Petitioner agrees –
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`the ‘504 patent does support a requirement of a “direct” communication link in
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`construing the claim term “secure communication link.”
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`3. Disclaimer and “Secure Communication Link.”
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`As discussed above, the Patent Owner makes much about the meaning of
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`“secure communication link.” The Patent Owner also indicates that certain
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`meanings of “secure communication link” were disclaimed. According to the
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`Patent Owner, “VirnetX distinguished another prior art reference, arguing that it
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`has not been shown to disclose a secure communication link because computers
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`connected according to [the reference] do not communicate directly with each
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`other.” (Patent Owner’s Response at page 15 (internal quotation omitted).)
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`However, Petitioner notes that nowhere in independent claims 1, 36, and 60 does it
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`indicate what the “secure communication link” is between. In fact, independent
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`claims 1, 36, and 60 are silent with respect to the end points of the “secure
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`communication link.” As such, if there is no guidance in independent claims 1, 36,
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`and 60 as to the end points of the “secure communication link,” then Petitioner
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`submits that there can be no disclaimer of directness or indirectness of
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`communication between the non-existent end points. The Patent Owner cannot
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`disclaim meaning to claim elements (i.e., non-existent end points and non-existent
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`communication between the non-existent end points) that are not in independent
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`claims 1, 36, and 60 to begin with.
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`C.
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`“Indication.”
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`The Patent Owner erroneously contends that the claim term “indication”
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`does not require construction. The Patent Owner also argues that some kind of
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`disclaimer precludes Petitioner’s construction. However, the Patent Owner is
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`misreading independent claims 1, 36, and 60 by confusing claim limitations of
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`independent claims 1, 36, and 60 with the preambles thereof and indicating that the
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`“indication” and alleged “establishing” claim elements are separate elements.
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`According to the Patent Owner, “during reexamination of the ‘504 patent,
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`VirnetX unequivocally disclaimed from the scope of the indication phrases the
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`establishment of a secure communication link itself.” (Patent Owner’s Response at
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`page 23.) The disclaimer allegedly occurs because the Patent Owner argues that
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`“[c]laim 1 makes clear that the ‘indication’ and the ‘establishing’ are two separate
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`[claim] elements,” and “the act of establishing the secure communication link is
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`something separate from the act of indicating that the DNS system supports
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`establishing a secure communication link.” (Ex. 2017 at page 27.) In pertinent
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`part, independent claims 1, 36, and 60 actually recite the following:
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`(1) The preamble of independent claim 1 recites “[a] system for
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`providing a domain name service for establishing a secure
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`communication link,” and the body thereof recites a domain name
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`service system “to comprise an indication that the domain name
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`service system supports establishing a secure communication link”;
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`(2) The preamble of independent claim 36 does not include
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`recitations to “establishing a secure communication link,” and the
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`body thereof recites “supporting an indication that the domain name
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`service system supports establishing a secure communication link”;
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`and
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`(3) The preamble of independent claim 60 recites “[a] method of
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`providing a domain name service for establishing a secure
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`communication link,” and the body thereof recites “the domain name
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`service system comprising an indication that the domain name service
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`system supports establishing a secure communication link”.
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`As such, Petitioner submits that first recitations of the alleged “establishing”
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`claim elements are in the preambles of independent claims 1 and 60, and second
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`recitations of the alleged “establishing” claim elements are part of the “indication”
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`claim elements in independent claims 1, 36, and 60.
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`However, Petitioner submits that the recitations of “for establishing a secure
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`communication link” in the preambles of independent claims 1 and 60 are clearly
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`non-limiting statements of intended use. As such, this statement of intended use
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`should be accorded no patentable weight. Furthermore, Petitioner submits that the
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`recitations of “supports establishing a secure communication link” in the bodies of
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`independent claims 1, 36, and 60 are embedded in the “indication” recitations
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`thereof. As such, the “indication” claim elements and the alleged “establishing”
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`claim elements are not separate claim elements in independent claims 1, 36, and
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`60. Thus, the Patent Owner cannot disclaim meaning to claim elements (i.e., non-
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`existent separate “indication” and alleged “establishing” claim elements) that are
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`not in independent claims 1, 36, and 60 to begin with.
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`As discussed in the Petition, it is submitted that the claim term “indication”
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`means a visible or non-visible message or signal that the DNS system supports
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`establishing a secure communication link, including the establishment of the secure
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`communication link itself. This construction of the claim term “indication” is
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`identical to the construction promulgated by the Petitioner of IPR2014-00614.
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`Petitioner acknowledges that the Board previously construed the claim term
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`“indication” in IPR2014-00614. In doing so, the Board, by citing to Webster’s
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`Third New International Dictionary (1971), indicated that “[t]he term ‘indication’
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`ordinarily means ‘the action of indicating’ or ‘something (as a signal, sign,
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`suggestion) that serves to indicate.’” (Microsoft Institution Decision (Ex. 1002) at
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`page 12; Ex. 1008.) Furthermore, the Board indicated that the “[t]he term
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`‘indicate’ ordinarily means ‘to point out or point to or toward with more or less
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`exactness’ or ‘to show the probable presence or existence or nature or course of.’”
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`(Microsoft Institution Decision (Ex. 1002) at page 12; Ex. 1008.) According to the
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`Board, “the Specification [of the ‘504 patent] is not inconsistent with the ordinary
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`meaning or Petitioner’s construction” in IPR2014 00614. (Microsoft Institution
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`Decision (Ex. 1002) at page 12.)
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`The Board then concluded in IPR2014-00614 that “for purposes of this
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`Decision, the term ‘indication’ broadly, but reasonably, means ‘something that
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`shows the probable presence or existence or nature of,” and “[i]n accordance with
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`this construction, in context of claim 1, an indication that a secure communication
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`link is in operation constitutes an indication that the system supports establishing a
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`secure communication link.” (Microsoft Institution Decision (Ex. 1002) at pages
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`12-13.) If the Board does not adopt Petitioner’s construction of the claim term
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`“indication,” Petitioner is amenable to the construction from IPR2014-00614.
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`IV. THE ANTICIPATION REJECTION UNDER 35 U.S.C. § 102(B)
`BASED ON KIUCHI.
`A. Kiuchi Clearly Discloses the “Indication” Recitations of
`Independent Claims 1, 36, and 60.
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`The Patent Owner’s position with respect to this limitation of independent
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`claims 1, 36, and 60 is based on an erroneous interpretation of the “indication”
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`recitation. As discussed above, the Patent Owner argues that independent claims 1,
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`36, and 60 recite separate “indication” and alleged “establishing” claim elements.
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`As such, the Patent Owner is arguing that “it is improper to equate establishing a
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`secure communication link with indicating whether the domain name service
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`system supports establishing a secure communication link.” (Patent Owner’s
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`Response at page 30.) Petitioner disagrees.
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`As discussed above, the “indication” claim elements and alleged
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`“establishing” claim elements are not separate claim elements in independent
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`claims 1, 36, and 60. At best, the recitation of “supports establishing a secure
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`communication link” in the bodies of independent claims 1, 36, and 60 is
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`embedded in the “indication” recitations thereof.
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`Furthermore, Kiuchi clearly discloses the “indication” claim elements of
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`independent claims 1, 36, and 60. Kiuchi’s C-HTTP name server determines if a
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`query from the client-proxy is legitimate and examines if the requested server-side
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`proxy is registered. If the C-HTTP name server determines that the query is
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`legitimate and the server-side proxy is registered, the C-HTTP name server
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`provides an IP address, as well as a public key (and both request and response
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`Nonce values), of the server-side proxy to the client-side proxy. (Kiuchi (Ex.
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`1005) at page 65, Section 2.3(2).) In doing so, the C-HTTP name server facilitates
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`the establishment and operation of a secure communication link between the client-
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`side proxy and the server-side proxy.
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`The establishment and operation of a secure communication link in Kiuchi
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`between the client-side proxy and the server-side proxy is in and of itself “an
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`indication that the domain name service system supports establishing a secure
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`communication link” under both the meaning ascribed to the claim term
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`“indication” by Petitioner, and the meaning assigned to this claim term by the
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`Board in IPR2014-00614. That is, under Petitioner’s construction, the
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`establishment and operation of a secure communication link between the client-
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`side proxy and the server-side proxy is an indication (i.e., a visible or non-visible
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`message or signal) that Kiuchi’s domain name service system supports the
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`establishment of a C-HTTP connection (i.e., a secure communication link).
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`Furthermore, under the Board’s construction from IPR2014-00614, the
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`establishment and operation of a secure communication connection between the
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`client-side proxy and the server-side proxy is an indication that a secure
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`communication link is in operation that constitutes an indication that the system
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`supports establishing a secure communication link. Therefore, it is clear that
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`Kiuchi discloses a domain name service system that provides “an indication that
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`the domain name service system supports establishing a secure communication
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`link.”
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`B. Kiuchi Clearly Discloses the “Plurality of Domain Names and
`Corresponding Network Addresses” Recitations of Independent
`Claims 1, 36, and 60.
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`The Patent Owner’s position with respect to this limitation of independent
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`claims 1, 36, and 60 is based on an erroneous requirement that “the URL (the
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`alleged domain name) does not correspond to the IP address of the server-side
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`proxy (the alleged corresponding network address) but to a resource on the origin
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`server.” (Patent Owner’s Response at page 32.) Independent claim 1 simply
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`recites a domain name service system configured to “store a plurality of domain
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`names and corresponding network addresses”; and independent claims 36 and 60
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`simply recite “storing a plurality of domain names and corresponding network
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`addresses.” As such, Patent Owner is arguing for extra limitations (i.e.,
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`requirement for correspondence to the IP address of the server-side proxy) to be
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`read into independent claims 1, 36, 60. Petitioner disagrees.
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`Kiuchi clearly discloses that, when a given institution wants to participate in
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`the system, each proxy will register an IP address and a hostname (i.e., a network
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`address and domain name, respectively) with the C-HTTP name server. (Kiuchi
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`(Ex. 1005) at page 65, Section 2.2.) Thus, the registered IP address and hostname
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`are stored by the C-HTTP name server and correspond to one another, and, in the
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`context of Kiuchi, the IP address is a network address and the hostname is a
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`domain name. Therefore, it is clear that Kiuchi discloses storing a plurality of
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`domain names and corresponding network addresses.
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`Additionally, it is noted that the Board indicated in the Institution Decision
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`that “Patent Owner does not assert or demonstrate persuasively that claim 1 also
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`recites that the domain name must correspond to any specific component, much
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`less that the domain name must correspond to a server-side proxy.” (Institution
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`Decision at page 7.) Petitioner agrees with the Board’s succinct position in this
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`regard.
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`C. Kiuchi Clearly Discloses the “Supports Establishing a Secure
`Communication Link” Recitations of Independent Claims 1, 36,
`and 60.
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`
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`The Patent Owner’s position with respect to this limitation of independent
`
`claims 1, 36, and 60 is based on an erroneous claim construction. Using this
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`erroneous claim construction, the Patent Owner argues that “the C-HTTP proxy
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`servers in Kiuchi preclude the user agent and origin server (the true client and
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`target) from directly communicating with one another by stopping communication
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`at the proxies, wrapping/unwrapping messages, encrypting/decrypting their
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`contents, re-formatting, and ultimately resending messages.” (Patent Owner’s
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`Response at page 35 (emphasis in original).) As discussed above, the Patent
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`Owner erroneously contends the “secure communication link” requires “direct”
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`communication. Additionally, Petitioner notes that nowhere in independent claims
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`1, 36, and 60 does it indicate what the “secure communication link” is between –
`
`independent claims 1, 36, and 60 are silent with respect to the end points of the
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`“secure communication link.”
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`Case IPR2016-00693
`U.S. Patent No. 7,418,504
`Our Ref. 213.7001-00IPR
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`Kiuchi clearly discloses that the C-HTTP name server determines if a query
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`from the client-proxy is legitimate and examines if