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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`VIRNETX INC.,
`Patent Owner
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`Case IPR2016-00693
`Patent 7,418,504
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`PATENT OWNER VIRNETX INC.’S NOTICE OF APPEAL
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BLACK SWAMP IP, LLC,
`Petitioner
`v.
`VIRNETX INC.,
`Patent Owner
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`Case IPR2016-00693
`Patent 7,418,504
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`PATENT OWNER VIRNETX INC.’S NOTICE OF APPEAL
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`Case IPR2016-00693
`Patent 7,418,504
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
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`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Patent Owner
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`VirnetX Inc. (“VirnetX”) appeals to the United States Court of Appeals for the
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`Federal Circuit from the Final Written Decision entered on June 12, 2017, (Paper
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`14) (the “Final Written Decision”) by the United States Patent and Trademark
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`Office, Patent Trial and Appeal Board (the “Board”), and from all underlying
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`orders, decisions, rulings, and opinions, as well as the Board’s Decision on
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`Request for Rehearing, entered on July 24, 2017 (Paper 16). A copy of the Final
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`Written Decision and the Decision on Request for Rehearing is attached.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), VirnetX indicates that the
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`issues on appeal include, but are not limited to, the Board’s authority to invalidate
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`a granted patent through inter partes review proceedings, the Board’s
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`determination of unpatentability of claims 1, 2, 5, 6, 15, 16, 27, 33, 36, 37, 39, 40,
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`51, 57, and 60 of U.S. Patent No. 7,418,504 under 35 U.S.C. § 102, and any
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`findings or determinations supporting or related to those rulings including, without
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`limitation, the Board’s construction and application of the claim language, the
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`Board’s interpretation of the references, and the Board’s interpretation of expert
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`Case IPR2016-00693
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`evidence.
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`Simultaneous with this submission, a copy of this Notice of Appeal is being
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`filed with the Board. In addition, the Notice of Appeal and the required fee are
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`being filed electronically with the Clerk of Court for the United States Court of
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`Appeals for the Federal Circuit.
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`Respectfully submitted this 22nd day of September, 2017.
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`By: /Naveen Modi/
`Naveen Modi
`Registration No. 46,224
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, DC 20005
`(202) 551-1700
`naveenmodi@paulhastings.com
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`Counsel for VirnetX Inc.
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`CERTIFICATE OF SERVICE
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`Case IPR2016-00693
`Patent 7,418,504
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`The undersigned certifies that, in addition to being filed electronically
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`through Patent Trial and Appeal Board End to End (PTAB E2E), the original
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`version of this Notice of Appeal was filed by hand on September 22, 2017 with the
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`Director of the United States Patent and Trademark Office, at the following
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`address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`The undersigned also certifies that a true and correct copy of this Notice of
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`Appeal and the required fee were filed electronically via CM/ECF on September
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`22, 2017, with the Clerk of Court for the United States Court of Appeals for the
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`Federal Circuit.
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`The undersigned also certifies that a true and correct copy of this Notice of
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`Appeal was served on September 22, 2017 on counsel of record for Petitioner
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`Black Swamp IP, LLC by electronic mail (by agreement of the parties) at the
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`following address:
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`Thomas H. Martin
`Wesley C. Meinerding
`MARTIN & FERRARO
`1557 Lake O’Pines Street, NE
`Hartville, Ohio 44632
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`Case IPR2016-00693
`Patent 7,418,504
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`tmartin@martinferraro.com
`docketing@martinferraro.com
`1501 K Street NW
`Washington, DC 20005
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`Date: September 22, 2017
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`By: /Naveen Modi/
`Naveen Modi
`Registration No. 46,224
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, DC 20005
`(202) 551-1700
`naveenmodi@paulhastings.com
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`Counsel for VirnetX Inc.
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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 14
`Entered: June 12, 2017
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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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`Case IPR2016-00693
`Patent 7,418,504 B2
`____________
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`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`and KARL D. EASTHOM and STEPHEN C. SIU, Administrative Patent
`Judges.
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`SIU, Administrative Patent Judge.
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`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and C.F.R. § 42.73
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`Black Swamp IP, LLC (“Petitioner”) requested inter partes review of
`claims 1, 2, 5, 6, 15, 16, 27, 33, 36, 37, 39, 40, 51, 57, and 60 of U.S. Patent
`No. 7,418,504 B2 (“the ’504 patent”). Pet. 1. We issued a Decision to
`institute an inter partes review (Paper 8, “Inst. Dec.”) of claims 1, 2, 5, 6,
`15, 16, 27, 33, 36, 37, 39, 40, 51, 57, and 60 of the ’504 patent under
`35 U.S.C. § 102 as anticipated by Kiuchi.1 Inst. Dec. 2, 9.
`After institution of trial, VirnetX Inc. (“Patent Owner”) filed a Patent
`Owner’s Response (Paper 10, “PO Resp.”), to which Petitioner replied
`(Paper 12, “Pet. Reply”). In response, Petitioner filed “Patent Owner’s
`Identification of New Issues in Petitioner’s Reply Brief” (Paper 13, “PO
`Identification”). Oral argument was not requested by any of the involved
`parties.
`We have jurisdiction under 35 U.S.C. § 318(a). After considering the
`evidence and arguments of both parties, and for the reasons set forth below,
`we determine that Petitioner met its burden of showing, by a preponderance
`of the evidence, that claims 1, 2, 5, 6, 15, 16, 27, 33, 36, 37, 39, 40, 51, 57,
`and 60 of the ’504 patent are unpatentable.
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`RELATED MATTERS
`The ’504 patent is the subject of the following civil actions: (i) Civ.
`Act. No. 6:13-cv-00211-LED (E.D. Tex.); (ii) Civ. Act. No. 6:12-cv-00855-
`LED (E.D. Tex.); and (iii) Civ. Act. No. 6:10-cv-00417-LED (E.D. Tex.);
`Civ. Act. No. 6:11-cv-00018 (E.D. Tex.); Civ. Act. No. 6:13-cv-00351 (E.D.
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`1 Takahiro Kiuchi and Shigekoto Kaihara, C-HTTP – The Development of a
`Secure, Closed HTTP-Based Network on the Internet, PROCEEDINGS OF THE
`SYMPOSIUM ON NETWORK AND DISTRIBUTED SYSTEM SECURITY, IEEE 64-75
`(1996) (Ex. 1005, “Kiuchi”).
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`Tex.); Civ. Act. No. 6:13-mc-00037 (E.D. Tex.); and Civ. Act. No. 9:13-mc-
`80769 (E.D. Fla). Pet. 2.
`The ’504 patent is also the subject of Reexamination Control Nos.
`95/001,788 and 95/001,851. Pet. 2.
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`THE ’504 PATENT (EX. 1001)
`The ’504 Patent discloses a system and method for communicating
`over the internet. Ex. 1001 3:14-15.
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`ILLUSTRATIVE CLAIM(S)
`Independent claim 1 is representative of the claimed subject matter.
`Claim 1 is reproduced below:
`1.
`A system for providing a domain name service
`for establishing a secure communication link, the system
`comprising:
`a domain name service system configured to be connected
`to a communication network, to store a plurality of domain
`names and corresponding network addresses, to receive a query
`for a network address, and to comprise an indication that the
`domain name service system supports establishing a secure
`communication link.
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`OVERVIEW OF PRIOR ART
`Kiuchi (Exhibit 1005)
`Kiuchi discloses closed networks (closed HTTP (Hypertext Transfer
`Protocol)-based network (C-HTTP)) of related institutions on the Internet.
`Ex. 1005, 64. A client and client-side-proxy “asks the C-HTTP name server
`whether it can communicate with the [specified] host.” Id. at 65. If “the
`query is legitimate” and if “the requested server-side proxy is registered in
`the closed network and is permitted to accept the connection,” the “C-HTTP
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`name server sends the [requested] IP address.” Id. After confirmation by
`the C-HTTP name server “that the specified server-side proxy is an
`appropriate closed network member, a client-side proxy sends a request for
`connection to the server-side proxy, which is encrypted.” Id.
`The server-side proxy “accepts [the] request for connection from [the]
`client-side proxy” (id. at 65) and, after the C-HTTP name server determines
`that “the client-side proxy is an appropriate member of the closed network,”
`that “the query is legitimate,” and that “the client-side proxy is permitted to
`access . . . the server-side proxy,” the “C-HTTP name server sends the IP
`address [of the client-side proxy].” Id. at 66. Upon receipt of the IP address,
`the server-side proxy “authenticates the client-side proxy” and sends a
`connection ID to the client-side proxy. After the client-side proxy “accepts
`and checks” the connection ID, “the connection is established,” after which
`time the client-side proxy forwards “requests from the user agent in
`encrypted form using C-HTTP format.” Id.
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`
`ANALYSIS
`Petitioner explains that Kiuchi discloses a “C-HTTP name server
`[that] operate[s] as a domain name service system [and] is connected to the
`Internet (which is a communication network).” Pet. 20 (citing Ex. 1005, 64–
`65). According to Petitioner, “Kiuchi discloses that the C-HTTP name
`server stores IP addresses and corresponding hostnames” because Kiuchi
`discloses that “each proxy will register an IP address and a hostname . . .
`with the C-HTTP name server . . . [that] correspond to one another [such
`that] the IP address is a network address and the hostname is a domain
`name.” Pet. 20–21 (citing Ex. 1005, 65).
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`Petitioner also argues that Kiuchi discloses that a “client-side proxy
`asks the C-HTTP name server whether it can communicate with the host
`specified in a given URL,” “and, if so, [the C-HTTP name server] provides
`an IP address (i.e., a network address) to the client-proxy.” Pet. 21, 22
`(citing Ex. 1005, 65). In other words, according to Petitioner, Kiuchi
`discloses that the domain name service system of Kiuchi (i.e., the C-HTTP
`name server) receives a query for a network address (i.e., a client-side proxy
`“asks” the server for a network address, or an “IP address”).
`Petitioner also states that “the C-HTTP name server [of Kiuchi]
`facilitates the establishment and operation of a secure communication link
`between the client-side proxy and the server-side proxy” and that “[t]he
`establishment and operation of a secure communication link in Kiuchi . . . is
`in and of itself ‘an indication that the domain name service system supports
`establishing a secure communication link.’” Pet. 23.
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`Claim 1 – Indication
`Claim 1 recites “an indication that the domain name service system
`supports establishing a secure communication link.” As indicated above,
`Petitioner argues that “Kiuchi’s C-HTTP name server . . . determines if a
`query from the client-proxy is legitimate [and, if so,] . . . the C-HTTP name
`server provides an IP address . . . of the server-side proxy to the client-side
`proxy.” Pet. 22 (citing Ex. 1005 65). Also as discussed above, Petitioner
`also argues that “[t]he establishment . . . of a secure communication link in
`Kiuchi . . . is in and of itself ‘an indication . . ..’” Pet. 23.
`Claim 1 recites “a domain name service system for establishing a
`secure communication link” and that the domain name service system is
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`configured to “comprise an indication that the domain name service system
`supports establishing a secure communication link.” Patent Owner argues
`that “it is improper to equate establishing a secure communication link with
`indicating whether the domain name service system supports establishing a
`secure communication link” because claim 1 “separately recit[es]
`‘establishing a secure communication link,’ . . . and ‘an indication that the
`domain name service system supports establishing a secure communication
`link.’” PO Resp. 22, 30 (citing Ex. 2015 ¶ 34, 46). Patent Owner does not
`explain sufficiently how a system that establishes a secure link somehow
`does not “indicate” that it supports doing so if the system establishes the
`secure link. One of skill in the art would have understood a system that
`establishes a secure link would support doing so at least as a matter of
`common sense. If the system did not support establishing a secure link, one
`of skill in the art would have expected such a system not to actually establish
`a secure link (the system not supporting such an action). This is contrary to
`Kiuchi’s system, for example, in which a secure link is established (thereby
`“indicating” that it supports doing so).
`For example, the “domain name service system” is recited in claim 1
`as “establishing a secure communication link,” and comprising “an
`indication that the . . . system” may support the recited function of
`“establishing a secure communication link.” We do not observe, nor does
`Patent Owner point out in a meaningful way, any conflicts between a recited
`system comprising an “indication” that the system supports a recited
`function by performing the function that it supports and a recitation that the
`system is designed to perform that function.
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`Additionally, we note that claim 1 recites “a secure communication
`link” in the preamble and recites an “indication that the . . . system
`supports . . . a secure communication link” in the body of claim 1. The
`second recitation of “a” secure communication link does not have antecedent
`basis to the secure communication link in the preamble and, therefore, may
`not be the same “secure communication link” as that recited in the preamble.
`Patent Owner further argues that establishing a link does not
`constitute an “indication” that the system supports establishing the link
`because “the plain language of the claims . . . teaches that the indication that
`the DNS system supports establishing a secure communication link precedes
`the establishing of a secure communication link.” PO Resp. 23. Patent
`Owner appears to be arguing that the “indication,” as recited in claim 1,
`must be provided prior to establishing a secure communication link. We
`disagree with Patent Owner that claim 1 recites this alleged requirement.
`Rather, claim 1 merely recites a domain name service system configured to
`comprise an indication that the domain name service system supports
`establishing a secure communication link. Hence, claim 1 recites an
`“indication” of a certain condition (i.e., that the system supports establishing
`a link) but does not require the “indication” to be provided at any specific
`point in time or that the “indication” must be provided at any time relative to
`the actual establishment of a secure communication link. In fact, claim 1
`merely recites a system configured to comprise an indication that the system
`supports establishing a link and does not require actual indicating or
`establishing at all much less that any “indicating” must be performed in a
`particular temporal relationship with “establishing.”
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`Patent Owner also argues that Kiuchi fails to disclose an “indication”
`because “VirnetX unequivocally disclaimed from the scope of the indication
`phrases the establishment of a secure communication link itself” and that
`“Patent Owner’s adversary recognized this disclaimer during litigation
`involving the ’504 patent.” PO Resp. 23 (citing Ex. 2017, 27; Ex. 2018, 11;
`Ex. 2016, 9–10). Patent Owner cites to similar arguments previously
`presented to the Examiner in a reexamination proceeding (Ex. 2017) and for
`purposes of claim construction in a related litigation proceeding (Exs. 2016,
`2018). We are not persuaded by Patent Owner’s argument.
`With respect to Patent Owner’s assertion that an “adversary”
`supposedly “recognized [Patent Owner’s alleged] disclaimer during
`litigation,” we note that Patent Owner does not provide a sufficient showing
`of relevance of this presumed “recognition” of an alleged disclaimer by a
`non-party “adversary” to the present proceedings. In addition, after careful
`review of the record, we do not independently identify any meaningful
`relevance.
`Also, with respect to Patent Owner’s reliance on claim construction
`proceedings in the District Court, we are not persuaded by Patent Owner’s
`argument, at least because, in contrast to district court’s claim construction
`standard, we construe claim terms using the “broadest reasonable” standard,
`and “[i]t would be inconsistent with the role assigned to the PTO . . . to
`require it to interpret claims in the same manner as judges [at litigation].” In
`re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Indeed, relying on the
`district court’s claim construction that is not based on the broadest
`reasonable standard when the broadest reasonable standard should be
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`applied is considered “an inapplicable legal premise.” In re Zletz, 893 F.2d
`319, 321 (Fed. Cir. 1989).
`Patent Owner also argues that an analysis involving the “level of
`ordinary skill in the art” in a separate proceeding is “unsupported and
`improper” such that, presumably, a system establishing a link does not
`constitute an “indication” that the system supports establishing the link, as
`recited in claim 1. PO Resp. 31. Patent Owner does not provide sufficient
`explanation of the relevance of alleged statements or arguments made in a
`different matter to this proceeding. In addition, Patent Owner does not
`explain sufficiently how the issue of whether or not statements pertaining to
`the “level of ordinary skill in the art” are supported and proper or not in the
`different matter relates to the issue of whether Kiuchi discloses an
`“indication” in this proceeding. Indeed, we are unable to identify
`independently any relevance at all between these two seemingly unrelated
`issues.
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`Claim 1 – Plurality of Domain Names and Corresponding Network
`Addresses
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`Claim 1 recites a system that is configured “to store a plurality of
`domain names and corresponding network addresses.” As indicated above,
`Petitioner argues that Kiuchi discloses that “the registered IP address and
`hostname are stored by the C-HTTP name server . . . and . . . the IP address
`is a network address and the hostname is a domain name.” Pet. 21.
`Patent Owner argues that Kiuchi fails to disclose a domain name and
`corresponding network address because, according to Patent Owner,
`“Kiuchi’s URL (the alleged domain name) does not correspond to the
`server-side proxy but to the resource itself located on an origin server.” PO
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`Resp. 32 (citing Ex. 2015, 47–48). As Petitioner points out, however,
`Kiuchi discloses a “client-side proxy” that “asks” the “C-HTTP name
`server” to communicate with a “host specified in a given URL” and that the
`C-HTTP name server “examines whether the requested server-side proxy . . .
`is permitted to accept the connection from the client-side proxy.” Pet. 21.
`In other words, contrary to Patent Owner’s contention, Kiuchi discloses that
`the client-side proxy sends a query with a “URL” that corresponds to a
`requested host (i.e., the server-side proxy).
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`Claim 1 – Secure Communication Link
`Claim 1 recites “a secure communication link.” As indicated above,
`Petitioner argues that Kiuchi discloses “the establishment and operation of a
`secure communication link between the client-side proxy and the server-side
`proxy.” Pet 23.
`Patent Owner argues that “Kiuchi’s connection is not direct” but that a
`“secure communication link,” as recited in claim 1, must be “‘direct’
`between a client and target device.” PO Resp. 14, 34. Even assuming that a
`secure communication link between two devices must be “direct” between
`the two devices, Patent Owner’s argument, without adequate explanation,
`does not rebut Petitioner’s showing that the communication link between the
`client-side proxy and the server-side proxy of Kiuchi is “direct.” See Pet.
`Reply 10–11 (noting that Patent Owner fails to indicate whether devices
`such as “Internet Service Providers, firewalls, and routers” impede direct
`access) (citing PO Resp. 15). Kiuchi discloses proxy devices
`communicating with each other without anything somehow impeding the
`communication. See Ex. 1005, 65–66; see also VirnetX Inc. v. Cisco Sys.,
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`Inc. 767 F.3d 1308, 1319–20 (Fed. Cir. 2014) (discussing direct
`communications and Kiuchi albeit not between proxy devices themselves).
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`Claims 36 and 60 – Machine-readable medium comprising instructions
`Patent Owner argues that Kiuchi fails to disclose “code . . . for
`indicating whether the domain name service system supports establishing a
`secure communication link.” PO Resp. 37. Kiuchi discloses “closed
`networks among hospitals and related institutions” that include computers
`(e.g., utilizes “HTML documents”). Ex. 1005, 64, 66. One of skill in the art
`would have understood such computers in such systems to include computer
`“code” for implementing computer functions. We are not persuaded by
`Patent Owner’s argument that Kiuchi discloses computer systems and
`networks that somehow do not contain computer code.
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`Claims 15 and 39 – provide the network address corresponding to a domain
`name
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`Claim 15 recites that “the domain name service system is configured
`to provide, in response to the query, the network address corresponding to a
`domain name from the plurality of domain names and the corresponding
`network addresses.” As noted above, Petitioner argues that Kiuchi discloses
`that a “client-side proxy asks the C-HTTP name server whether it can
`communicate with the host specified in a given URL” “and, if so, provides
`an IP address (i.e., a network address) to the client-proxy.” Pet. 21, 22
`(citing Ex. 1005, 65).
`Patent Owner argues that “Kiuchi’s C-HTTP name server does not
`return the IP address of the URL in the request, which identifies Kiuchi’s
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`origin server, but instead returns a server-side proxy’s IP address.” PO
`Resp. 38. As previously noted, however, Kiuchi discloses that the “URL” in
`the request corresponds to the requested server-side proxy, not the “origin
`server,” as Patent Owner alleges. Ex. 1005, 65.
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`Claims 16 and 40 – query initiated from a first location
`Patent Owner argues that “the client-side proxy [of Kiuchi] forwards
`the network address request” but “the request is not initiated at the client-
`side proxy.” PO Resp. 40 (citing Ex. 2015 ¶ 58). We disagree with Patent
`Owner that the request of Kiuchi is not “initiated” at the client-side proxy in
`view of Kiuchi’s disclosure that the “client-side proxy asks [i.e., sends a
`query to] the C-HTTP name server whether it can communicate with the
`host specified in a given URL.” Ex. 1005, 65. In view of Petitioner’s
`showing by a preponderance of the evidence that a device that sends a query
`“initiates” the query that it sends and Patent Owner’s failure to provide a
`sufficient showing to the contrary, we cannot agree with Patent Owner that
`the client-side proxy that sends a query to a server somehow does not
`“initiate” the query to the server.
`In any event, claim 16 recites that the domain name service system “is
`configured to receive a query initiated from a first location.” Claim 16 does
`not recite any specific required characteristics of the “first location.” Even
`assuming that the client-side proxy (that sends a query to the C-HTTP name
`server) somehow does not “initiate” the query that it sends to the C-HTTP
`name server, claim 16 merely requires that the query be initiated at a
`“location.” Hence, even assuming that the query of Kiuchi is “initiated” at
`some “location” other than the client-side proxy (a position that Patent
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`Owner apparently advances and to which we disagree as previously
`discussed), Kiuchi still discloses the claim limitation of a “query initiated
`from a first location.”
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`Claims 27 and 51 – user at the first location
`Claim 27 recites a system that “is configured to enable establishment
`of a secure communication link between a first location and a second
`location transparently to a user at the first location.”
`Patent Owner argues that “Black Swamp[] map[s] . . . the client-side
`proxy [to] a first location and the server-side proxy [to] a second location”
`but that “a user at a ‘user agent,’ not at the client-side proxy, sends a request
`that the client-side proxy processes.” PO Resp. 40 (citing Ex. 1005, 65–66).
`Even assuming that the “user” is located at the “user agent” of Kiuchi, as
`Patent Owner apparently contends, Kiuchi discloses “closed networks
`among hospitals and related institutions” in which “a client-side proxy [is]
`on the firewall of one institution.” Ex. 1005, 64. A user at a “user agent” is
`situated at the “institution.” The corresponding client-side proxy of Kiuchi
`is situated at the firewall of the “institution.” Hence, both the user agent
`(and the user) and the client-side proxy are located at the same location (i.e.,
`the “institution”).
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`Claims 2, 5, 6, 33, 37, and 57
`Patent Owner does not provide additional arguments in support of
`claims 2, 5, 6, 33, 37, or 57, each of which depend from one of claim 1 or
`claim 36. Based on the evidence of record, Petitioner has met its burden of
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`IPR2016-00693
`Patent 7,418,504 B1
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`showing by a preponderance of the evidence that these claims are
`unpatentable.
`
`Alleged New Issues in Petitioner’s Reply Brief
`Patent Owner argues that Petitioner presents two new arguments
`(“New Issue #1” and “New Issue #2”) in Petitioner’s Reply Brief. PO
`Identification 1–5. After careful consideration of Patent Owner’s arguments
`and for reasons set forth below, we determine that Patent Owner’s
`arguments regarding alleged New Issue #1 are moot because we do not rely
`upon Petitioner’s arguments regarding that issue in this opinion. We also
`determine that alleged New Issue #2 was responsive to arguments raised by
`Patent Owner.
`
`
`Alleged New Issue #1
`Patent Owner raises “New Issue #1,” in which Patent Owner alleges
`that Petitioner argued in the Petition that “Kiuchi discloses establishing a
`secure communication link between the client-side proxy and the server-side
`proxy” but argued in Petitioner’s Reply Brief that “the secure
`communication link could occur between any of the entities in Kiuchi.” PO
`Identification 3 (citing Pet. Reply 21, 23). We note that Petitioner
`demonstrates that the “connection” between the client-side proxy and the
`server-side proxy constitutes a “secure communication link,” and Patent
`Owner does not persuasively refute Petitioner’s showing (see above
`discussion). Even assuming Patent Owner to be correct that Petitioner
`argues in the Reply Brief that Kiuchi discloses a “secure communication
`link” between “any of the entities of Kiuchi,” we need not consider this
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`IPR2016-00693
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`alleged generalized statement given that Patent Owner has not persuasively
`refuted Petitioner’s showing that the specific connection between the client-
`side proxy and the server-side proxy constitutes a secure communication
`link.
`
`Accordingly, we determine that Patent Owner’s arguments regarding
`alleged New Issue #1 are moot.
`
`
`Alleged New Issue #2
`Patent Owner argues that “the Reply Brief is improper . . . because it
`presents a . . . new claim interpretation that go[es] beyond properly
`responding to VirnetX’s Patent Owner Response.” PO Identification 1. In
`particular, Patent Owner alleges that Petitioner argues in the Reply Brief that
`“‘the ‘indication’ claim elements and the alleged ‘establishing’ claim
`elements are not separate claim elements’” (PO Identification 4 (citing Pet.
`Reply 14, 16)) but that, in the Petition, Petitioner supposedly “interpreted
`[indication and establishing] as separate claim elements.” PO Identification
`4 (citing Pet. 19–20).
`Patent Owner argues that Petitioner states in the Petition that “Kiuchi
`discloses establishment of a ‘secure communication link’ as defined by the
`Board” (PO Identification 4) and relies on this alleged citation from the
`Petition to establish that Petitioner argues that “an indication” and
`“establishing” are “separate claim elements.” However, Patent Owner does
`not explain sufficiently how an alleged statement to the effect that Kiuchi
`discloses the “establishment of a ‘secure communication link’” can be
`reasonably interpreted to mean that “establishing” is being equated to a
`“separate claim element” that is not stated (i.e., “an indication”). The cited
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`portion of the Petition does not appear to relate to whether the claim term
`“indication” is the same as or is different from “establishing” at all and does
`not appear to pertain to the claim term “indication” in particular.
`Patent Owner argues that “[n]othing in [the] Petition suggests in any
`way that [Petitioner] intended to interpret ‘the indication’ claim elements
`and the alleged ‘establishing’ claim elements [as] not separate claim
`elements.” PO Identification 5. Hence, Patent Owner argues that Petitioner
`argued in the Petition that two claim terms are “separate claim elements”
`because Patent Owner is not able to identify a specific argument in the
`Petition to the contrary. Even assuming Patent Owner to be correct that
`Petitioner does not provide a specific argument that two specific claim
`elements are not “separate claim elements,” we disagree with Patent Owner
`that the absence of such an argument means that arguments to the contrary
`(which Patent Owner appears to be unable to identify with specificity) are
`implicitly present.
`Assuming for the sake of argument that Patent Owner is correct that
`Petitioner addressed the elements separately, this does not mean they cannot
`be treated the same as a matter of claim construction. Patent Owner itself
`raised the arguments in the context of disclaimer, as discussed above.
`Patent Owner also argues in Patent Owner’s Response that “the claim
`language distinguishes these two functions [i.e., “indication” and
`“establishing”], separately reciting ‘establishing a secure communication
`link,’ . . . and ‘an indication that the domain name service system supports
`establishing a secure communication link.’” PO Resp. 22. Patent Owner
`also argues in Patent Owner’s Response that “[d]ependent claim 16 further
`reveals that ‘establishing a secure communication link’ is separate from an
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`‘indication that the domain name service system supports establishing a
`secure communication link” and that “the plain language of the claims . . .
`discloses these features to be distinct.” Id. at 22–23. In addition, Patent
`Owner raises the issue in Patent Owner’s Response that “the act of
`establishing the secure communication link is something separate from the
`act of indicating that the DNS system supports establishing a secure
`communication link.” Id. at 23 (citing Ex. 2017, 27).
`Hence, Patent Owner raises arguments in Patent Owner’s Response
`that the claim term “indication” and the claim term “establishing” are
`supposedly separate and distinct terms. In other words, Patent Owner
`contends (in Patent Owner’s Identification of New Issues in Petitioner’s
`Reply Brief) that Petitioner supposedly “interpreted [indication and
`establishing] as separate claim elements” (PO Identification 4 (citing Pet.
`19–20)) but in actuality, it is Patent Owner who proposes this interpretation
`in Patent Owner’s Response and not Petitioner as Patent Owner contends.
`Given that Patent Owner raises this issue (that the claim terms
`“indication” and “establishing” are separate and distinct) for the first time in
`Patent Owner’s Response, even assuming that Patent Owner is correct that
`Petitioner argues in the Reply Brief “that ‘the ‘indication’ claim elements
`and alleged ‘establishing’ claim elements are not separate claim elements’”
`(PO Identification 4 (citing Pet. Reply 14, 16)), such an argument by
`Petitioner would merely be responsive to Patent Owner’s arguments
`presented in Patent Owner’s Response and, therefore, would not “go beyo
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