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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
`v.
`VIRNETX INC.,
`Patent Owner
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`Case IPR2016-00957
`Patent 7,921,211
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`PATENT OWNER VIRNETX INC.’S
`PROTECTIVE AMENDED NOTICE OF APPEAL
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`Case IPR2016-00957
`Patent 7,921,211
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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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`Patent Owner VirnetX Inc. (“VirnetX”) hereby amends its prior Notice of
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`Appeal (Paper No. 17), filed on September 22, 2017, which noticed an appeal to
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`the United States Court of Appeals for the Federal Circuit from the Final Written
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`Decision entered on June 12, 2017, (Paper 14) (the “Final Written Decision”) by
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`the United States Patent and Trademark Office, Patent Trial and Appeal Board (the
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`“Board”), and from all underlying orders, decisions, rulings, and opinions, as well
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`as the Board’s Decision on Request for Rehearing, entered on July 24, 2017
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`(Paper 16). With this amended notice of appeal, VirnetX further appeals to the
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`United States Court of Appeals for the Federal Circuit from the Order entered on
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`January 7, 2022 (Paper No. 21) by Andrew Hirshfeld, Commissioner for Patents,
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`Performing the Functions and Duties of the Under Secretary of Commerce for
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`Intellectual Property and Director of the United States Patent and Trademark
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`Office, which denied VirnetX’s request for Director review of the Final Written
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`Decision. Copies of the Final Written Decision, the Decision on Request for
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`Rehearing, and the Order denying VirnetX’s request for Director review are
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`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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`Case IPR2016-00957
`Patent 7,921,211
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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, 23, 27, 36, 37, 39, 40,
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`47, 51, and 60 of U.S. Patent No. 7,921,211 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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`evidence. The issues on appeal further include whether Commissioner for Patents,
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`Andrew Hirshfeld, as the Official Performing the Functions and Duties of the
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`Under Secretary of Commerce for Intellectual Property and Director of the United
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`States Patent and Trademark Office, was precluded from exercising the Director’s
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`review authority with respect to VirnetX’s request by the Appointments Clause,
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`United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), or the Federal Vacancies
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`Reform Act of 1998, 5 U.S.C. §§ 3345-3349c. The issues on appeal also include
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`whether the Board’s unpatentability findings with respect to claims of U.S. Patent
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`No. 7,921,211 that had already been cancelled should be vacated.
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`In its Notice of Denial of Director Rehearing filed with the United States
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`Court of Appeals for the Federal Circuit on January 21, 2022, VirnetX indicated its
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`belief that Appeal No. 17-2594, which arises from this proceeding, is moot because
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`all the patent claims at issue have already been cancelled as a result of other
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`proceedings. See Docket No. 54 in Appeal No. 17-2593 at 3-4. VirnetX
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`accordingly requested that the Federal Circuit vacate the Board’s decision in
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`IPR2016-00957 and dismiss appeal arising from that proceeding (Appeal No. 17-
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`2594) as moot. Id. On March 8, 2022, Intervenor the United States Patent and
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`Trademark Office informed the Federal Circuit that it agrees that the Board’s
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`decision in IPR2016-00957 should be vacated as moot. See Docket No. 62 in
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`Appeal No. 17-2593 at 1. VirnetX continues to believe that vacatur of the Board’s
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`decision is the right course of action, and files this amended notice of appeal solely
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`as a protective measure.
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`Simultaneous with this submission, a copy of this Amended Notice of
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`Appeal is being filed with the Board. In addition, the Amended Notice of Appeal
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`is 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 10th day of March 2022.
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`Case IPR2016-00957
`Patent 7,921,211
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`By: /Naveen Modi/
`Naveen Modi
`Registration No. 46,224
`Paul Hastings LLP
`2050 M Street, N.W.
`Washington, D.C. 20036
`(202) 551-1700
`naveenmodi@paulhastings.com
`
`Counsel for VirnetX Inc.
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`CERTIFICATE OF SERVICE
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`Case IPR2016-00957
`Patent 7,921,211
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`The undersigned certifies that, in addition to being filed electronically
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`through Patent Application Information Retrieval System (PAIR), the original
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`version of this Amended Notice of Appeal was filed by overnight express delivery
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`on March 10, 2022 with the Director of the United States Patent and Trademark
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`Office, at the following 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
`P.O. Box 1450
`Alexandria, VA 22313-1450
`The undersigned also certifies that a true and correct copy of this Amended
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`Notice of Appeal was filed electronically via CM/ECF on March 10, 2022, with
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`the Clerk of Court for the United States Court of Appeals for the Federal Circuit.
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`The undersigned also certifies that a true and correct copy of this Amended
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`Notice of Appeal was served on March 10, 2022 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
`tmartin@martinferraro.com
`docketing@martinferraro.com
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`
`
`
`
`Case IPR2016-00957
`Patent 7,921,211
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`
`1501 K Street NW
`Washington, DC 20005
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`
`
`Date: March 10, 2022
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`
`
`
`
`By: /Naveen Modi/
`Naveen Modi
`Registration No. 46,224
`Paul Hastings LLP
`2050 M Street, N.W.
`Washington, D.C. 20005
`(202) 551-1700
`naveenmodi@paulhastings.com
`
`Counsel for VirnetX Inc.
`
`
`
`
`
`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
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLACK SWAMP IP, LLC,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00957
`Patent 7,921,211 B2
`____________
`
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`and KARL D. EASTHOM, and STEPHEN C. SIU, Administrative Patent
`Judges.
`
`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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`IPR2016-00957
`Patent 7,921,211 B2
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`Black Swamp IP, LLC (“Petitioner”) requested inter partes review of
`claims of U.S. Patent No. 7,921,211 B2 (“the ’211 patent”). We issued a
`Decision to institute an inter partes review (Paper 8, “Inst. Dec.”) of claims
`1, 2, 5, 6, 15, 16, 23, 27, 36, 37, 39, 40, 47, 51, and 60 of the ’211 patent
`under 35 U.S.C. § 102 as anticipated by Kiuchi.1 Inst. Dec. 2, 10.
`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, Patent Owner 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, 23, 27, 36, 37, 39, 40, 47, 51,
`and 60 of the ’211 patent are unpatentable.
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`RELATED MATTERS
`The ’211 patent is the subject of the following civil actions: (i) Civ.
`Act. No. 6:13-cv-00211 (E.D. Tex.); (ii) Civ. Act. No. 6:12-cv-00855 (E.D.
`Tex.); and (iii) Civ. Act. No. 6:10-cv-00417 (E.D. Tex.); Civ. Act. No. 6:11-
`cv-00018 (E.D. Tex.); Civ. Act. No. 6:13-cv-00351 (E.D. Tex.); Civ. Act.
`
`
`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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`No. 6:13-mc-00037 (E.D. Tex.); and Civ. Act. No. 9:13-mc-80769 (E.D.
`Fla). Pet. 2.
`The ’211 patent is also the subject of Reexamination Control Nos.
`95/001,789 and 95/001,856. Pet. 2.
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`
`THE ’211 PATENT (EX. 1001)
`The ’211 Patent discloses a system and method for communicating
`over the internet. Ex. 1001 3:10-11.
`
`
`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 and arranged to
`be connected to a communication network, store a plurality of
`domain names and corresponding network addresses, receive a
`query for a network address, and indicate in response to query
`whether the domain name service system supports establishing a
`secure communication link.
`
`
`
`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.
`
`
`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).
`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.
`
`Claim 1 – Indication
`Claim 1 recites indicating 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 indicated 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 that indicates “whether
`the domain name service system supports establishing a secure
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`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 “system” is recited in claim 1 as “establishing a
`secure communication link” and comprising a “domain name service system
`configured” to “indicate . . . whether the . . . system supports 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
`“indicating” 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.
`Additionally, we note that claim 1 recites “a secure communication
`link” in the preamble and recites “indicat[ing] . . . whether the . . . system
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`supports . . . establishing 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 “indicating” 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. 22–23. Patent
`Owner appears to be arguing that “indicate,” 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 requirement. Rather, claim 1
`merely recites a domain name service system configured to indicate whether
`the domain name service system supports establishing a secure
`communication link. Hence, claim 1 recites “indicating” a certain condition
`(i.e., that the system supports establishing a link) but does not require the
`“indicating” to be provided at any specific point in time or that the
`“indicating” 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 indicate whether 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.”
`Patent Owner also argues that Kiuchi fails to disclose the claimed
`“indicate” because “VirnetX unequivocally disclaimed from the scope of the
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`indication phrases the establishment of a secure communication link itself”
`and that “Patent Owner’s adversary recognized this disclaimer during
`litigation involving the ’211 patent.” PO Resp. 23 (citing Ex. 2017, 27; Ex.
`2018, 11; Ex. 2016, 9–11). Patent Owner cites to similar arguments
`previously presented to the Examiner in a reexamination proceeding (Ex.
`2017) and 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 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 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
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`improper” such that, presumably, a system establishing a link does not
`constitute “indicating” that the system supports establishing the link, as
`recited in claim 1. PO Resp. 30–31. 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.
`
`Claim 1 – Plurality of Domain Names and Corresponding Network
`Addresses
`
`
`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. 22–23.
`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
`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
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`C-HTTP name server “examines whether the requested server-side proxy . . .
`is permitted to accept the connection from the client-side proxy.” 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).
`
`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, 33–34. 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. 14–15). 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.,
`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.
`
`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
`origin server, but instead returns a server-side proxy’s IP address.” PO
`Resp. 37. As previously noted, however, Kiuchi discloses that the “URL” in
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`the request corresponds to the requested server-side proxy, not the “origin
`server,” as Patent Owner alleges. Ex. 1005, 65.
`
`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 other “location” other than the client-side proxy (a position that Patent
`Owner apparently advances and to which we disagree as previously
`
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`discussed), Kiuchi still discloses the claim limitation of a “query initiated
`from a first location.”
`
`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. 41 (citing Ex. 1005, 25, 23,
`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”).
`
`Claims 2, 5, 6, 23, 37, and 47
`Patent Owner does not provide additional arguments in support of
`claims 2, 5, 6, 23, 37, and 47. PO Resp. 43. Based on the evidence of
`record, Petitioner has met its burden of showing by a preponderance of the
`evidence that these claims are unpatentable.
`
`
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`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 22, 24). 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
`alleged generalized statement given that Patent Owner has not persuasively
`refuted Petitioner’s showing that the specific connection between the client-
`
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`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 ‘indicate’/’indicating’ claim elements and the alleged
`‘establishing’ claim elements are not separate claim elements’” (PO
`Identification 4 (citing Pet. Reply 14, 17)) but that, in the Petition, Petitioner
`supposedly “interpreted [indicating and establishing] as separate claim
`elements.” PO Identification 4 (citing Pet. 21-22).
`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 “indicating” 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., “indicating”). The cited
`portion of the Petition does not appear to relate to whether the claim term
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`“indicate” is the same as or is different from the “establishment” at all and
`does not appear to pertain to the claim term “indicate” in particular.
`Patent Owner argues that “[n]othing in [the] Petition suggests in any
`way that [Petitioner] intended to interpret ‘the ‘indicate’/’indicating’ 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.,
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