Paper No.
`Filed: July 29, 2016
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail:
`PH-VirnetX-IPR@paulhastings.com
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 7,921,211
`
`
`Filed on behalf of: VirnetX Inc.
`By:
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail:
`PH-VirnetX-IPR@paulhastings.com
`
`
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`
`TABLE OF CONTENTS
`
`
`TABLE OF AUTHORITIES .................................................................................... iv 
`
`LIST OF EXHIBITS ............................................................................................... vii 
`
`I. 
`
`II. 
`
`Introduction ...................................................................................................... 1 
`
`Consistent With Board Precedent and Policy, the Board Should Not
`Institute This Duplicative Challenge to the ’211 Patent .................................. 3 
`
`A. 
`
`B. 
`
`The Petition Is the Thirteenth Inter Partes Office Challenge to
`the ’211 Patent ....................................................................................... 3 
`
`Denial of the Petition Under 35 U.S.C. §§ 315(d) and 325(d) Is
`Authorized and Appropriate .................................................................. 5 
`
`III.  The Petition Does Not Demonstrate a Reasonable Likelihood of
`Establishing that Any of the Challenged Claims Are Unpatentable ............... 9 
`
`A.  Overview of the ’211 Patent ................................................................ 10 
`
`B. 
`
`C. 
`
`D. 
`
`The Petition Lacks Required Expert Testimony ................................. 13 
`
`The Petition Fails to Properly Define a Person of Ordinary Skill
`in the Art .............................................................................................. 17 
`
`The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected ............................................................................................... 18 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`“Domain Name Service System” (Claims 1, 5, 15, 16, 23,
`27, 36, 51 and 60)...................................................................... 18 
`
`“Indicate”/“Indicating” (Claims 1, 36, and 60) ........................ 19 
`
`“Secure Communication Link” (Claims 1, 16, 27, 36, 40,
`51, and 60) ................................................................................. 22 
`
`“Transparently” (Claims 27 and 51) ......................................... 29 
`
`E. 
`
`Kiuchi Does Not Anticipate Any of the Challenged Claims .............. 30 
`
`
`
`ii
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`Overview of Kiuchi ................................................................... 30 
`
`Independent Claim 1 ................................................................. 33 
`
`Independent Claims 36 and 60 .................................................. 37 
`
`Dependent Claims 15 and 39 .................................................... 37 
`
`Dependent Claims 27 and 51 .................................................... 39 
`
`Dependent Claims 2, 5, 6, 16, 23, 37, 40 and 47 ...................... 40 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`IV.  Conclusion ..................................................................................................... 40 
`
`iii
`
`
`
`
`
`

`
`TABLE OF AUTHORITIES
`
`Case IPR2016-00957
`Patent 7,921,211
`
`
` Page(s)
`
`Federal Circuit Cases
`Alexsam, Inc. v. IDT Corp.,
`715 F.3d 1336 (Fed. Cir. 2013) .......................................................................... 15
`
`Aspex Eyewear, Inc. v. Concepts In Optics, Inc.,
`111 F. App’x 582 (Fed. Cir. 2004) ..................................................................... 15
`
`Biogen Idec, Inc. v. GlaxoSmithKline,
`713 F.3d 1090 (Fed. Cir. 2013) .................................................................... 26, 29
`
`Brand v. Miller,
`487 F.3d 862 (Fed. Cir. 2007) ............................................................................ 14
`
`Centricut, LLC v. Esab Grp., Inc.,
`390 F.3d 1361 (Fed. Cir. 2004) .................................................................... 14, 15
`
`Eon–Net LP v. Flagstar Bancorp.,
`653 F.3d 1314 (Fed. Cir. 2011) .......................................................................... 28
`
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) .......................................................................... 14
`
`Meitzner v. Mindick,
`549 F.2d 775 (C.C.P.A. 1977) ............................................................................ 14
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .................................................................... 26, 29
`
`Proveris Scientific Corp. v. Innovasystems, Inc.,
`536 F.3d 1256 (Fed. Cir. 2008) .......................................................................... 14
`
`Straight Path IP Grp., Inc. v. Sipnet EU S.R.O.,
`806 F.3d 1356 (Fed. Cir. 2015) .................................................................... 26, 27
`
`VirnetX, Inc. v. Cisco Sys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014) .......................................................... 5, 27, 28, 37
`
`
`
`iv
`
`

`
`Administrative Decisions
`Apple Inc. v. VirnetX Inc.,
`IPR2014-00404, Paper No. 42 (P.T.A.B. July 29, 2015) ................................... 38
`
`Case IPR2016-00957
`Patent 7,921,211
`
`
`Benitec Biopharma Ltd. v. Cold Spring Harbor Lab.,
`IPR2016-00017, Paper No. 7 (P.T.A.B. Apr. 6, 2016)....................................... 16
`
`Conopco, Inc. dba Unilever v. The Procter & Gamble Co.,
`IPR2014-00628, Paper No. 23 (P.T.A.B. Mar. 30, 2015) .................................... 7
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper No. 15 (P.T.A.B. Jan. 9, 2013) ..................................... 27
`
`Jiawei Technology (HK) Ltd., et al. v. Richmond,
`IPR2015-00580, Paper No. 22 (P.T.A.B. May 2, 2015) ...................................... 7
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093, Paper No. 28 (P.T.A.B. Apr. 29, 2013) .................................. 27
`
`Prism Pharma Co., Ltd. v. Choongwae Pharma Corp.,
`IPR2014-00315, Paper No. 14 (P.T.A.B. July 8, 2014) ....................................... 8
`
`Sharp Corp. v. Surpass Tech Innovation LLC,
`IPR2015-00022, Paper No. 9 (P.T.A.B. Mar. 10, 2015) .................................... 14
`
`Trivascular, Inc. v. Shaun L.W. Samuels,
`IPR2013-00493, Paper No. 45 (P.T.A.B. Dec. 3, 2014) .................................... 16
`
`Unified Patents, Inc. v. Personal Web Technologies, LLC et al.,
`IPR2014-00702, Paper No. 13 (P.T.A.B. July 24, 2014) ................................. 6, 7
`
`Xilinx, Inc. v. Intellectual Ventures I LLC,
`IPR2013-00112, Paper No. 14 (P.T.A.B. June 27, 2013) .................................. 27
`
`Zetec, Inc. v. Westinghouse Elec. Co., LLC,
`IPR2014-00384, Paper No. 10 (P.T.A.B. July 23, 2014) ................................... 15
`
`ZTE Corp. & ZTE (USA) Inc. v. ContentGuard Holdings Inc.,
`IPR2013-00134, Paper No. 12 (P.T.A.B. June 19, 2013) .................................. 27
`
`
`
`v
`
`

`
`Statutes
`
`Case IPR2016-00957
`Patent 7,921,211
`
`
`35 U.S.C. § 102 .......................................................................................................... 9
`
`35 U.S.C. § 312(a)(3) ............................................................................................... 13
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 315(b) ..................................................................................................... 4
`
`35 U.S.C. § 315(d) ......................................................................................... 3, 5, 6, 9
`
`35 U.S.C. § 325(d) ............................................................................................passim
`
`Federal Regulations
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ...................................................................... 14
`
`Other Authorities
`
`157 Cong. Rec. S1041-42 (daily ed. Mar. 1, 2011) ................................................... 6
`
`
`
`vi
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`
`LIST OF EXHIBITS
`
`2002
`
`2011
`
`Exhibit
`No.
`2001 Right of Appeal Notice in Inter Partes Reexamination
`Control No. 95/001,856 (Jan. 9, 2015)
`Jury Verdict Form (E.D. Tex. Nov. 6, 2012)
`2003 Memorandum Opinion and Order in VirnetX Inc. v. Mitel
`Networks Corp. et al., Case No. 6:11-CV-18 (E.D. Tex.
`Aug. 1, 2012)
`2004 Memorandum Opinion and Order in VirnetX Inc. v. Cisco
`Systems, Inc. et al., Case No. 6:10-CV-417 (E.D. Tex.
`Apr. 25, 2012)
`2005 Glossary for the Linux FreeS/WAN Project
`Transcript of Markman Hearing, VirnetX Inc. v. Cisco
`2006
`Systems, Inc. et al., Case No. 6:10-CV-417 (E.D. Tex. Jan.
`5, 2012)
`2007 Response in Application No. 11/679,416 (June 7, 2011)
`2008 Response in Application No. 11/839,987 (Jan. 10, 2011)
`2009 Response in Inter Partes Reexamination Control No.
`95/001,269 (Apr. 15, 2010)
`2010 Defendants’ Responsive Claim Construction Brief,
`VirnetX Inc. v. Cisco Systems, Inc. et al., Case No. 6:10-
`CV-417 (E.D. Tex. Dec. 7, 2011)
`Joint Claim Construction Chart, VirnetX Inc. v. Cisco
`Systems, Inc. et al., Case No. 6:10-CV-417 (E.D. Tex.
`Dec. 21, 2011)
`2012 Order, VirnetX Inc. v. Cisco Systems, Inc. et al., Case No.
`6:10-CV-417 (E.D. Tex. Oct. 4, 2012)
`2013 Defendants’ Motion for Reconsideration of the
`Construction of the Term “Secure Communication Link,”
`VirnetX Inc. v. Cisco Systems, Inc. et al., Case No. 6:10-
`CV-417 (E.D. Tex. June 21, 2012)
`
`Description
`
`Previously
`Submitted
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`vii
`
`

`
`Exhibit
`No.
`2014
`
`Description
`
`Case IPR2016-00957
`Patent 7,921,211
`
`Previously
`Submitted
`
`
`Transcript of Trial, Afternoon Session, VirnetX Inc. v.
`Apple, Inc., Case No. 6:10-CV-417 (E.D. Tex. Nov. 5,
`2012)
`
`
`
`
`
`
`
`viii
`
`

`
`I.
`
`Introduction
`
`Case IPR2016-00957
`Patent 7,921,211
`
`
`Patent Owner VirnetX Inc. (“VirnetX” or “Patent Owner”) respectfully
`
`submits this Preliminary Response in accordance with 35 U.S.C. § 313 and
`
`37 C.F.R. § 42.107, responding to the Petition for Inter Partes Review (the
`
`“Petition”) filed by Petitioner Black Swamp IP, LLC (“Black Swamp” or
`
`“Petitioner”) against U.S. Patent No. 7,921,211 (“the ’211 patent”). This petition,
`
`the thirteenth challenge to the ’211 patent presented to the Office, is one of three
`
`inter partes reviews requested by Black Swamp against VirnetX’s patents.
`
`VirnetX requests that the Board not institute inter partes review for several
`
`reasons. First, this proceeding is duplicative of other actions before the Office and
`
`should be dismissed under 35 U.S.C. § 325(d). The Office currently has two inter
`
`partes reexamination proceedings against the ’211 patent that are pending and on
`
`appeal to the Board, in addition to ten other inter partes review proceedings that
`
`have already been adjudicated.1 Another Office proceeding against the ’211 patent,
`
`
`1 The pending inter partes reexamination proceedings are Control No.
`
`95/001,789 and Control No. 95/001,856; the adjudicated inter partes review
`
`proceedings are IPR2013-00378, IPR2013-00397, IPR2013-00398, IPR2014-
`
`00174,
`
`IPR2014-00175,
`
`IPR2014-00615,
`
`IPR2014-00616,
`
`IPR2014-00618,
`
`IPR2015-00185, IPR2015-00186.
`
`
`
`1
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`as Black Swamp requests here, is unnecessary, especially as the proceedings
`
`already in progress involve interested parties against whom VirnetX has asserted
`
`its patents in litigation, whereas Black Swamp has no asserted interest in the
`
`invalidation of the ’211 patent. Institution of this proceeding would simply burden
`
`both the Office and VirnetX. In addition, the prior art reference Black Swamp
`
`relies on here is already being considered by the Office in a reexamination of the
`
`’211 patent, and was presented in many of the IPRs already filed. Section 325(d)
`
`was designed to avoid the type of serial challenge Black Swamp seeks.
`
`Second, Black Swamp has failed to meet its burden of showing a reasonable
`
`likelihood that any of the challenged claims are unpatentable. For one, Black
`
`Swamp fails to offer any record evidence to support unpatentability, including any
`
`expert declaratory evidence. Moreover, its unpatentability challenges are premised
`
`on incorrect claim constructions. In addition, Black Swamp incorrectly, and
`
`without expert testimony, argues that claims of the ’211 patent are anticipated by
`
`the Kiuchi reference. For at least these reasons, Black Swamp has not met its
`
`burden of demonstrating a reasonable likelihood of proving unpatentability of any
`
`’211 patent claim.
`
`
`
`2
`
`

`
`II. Consistent With Board Precedent and Policy, the Board Should Not
`Institute This Duplicative Challenge to the ’211 Patent
`
`Case IPR2016-00957
`Patent 7,921,211
`
`
`Given the number of serial challenges filed against the ’211 patent, with two
`
`currently pending (and in advanced states) at the Office, the Board should invoke
`
`its authority under 35 U.S.C. §§ 315(d) and 325(d) to deny institution of this, the
`
`thirteenth challenge.
`
`A. The Petition Is the Thirteenth Inter Partes Office Challenge to the
`’211 Patent
`The ’211 patent has been subject to twelve other inter partes challenges
`
`before the Office, in addition to a challenge to its validity in district court
`
`litigation.
`
`The first challenge was a request for inter partes reexamination of the ’211
`
`patent filed by Apple, which the Office assigned Control No. 95/001,789 (“the
`
`’1,789 reexamination”). That reexamination is on appeal to the Board. A second
`
`request for inter partes reexamination of the ’211 patent was filed by Cisco and
`
`accorded Control No. 95/001,856 (“the ’1,856 reexamination”). The ’1,856
`
`reexamination involves the same Kiuchi reference asserted in Black Swamp’s
`
`Petition here. (Ex. 2001 at 16-18.) The Examiner relied on Kiuchi specifically in
`
`rejecting claims 36-54 and 56-60. (Id. at 16.) The ’1,856 reexamination proceeding
`
`is also on appeal to the Board.
`
`
`
`3
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`The first IPR petition against the ’211 patent was filed by New Bay Capital,
`
`LLC on June 23, 2013, and was terminated pursuant to New Bay’s unopposed
`
`motion to terminate. IPR2013-00378, Paper No. 13 (Nov. 6, 2013). Two IPR
`
`petitions against the ’211 patent were filed by Apple on July 1, 2013, and were
`
`denied because Apple was time-barred under 35 U.S.C. § 315(b). IPR2013-00397,
`
`Paper No. 15 (Dec. 18, 2013), reh’g denied Paper No. 19 (Feb. 12, 2014);
`
`IPR2013-00398, Paper No. 16 (Dec. 18, 2013), reh’g denied Paper No. 18 (Feb.
`
`12, 2014). RPX Corporation filed two more IPR petitions against the ’211 patent,
`
`but because Apple was a real party-in-interest for RPX’s petitions, the Board
`
`denied institution. IPR2014-00174, Paper No. 50 at 10 (redacted) (June 5, 2014);
`
`IPR2014-00175, Paper No. 49 at 10 (redacted) (June 5, 2014). Microsoft filed
`
`three petitions challenging the ’211 patent, including those in IPR2014-00615,
`
`IPR2014-00616, and IPR2014-00618. On October 15, 2014, the Board instituted
`
`trials based on the IPR2014-00615 and IPR2014-00618 petitions, consolidated
`
`those grounds into a single trial, and denied institution of IPR2014-00616. See
`
`IPR2014-00615, Paper No. 9 at 28 (Oct. 15, 2014); IPR2014-00616, Paper No. 9 at
`
`27–28 (Oct. 15, 2014); IPR2014-00618, Paper No. 10 at 28 (Oct. 15, 2014). The
`
`consolidated grounds were then dismissed. Apple filed two further IPR petitions, in
`
`IPR2015-00185 and IPR2015-00186, seeking to join the petitions filed by
`
`Microsoft, which were denied after the Microsoft petitions were dismissed.
`
`
`
`4
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`In addition to the challenges before the Office, the ’211 patent has been
`
`challenged in district court litigation that included a jury trial, and involved
`
`invalidity assertions based on the same prior art, the Kiuchi reference, asserted
`
`here. In that litigation, VirnetX Inc. v. Cisco Sys. Inc. et al., Case No. 6:10-cv-
`
`00417 (E.D. Tex.), the jury found that none of the challenged claims of the ’211
`
`patent—all of which are also challenged here—was invalid. (Ex. 2002, Jury
`
`Verdict Form (E.D. Tex. Nov. 6, 2012).) On appeal to the U.S. Court of Appeals
`
`for the Federal Circuit, the court affirmed that “none of the asserted claims are
`
`invalid.” VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1313-14 (Fed. Cir. 2014).
`
`B. Denial of the Petition Under 35 U.S.C. §§ 315(d) and 325(d) Is
`Authorized and Appropriate
`
`In situations less duplicative, with fewer prior challenges, and with less
`
`burden for the Board and the parties, the Board has exercised its discretion under
`
`35 U.S.C. §§ 315(d) and 325(d) to deny IPR petitions. The Board should likewise
`
`do so here.
`
`Discretionary authority to avoid an avalanche of proceedings comes from
`
`35 U.S.C. § 315(d), which allows the Board to “terminat[e]” one proceeding when
`
`another proceeding “involving the patent is before the Office.” Under 35
`
`U.S.C. § 325(d), the Board has similar authority to “terminate[e]” a serial
`
`proceeding, and may also consider, as part of “determining whether to institute” a
`
`
`
`5
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`proceeding, whether “the same or substantially the same prior art or arguments
`
`previously were presented to the Office.”
`
`The Board’s exercise of its discretionary authority to deny institution of this
`
`Petition is amply justified. Two pending proceedings are in progress before the
`
`Office involving the ’211 patent, in inter partes reexaminations (the ’1,856 and
`
`’1,789 reexaminations). The ’1,856 reexamination also involves
`
`the same
`
`reference, Kiuchi, that Black Swamp identifies in its petition. Accordingly, each
`
`of §§ 315(d)’s and 325(d)’s preconditions for the Board to deny the Petition is
`
`present. Declining to do so will encourage serial challenges to the same patent
`
`through
`
`inter partes reviews—as Black Swamp has done here—which
`
`unnecessarily burdens the resources of the Board and patent owners. See 157
`
`Cong. Rec. S1041-42 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl) (the purpose
`
`of § 325(d) is to avoid “serial challenges” and the resulting burden on the patent
`
`owner and Office in managing multiple proceedings involving the same patent).
`
`The Board has repeatedly denied petitions where the same reference was
`
`already under consideration at the Office. For example, the Board denied a serial
`
`petition in Unified Patents, Inc. v. Personal Web Technologies, LLC et al.,
`
`IPR2014-00702, Paper No. 13 at 2-3 (P.T.A.B. July 24, 2014) (designated
`
`informative). The Board considered whether to institute an IPR where three other
`
`IPR petitions, and one request for ex parte reexamination, had previously been
`
`
`
`6
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`filed by other parties. Id. The Board denied institution under 35 U.S.C. § 325(d),
`
`reasoning that the prior IPRs involved “the same reference being asserted in this
`
`proceeding,” and that one or more of the prior IPRs would thus address the same
`
`issues. Id. at 7-8.
`
`Similarly, here, the reexaminations of the ’211 patent are on appeal to the
`
`Board and one of those reexaminations involves the same reference being asserted
`
`in this proceeding. In addition, Black Swamp’s Petition is one of thirteen Office
`
`challenges to the ’211 patent—significantly more than the number of serial
`
`proceedings addressed in Unified Patents. Id. at 2-3. Just as the petition in Unified
`
`Patents was denied in view of “the efficient administration of the Office,” here the
`
`same factors present an even stronger basis for denying the Petition.
`
`Moreover, the Board has also repeatedly denied petitions where the new
`
`petition sought to use a “prior Decision on Institution to bolster challenges that
`
`were advanced, unsuccessfully, in” the prior petition. See Jiawei Technology (HK)
`
`Ltd., et al. v. Richmond, IPR2015-00580, Paper No. 22, at 7 (P.T.A.B. May 2,
`
`2015); see also Conopco, Inc. dba Unilever v. The Procter & Gamble Co.,
`
`IPR2014-00628, Paper No. 23, at 5 (P.T.A.B. Mar. 30, 2015) (rejecting an
`
`approach that “would allow petitioners to unveil strategically their best prior art
`
`and arguments in serial petitions, using our decisions on institution as a roadmap,
`
`until a ground is advanced that results in review—a practice that would tax Board
`
`
`
`7
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`resources, and force patent owners to defend multiple attacks.”). The twelve
`
`previous proceedings have offered Black Swamp a chance to change claim
`
`construction and anticipation arguments previously advanced, as is evident
`
`throughout the Petition, where Black Swamp continually invokes the Board’s (or
`
`the Office’s) prior decisions as authority for its proposals. See, e.g., Pet. at 7-14,
`
`22-28. One particularly egregious example is the proposed construction of “secure
`
`communication link,” which previous petitioners (and a federal district court) all
`
`construed the same as VirnetX’s proposal here—but Black Swamp instead
`
`“disagrees” with that construction, proposing a different one that it takes from the
`
`Board’s institution decision in IPR2014-00615. (Pet. at 12.) Similarly, Black
`
`Swamp’s proposed claim constructions rely heavily on the Examiner’s decisions
`
`during reexamination of the ’211 patent. (Pet. at 8-10.) These are precisely the sort
`
`of actions that have led the Board to deny institution on other serial petitions, and
`
`the Board should do so again here.
`
`The Board has also exercised its discretion under 35 U.S.C. § 325(d) to deny
`
`IPR petitions based on prior examination (as opposed to reexamination or IPR) of
`
`the challenged patent. See, e.g., Prism Pharma Co., Ltd. v. Choongwae Pharma
`
`Corp., IPR2014-00315, Paper No. 14 at 2, 12-13 (P.T.A.B. July 8, 2014)
`
`(designated informative) (denying IPR petition under 35 U.S.C. § 325(d) because
`
`“[t]he same prior art . . . and arguments substantially the same as Petitioner’s
`
`
`
`8
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`current contention” were raised during prosecution). Here, an even stronger basis
`
`to invoke 35 U.S.C. §§ 315(d) and 325(d) is present, as the previous Office
`
`proceedings involving the ’211 patent were all inter partes in nature, involving a
`
`challenger with full opportunity to participate in the proceedings and be heard.
`
`These decisions demonstrate that the Board has appropriately used its
`
`statutory authority to prevent serial harassment of patent owners and to preclude
`
`petitioners from pursuing unnecessarily burdensome and duplicative proceedings
`
`before the Office. This is especially true with this Petition, which relies on
`
`previous petitions and Office proceedings in an attempt to incorporate support for
`
`its arguments and mask the failure to offer any expert testimony in support of its
`
`positions. Given the unending challenges to the same patent challenged here, on
`
`grounds that have been raised earlier, the Board should exercise its discretion to
`
`deny institution for this reason alone.
`
`III. The Petition Does Not Demonstrate a Reasonable Likelihood of
`Establishing that Any of the Challenged Claims Are Unpatentable
`
`Black Swamp proposes that claims 1, 2, 5, 6, 15, 16, 23, 27, 36, 37, 39, 40,
`
`47, 51, and 60 of the ’211 patent be found anticipated under 35 U.S.C. § 102 based
`
`on Kiuchi. (Pet. at 6.) However, Black Swamp’s proposed ground of
`
`unpatentability is wholly unsupported by expert testimony, despite the Board and
`
`Federal Circuit’s repeated affirmations that expert testimony is required to address
`
`
`
`9
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`complex technology like that involved in the ’211 patent. In fact, the Petition does
`
`not provide any suggestion as to the qualifications of a person of ordinary skill in
`
`the art. Rather, it relies on attorney argument to propose incorrect claim
`
`constructions and incorrect analysis of the Kiuchi reference. As discussed in more
`
`detail below, Black Swamp has not shown a reasonable likelihood that it will
`
`prevail with respect to its proposed ground of anticipation.
`
`A. Overview of the ’211 Patent
`The ’211 patent discloses several embodiments of a domain name service
`
`(“DNS”) system for establishing a secure communication link, such as a virtual
`
`private network (“VPN”) communication link, between devices connected to a
`
`network. In one embodiment, a novel, specialized DNS system receives a DNS
`
`request and automatically facilitates the establishment of a secure communication
`
`link between two devices. (Ex. 1001 at 39:30-35.)
`
`The ’211 patent distinguishes the claimed DNS service system from a
`
`conventional DNS scheme that merely returns a requested IP address and/or public
`
`key:
`
`
`
`Conventional Domain Name Servers (DNSs) provide a
`look-up function that returns the IP address of a
`requested computer or host. For example, when a
`computer user types in the web name “Yahoo.com,” the
`user’s web browser transmits a request to a DNS, which
`
`10
`
`

`
`converts the name into a four-part IP address that is
`returned to the user’s browser.
`
`Case IPR2016-00957
`Patent 7,921,211
`
`
`. . .
`
`One conventional scheme that provides secure virtual
`private networks over the Internet provides the DNS
`server with the public keys of the machines that the DNS
`server has the addresses for. This allows hosts to retrieve
`automatically the public keys of a host that the host is to
`communicate with so that the host can set up a VPN
`without having the user enter the public key of the
`destination host. One implementation of this standard is
`presently being developed as part of the FreeS/WAN
`project (RFC 2535).
`
`certain
`from
`suffers
`scheme
`conventional
`The
`drawbacks. For example, any user can perform a DNS
`request. Moreover, DNS requests resolve to the same
`value for all users.
`
`invention, a
`the
`to certain aspects of
`According
`specialized DNS server traps DNS requests and, if the
`request is from a special type of user (e.g., one for which
`secure communication services are defined), the server
`does not return the true IP address of the target node, but
`instead automatically sets up a virtual private network
`between the target node and the user.
`
`(Id. at 38:58-39:35.)
`
`
`
`11
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`Compared with a conventional DNS known at the time of filing the ’211
`
`patent—which is described as merely returning a requested IP address and/or
`
`public key—the claimed DNS system of the ’211 patent supports establishing a
`
`secure communication link and provides an indication of the same. (See, e.g., id. at
`
`55:38-46, 57:38-46, 59:9-60:8.) For example, in FIGS. 26 and 27 of the ’211
`
`patent, reproduced below, a DNS server 2602 including a DNS proxy 2610
`
`supports establishing a VPN link between a computer 2601 and a secure
`
`target site 2604. (Id. at 39:51-41:44.)
`
`
`Here, the DNS server 2602 receives a DNS request for a target site from
`
`computer 2601. (Id. at 40:32-35.) A DNS proxy 2610 at the DNS server 2602
`
`
`
`12
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`determines whether the target site is a secure site. (Id. at 3 9 :57-59, 40:32-39.)
`
`If access to a secure site has been requested, the DNS proxy 2610 determines
`
`whether the computer 2601 is authorized to access the site. (Id. at 40:40-42.) If
`
`so, the DNS proxy 2610 transmits a message to gatekeeper 2603 to create a secure
`
`communication link (e.g., a VPN link) between computer 2601 and secure target
`
`site 2604. (Id. at 39:62-65.) In this example, the gatekeeper 2603 allocates
`
`resources (in this case, IP hop blocks) for the secure communication link to the
`
`computer 2601 and secure target site 2604. (Id. at 3 9 :66-40:3.) The DNS proxy
`
`2610 then responds to the computer 2601’s DNS request with an address received
`
`from the gatekeeper 2603. (Id. at 40:3-6.) In this manner, the specialized DNS
`
`service system supports establishing a secure communication link, doing more than
`
`a conventional DNS server at the time of the invention.
`
`The Petition Lacks Required Expert Testimony
`
`B.
`Black Swamp has not shown a reasonable likelihood that any of the
`
`challenged claims of the ’211 patent are unpatentable because it fails to rely on any
`
`record evidence to support unpatentability, including any expert declaratory
`
`evidence.
`
`Section 312(a)(3) explicitly considers that inter partes review petitions will
`
`challenge patent claims based on affidavits or declarations of experts, 35 U.S.C.
`
`§ 312(a)(3), and indeed the Office Patent Trial Practice Guide notes that the
`
`
`
`13
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`“Board expects that most petitions and motions will rely upon affidavits of
`
`experts.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). As the Board noted in the
`
`guide, the Federal Circuit has observed that nothing in the Federal Rules of
`
`Evidence or Federal Circuit case law requires the fact finder to credit unsupported
`
`assertions of an expert witness, id. (citing Rohm & Haas Co. v. Brotech Corp., 127
`
`F.3d 1089, 1092 (Fed. Cir. 1997))—let alone unsupported assertions in attorney
`
`argument. Indeed, as both the Board and the courts have stated, “Argument of
`
`counsel cannot take the place of evidence lacking in the record.” Sharp Corp. v.
`
`Surpass Tech Innovation LLC, IPR2015-00022, Paper No. 9, at 8 (P.T.A.B. Mar.
`
`10, 2015); Meitzner v. Mindick, 549 F.2d 775, 782 (C.C.P.A. 1977). As the Federal
`
`Circuit has held, the Board must make patentability findings not on the basis of
`
`conclusory statements, but using “concrete evidence in the record to support these
`
`findings.” K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir.
`
`2014). The Board cannot use its own expertise as a substitute for evidence of
`
`knowledge of one of ordinary skill in the art. See Brand v. Miller, 487 F.3d 862,
`
`869-71 (Fed. Cir. 2007).
`
`And where the involved “subject matter is sufficiently complex to fall
`
`beyond the grasp of an ordinary layperson,” the required record evidence includes
`
`expert testimony to establish invalidity. Proveris Scientific Corp. v. Innovasystems,
`
`Inc., 536 F.3d 1256, 1267 (Fed. Cir. 2008); see also Centricut, LLC v. Esab Grp.,
`
`
`
`14
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`Inc., 390 F.3d 1361 (Fed. Cir. 2004) (finding a failure of proof in the absence of
`
`relevant expert testimony where the patent involved “complex technology”); Aspex
`
`Eyewear, Inc. v. Concepts In Optics, Inc., 111 F. App’x 582, 588 (Fed. Cir. 2004)
`
`(summary judgment of invalidity “could not have been granted without expert
`
`testimony clearly explaining how each claim element is disclosed”). It is the “rare
`
`case[] where the invention is so simple that expert testimony is not required,”
`
`Aspex Eyewear, 111 F. App’x at 588, and this case is not one of them. Indeed,
`
`prior to the current petition, every inter partes review petition on the ’211 patent
`
`was accompanied by expert testimony; Black Swamp cannot—and does not—
`
`contend that the technology here is so simple as to not require it. See Alexsam, Inc.
`
`v. IDT Corp., 715 F.3d 1336, 1348 (Fed. Cir. 2013).
`
`Thus, in similar situations involving assertions unsupported by record or
`
`expert evidence, the Board has denied institution, and should do so here as well. As
`
`the Board has observed, to institute a petition based on “underdeveloped
`
`assertions” would require the Board to undertake its own evaluation and
`
`consideration of arguments, which would “place a significant burden on the Board
`
`and contravene the efficient administration of the Office.” Zetec, Inc. v.
`
`Westinghouse Elec. Co., LLC, IPR2014-00384, Paper No. 10, at 15 (P.T.A.B. July
`
`23, 2014) (denying institution). The Board has denied institution where a petitioner
`
`had presented “no expert opinion with respect to the understanding of one of
`
`
`
`15
`
`

`
`Case IPR2016-00957
`Patent 7,921,211
`
`ordi