Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 32
`Entered: February 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`Case IPR2016-01585
`Patent 8,904,516 B2
`
`
`
`
`
`
`
`
`
`
`Before Vice Chief Administrative Patent Judge MICHAEL P. TIERNEY,
`KARL D. EASTHOM and STEPHEN C. SIU, Administrative Patent Judges
`
`EASTHOM, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2016-01585
`Patent 8,904,516 B2
`
`I. INTRODUCTION
`
`A. Background
`
`Petitioner, Apple Inc., filed a Petition (Paper 1, “Pet.”) requesting an
`
`inter partes review of claims 1–9, 11–23, and 25–28 (the “challenged
`
`claims”) of U.S. Patent No. 8,904,516 B2 (Ex. 1001, “the ’516 patent”).
`
`Patent Owner, VirnetX Inc., filed a Preliminary Response. Paper 6 (“Prelim.
`
`Resp.”).
`
`Subsequent to institution (Paper 9, “Inst. Dec.”), Patent Owner filed a
`
`Patent Owner Response (Paper 14, “PO Resp.”), and Petitioner filed a Reply
`
`(Paper 19, “Pet. Reply”). Patent Owner also filed a Motion to Exclude
`
`evidence (Paper 21), Petitioner filed an Opposition (Paper 24), and Patent
`
`Owner filed a Reply to the Opposition (Paper 26).
`
`The record includes a transcription of the Oral Hearing held on
`
`November 2, 2017. Paper 31. The Board has jurisdiction under 35 U.S.C.
`
`§ 6(c). This Final Written Decision issues pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. For the reasons that follow, we determine that
`
`Petitioner has shown by a preponderance of the evidence that claims 1–9,
`
`11–23, and 25–28 of the ’516 patent are unpatentable.
`
`B. Related Matters
`
`Petitioner and Patent Owner provide listings of district court actions,
`
`other inter partes reviews, and inter partes reexamination proceedings
`
`challenging related patents. See Pet. ix–xiii, Paper 4, 2–16; see also VirnetX,
`
`Inc. v. Cisco Systems, Inc., 767 F.3d 1308, 1316–19 (Fed. Cir. 2014)
`
`(addressing ancestor VirnetX patents); VirnetX Inc. v. Apple Inc., 665 F.
`
`App’x 880 (Fed. Cir. 2016) (affirming Apple Inc. v. VirnetX Inc., Cases
`
`IPR2014-00237 & 238 (PTAB May 11, 2015) (final written decisions “’237
`
`2
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`

`

`IPR2016-01585
`Patent 8,904,516 B2
`
`FWD,” “’238 FWD,” or generally, “’237 IPR,” “’238 IPR”) (appealed by
`
`VirnetX))1; VirnetX Inc. v. Apple Inc., 671 F. App’x. 786 (Fed. Cir. 2016)
`
`(affirming Apple Inc. v. VirnetX Inc., Cases IPR2014-00403, IPR2014-
`
`00404 (PTAB July 29, 2015) (appealed by VirnetX); Apple Inc. v. VirnetX
`
`Inc., Cases IPR2014-00481 & 482 (PTAB August 24, 2015) (appealed by
`
`VirnetX))2; Apple Inc. v. VirnetX Inc., Case IPR2015-00811 (PTAB Sept. 8,
`
`2016) (appealed by VirnetX); Apple Inc. v. VirnetX Inc., Case IPR2015-
`
`00812 (PTAB Aug. 30, 2016) (appealed by VirnetX); Apple Inc. v. VirnetX
`
`Inc., Cases IPR2015-00870 & 871 (PTAB Sept. 28, 2016) (appealed by
`
`VirnetX); Apple Inc. v. VirnetX Inc., Cases IPR2016-00331 & 332 (PTAB
`
`June 22, 2017) (as to the former, final written decision “’331 FWD” (Paper
`
`29), or generally, “’331 IPR)) (appealed by VirnetX). At least the ’237
`
`FWD and the ’331 FWD involve materially the same claim construction and
`
`prior art issues as the instant case as discussed further below.
`
`C. Instituted Grounds of Unpatentability
`
`We instituted on the ground that the combination of Beser3 and RFC
`
`24014 would have rendered obvious claims 1–9, 11–23, and 25–28 of the
`
`’516 patent. Petitioner relies on the Tamassia Declaration (Ex. 1003). In
`
`1 Our reviewing court affirmed the ’237 FWD and the ’238 FWD without
`reaching the merits of the ’237 FWD. See 665 F. App’x. at 889 (citing In re
`Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (“declining to address
`alternative grounds of invalidity when the court upholds one such ground”)).
`2 The court affirmed the four final written decisions without reaching the
`merits of the ’404 and ’482 proceedings. See 671 F. App’x at 787 (finding
`“no error in the Patent Trial and Appeal Board’s . . . claim constructions or
`findings in the 403 and 481 proceedings).
`3 U.S. Patent No. 6,496,867 B1 (Ex. 1007).
`4 S. Kent and R. Atkinson, Security Architecture for the Internet Protocol,
`Request for Comments: 2401, BBN Corp., November 1998 (Ex. 1008).
`
`3
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`IPR2016-01585
`Patent 8,904,516 B2
`
`response, Patent Owner relies on the Monrose Declaration (Ex. 2009), which
`
`Patent Owner submitted in the related ’237 IPR.
`
`D. The ’516 Patent
`
`The ’516 patent describes secure methods for communicating over the
`
`Internet. Ex. 1001, Abstract, 10:7–12. According to “BACKGROUND OF
`
`THE INVENTION” as described in the ’516 patent, “[a] tremendous variety
`
`of methods have been proposed and implemented to provide security and
`
`anonymity for communications over the Internet.” Id. at 1:38–40. In
`
`general, “two security issues may be called data security and anonymity,
`
`respectively.” Id. at 1:57–59. At least one prior art system provides
`
`anonymity by hiding the originating terminal address. See id. at 2:47–57
`
`(describing “[s]till another anonymity technique” using “groups of proxies
`
`called crowds”). A system disclosed in the ’516 patent hides the identity of
`
`the destination address by encrypting a packet portion that indicates the true
`
`final destination of the packet. See id. at 2:4–9, 10:7–49. With respect to
`
`data security (i.e., as opposed to anonymity or packet address security), the
`
`’516 patent admits “[d]ata security is usually tackled using some form of
`
`data encryption.” Id. at 1:60–61.
`
`To provide anonymity regarding the “true destination address,” one
`
`disclosed, but unclaimed, aspect of the system “preferably” uses “an IP
`
`hopping function” (id. at 40:27–28), and employs, in one embodiment,
`
`“Tunneled Agile Routing Protocol (TARP)” (id. at 3:19–32) routers 122–
`
`127, described as “special routers or servers” along the hopping path, which
`
`“are similar to regular IP routers 128–132” (id. at 10:8–10). See id. Fig. 2.
`
`TARP routers determine the “next-hop in a series of TARP router hops” (id.
`
`at 10:18–19) in the path and the final destination, by authenticating or
`
`4
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`

`IPR2016-01585
`Patent 8,904,516 B2
`
`decrypting transmitted encrypted parts of packets to find the next-hop TARP
`
`router address. Id. at 3:40–67, 10:12–35. “Once the outer layer of
`
`encryption is removed, the TARP router determines the final destination.
`
`Each TARP packet 140 undergoes a minimum number of hops to help foil
`
`traffic analysis.” Id. at 3:51–54. “The hops may be chosen at random.” Id.
`
`at 3:54. “The fact that different packets take different routes provides
`
`distinct advantages by making it difficult for an interloper to obtain all the
`
`packets forming an entire multi-packet message.” Id. at 3:60–63. As noted
`
`above, the system also may encrypt data in the packets. See id. at 1:60–61,
`
`4:11–16.
`
`As a “second improvement,” the ’516 patent also describes “the
`
`automatic creation of a virtual private network (VPN) in response to a
`
`domain-name server look-up function.” Id. at 39:31–33. The challenged
`
`claims here also do not recite or require a VPN.
`
`To create a VPN automatically, the ’516 patent describes employing a
`
`modified Domain Name Server, which may include a conventional Domain
`
`Name Server (DNS) and a DNS proxy. Id. at 40:28–30.
`
`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 converts the name into a four-part IP
`address that is returned to the user’s browser and then used by
`the browser to contact the destination web site.
`
`Id. at 39:34–40.
`
`The DNS proxy of the modified DNS server intercepts DNS
`
`lookup requests, determines whether the user has requested access to a
`
`secure site (using for example, a domain name extension or an internal
`
`5
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`

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`IPR2016-01585
`Patent 8,904,516 B2
`
`table of secure sites), and if so, whether the user has sufficient security
`
`privileges to access the requested site. Id. at 40:34–40. If the user
`
`requests access to a secure site to which it has insufficient security
`
`privileges, the DNS proxy returns a “‘host unknown’” error to the
`
`user. Id. at 40:57–60. If the user requests access to a secure site to
`
`which it has sufficient security privileges, the DNS proxy requests a
`
`gatekeeper to create a VPN between the user’s computer and the
`
`secure target site. Id. at 40:36–52. The DNS proxy then returns to the
`
`user the resolved address passed to it by the gatekeeper, which need
`
`not be the actual address of the destination computer. Id. at 40:47–52.
`
`The (unclaimed) VPN embodiment also is “preferably
`
`implemented using the IP address ‘hopping’ features,” (i.e., changing
`
`IP addresses based upon an agreed upon algorithm) as described
`
`above, “such that the true identity of the two nodes cannot be
`
`determined even if packets during the communication are
`
`intercepted.” Id. at 40:13–17.
`
`E. Illustrative Challenged Claim 1
`
`
`
`Independent claims 1 and 15 recite similar limitations respectively
`
`in system and method format. Compare Ex. 1001, 56:13–32, with id. at
`
`57:8–27. All other challenged claims depend from claims 1 or 15.
`
`Illustrative claim 1 of the challenged claims follows:
`
`1. A system for connecting a first network device and a second
`network device, the system including one or more servers
`configured to:
`
`intercept, from the first network device, a request to look
`up an internet protocol (IP) address of the second network
`device based on an identifier associated with the second
`network device;
`
`
`6
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`

`IPR2016-01585
`Patent 8,904,516 B2
`
`determine, in response to the request, whether the second
`
`network device is available for a secure communications
`service; and
`
`initiate an encrypted communication link between the
`first network device and the second network device based on a
`determination that the second network device is available for
`the secure communications service,
`service
`
`wherein
`the
`secure
`communications
`communicates using the encrypted communication link, the
`first network device is a device at which a user uses the secure
`communications service to access the encrypted communication
`link, and;
`
`the one or more servers includes one or more processors.
`
`Ex. 1001, 56:13–32.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, the Board construes claims in an unexpired
`
`patent by applying the broadest reasonable interpretation in light of the
`
`specification. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`
`S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`
`interpretation standard under 37 C.F.R. § 42.100(b)). Under this standard,
`
`absent any special definitions, claim terms or phrases carry their ordinary
`
`and customary meaning, as would be understood by one of ordinary skill in
`
`the art, in the context of the entire disclosure. In re Translogic Tech., Inc.,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`1. “intercept . . . a request”
`
`Relying on the ’516 patent Specification and citing to the ’237 FWD,
`
`Petitioner proposes construing the claim 1 phrase “intercept . . . a request” as
`
`“receiving a request pertaining to a first entity at another entity.” Pet. 10
`
`(citing ’237 FWD, 10–12; Ex. 1003 ¶ 62) (emphasis omitted). Claim 15
`
`7
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`

`IPR2016-01585
`Patent 8,904,516 B2
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`recites a similar “intercepting a request” phrase. We adopted this
`
`construction in the Institution Decision, and we maintain it for the reasons
`
`provided therein and as summarized below. See Inst. Dec. 6–9. 5
`
`Patent Owner disagrees with this construction, but contends “[n]o
`
`construction is necessary.” PO Resp. 3. Patent Owner also contends that
`
`“[i]f the Board decides to provide a construction, it should modify its current
`
`construction.” Id. Patent Owner proposes that the phrase means “receiving
`
`a request to look up an internet protocol address and, apart from resolving it
`
`into an address, performing an evaluation on it related to establishing a
`
`virtual private network communication link.” Id. Patent Owner contends
`
`that its “construction appropriately captures the notion of performing an
`
`additional evaluation on a request to look up an IP address related to
`
`establishing a secure communication link, beyond conventionally resolving
`
`it and returning the address.” Id. at 6.
`
`Patent Owner’s contentions are not persuasive. Patent Owner fails to
`
`explain sufficiently why the notion of “performing an additional evaluation”
`
`
`5 Claim 1 at issue in the ’237 IPR (U.S. Patent No. 8,504,697) (the “’697
`patent”) recites a similar clause: “intercepting, from the first network
`device, a request to look up an internet protocol (IP) address of the second
`network device based on a domain name associated with the second network
`device.” ’237 FWD 4. The Board employed the same construction therein.
`Id. at 10–12; note 6 infra. The ’697 and ’516 patents have common ancestor
`patents at issue in Cisco, 767 F.3d at 1308; i.e., both patents ultimately
`continue through one or more applications of U.S. Patent No. 7,921,211,
`which is a continuation of U.S. Patent No. 7,418,504 (“’504 patent”), which
`is a continuation-in-part of U.S. Patent No. 6,502,135––three of the four
`patents at issue in Cisco. See 767 F.3d at 1313. (The fourth patent at issue
`in Cisco, is U.S. Patent No. 7,490,151 (“’151 patent”), a division of the ’135
`patent.)
`
`8
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`IPR2016-01585
`Patent 8,904,516 B2
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`constitutes an implicit part of the claimed intercept clause. Addressing
`
`similar arguments by Patent Owner, the Board made a similar determination
`
`in the ’237 FWD. See ’237 FWD 12 (“the record shows that the additional
`
`functionality urged by Patent Owner should not be imported into the
`
`intercepting phrase”).
`
`To support its construction, Patent Owner points to embodiments
`
`drawn to a VPN, which includes DNS proxy 2610. PO Resp. 5. Patent
`
`Owner also argues “the claimed embodiments differ from [a] conventional
`
`DNS, in part, because they apply an additional layer of functionality to a
`
`request to look up a network address beyond merely resolving it and
`
`returning the network address.” Id. (citing Ex. 2009 ¶ 24).
`
`According to Patent Owner, these “example” “additional . . .
`
`functionality” features include the following:
`
`For example, the DNS proxy 2610 may intercept the request
`and “determine[] whether access to a secure side has been
`requested,” “determine[] whether the user has sufficient
`security privileges to access the site,” and/or “transmit[] a
`message to gatekeeper 2603 requesting that a virtual private
`network be created between 40 user computer 2601 and secure
`target site 2604.”
`
`Id. (quoting Ex. 1001, 40:34–43; citing Ex. 2009 ¶ 24).
`
`Patent Owner concludes “[t]he Board’s preliminary construction
`
`overlooks these aspects that distinguish the ‘intercepting’ phrase from
`
`conventional DNS.” Id. at 6.
`
`Contrary to Patent Owner’s arguments, none of the challenged claims
`
`recite a VPN, a DNS proxy, a non-conventional DNS, or setting up a VPN
`
`link. Furthermore, the additional disclosed functions of a DNS or VPN fail
`
`9
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`

`IPR2016-01585
`Patent 8,904,516 B2
`
`to show that the “intercept” clause at issue requires the unclaimed additional
`
`functionality.
`
`In addition, the disclosed VPN embodiment cited by Patent Owner
`
`supports Petitioner’s proposed claim construction, as DNS server 2602
`
`performs the intercept by “receiving a request pertaining to a first entity
`
`[2604 or 2611] at another entity [2602].” As the ’516 patent discloses, in
`
`one embodiment, a “single server” 2602 having “the functions of DNS
`
`proxy 2610 and DNS server 2609” (Ex. 1001, 41:4–6, Fig. 26) “intercepts
`
`all DNS lookup functions” (id. at 40:34–36). In other words, pursuant to
`
`requests for a connection to a secure or unsecure device (first entity),
`
`intercepting DNS server 2602 (another entity) returns the IP address of the
`
`first entity after looking up the domain name. See id. at 40:24–52; Pet. 11
`
`(“Because the request is seeking an address corresponding to a destination
`
`(e.g., site 2604 or 2611), it pertains to an entity other than DNS proxy 2010
`
`or DNS server 2609. Thus, the ’516 patent uses the term ‘intercept’ as
`
`meaning receipt by an entity of a message pertaining to a different entity.”).
`
`Based on the foregoing discussion, we maintain Petitioner’s proposed
`
`construction as adopted in the Institution Decision. The phrase “intercept . .
`
`. a request” means “receiving a request pertaining to a first entity at another
`
`entity.” As indicated above (note 1), this claim construction comports with
`
`our previous final decisions (e.g., ’237 FWD and ’331 FWD).6 Patent
`
`
`6 See ’237 FWD 12 (reaching materially the same construction for a similar
`phrase). As also noted in the ’237 FWD (a final judgment affirmed by our
`reviewing court, supra note 1), “Patent Owner concedes that ‘[t]he
`Decision’s construction [of intercepting a request] addresses a common
`aspect of a conventional DNS and the disclosed embodiments, namely that a
`request to look up an address of one entity may be received at another
`
`10
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`

`IPR2016-01585
`Patent 8,904,516 B2
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`Owner does not present arguments or evidence showing a reason to modify
`
`the previous construction, and Patent Owner does not argue its proposed
`
`claim construction is dispositive.
`
`2. Other Terms
`
`Petitioner and Patent Owner each proffer proposed constructions of
`
`several claim terms. Pet. 9–14; PO Resp. 2–11. Neither party identifies a
`
`dispositive term for construction. No other claim term or clause needs
`
`express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`
`F.3d 795, 803 (Fed. Cir. 1999) (only terms in controversy require an explicit
`
`construction and only to the extent necessary to resolve the controversy). To
`
`the extent any term requires explicit construction, we rely on our previous
`
`constructions in the ’237 FWD, with the evidence and arguments here and
`
`those cases materially the same. See Pet. 9–14; PO Resp. 2–11; ’237 FWD
`
`5–15; note 5 (same common ancestor patent).
`
`B. Prior Art Printed Publication Status of RFC 2401
`
`Patent Owner asserts that Petitioner fails to show that RFC 2401 was
`
`publicly accessible as of November 1998 (the date recited on each of its
`
`pages). PO Resp. 34 (citing Ex. 1008). On this basis, according to Patent
`
`Owner, Petitioner cannot rely upon RFC 2401 as prior art to meet its burden
`
`of showing obviousness of the challenged claims over the combination of
`
`Beser and RFC 2401. See id.
`
`The determination of whether a given reference qualifies as a prior art
`
`“printed publication” involves a case-by-case inquiry into the facts and
`
`circumstances surrounding the reference’s disclosure to members of the
`
`entity.’” ’237 FWD 24 (quoting ’237 Patent Owner Response 26)
`(emphases added).
`
`11
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`

`IPR2016-01585
`Patent 8,904,516 B2
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`public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). On its
`
`face, RFC 2401 is a dated “Request for Comments” from the “Network
`
`Working Group,” discussing a particular standardized security protocol for
`
`the Internet. Ex. 1008, 1. Moreover, RFC 2401 describes itself as a
`
`“document [that] specifies an Internet standards track protocol for the
`
`Internet community, and requests discussion and suggestions for
`
`improvements. . . . Distribution of this memo is unlimited.” Id. These
`
`indicia suggest that the document was accessible by the interested public
`
`(over the Internet), in order to obtain feedback prior to implementation of the
`
`standard it describes.
`
`To bolster its showing, Petitioner provides evidence suggesting that
`
`RFC 2401 would have been accessible to the interested public. For
`
`example, Petitioner relies on testimony by Dr. Tamassia, and at least two
`
`articles dated prior to February 2000, referencing RFC 2401 availability on a
`
`website. Pet. 23–24 (citing Ex. 1003 ¶¶ 117–19, 124–25; Ex. 1064, 9; Ex.
`
`1065, 3). As one example, Ex. 1064, an August 16, 1999 magazine article,
`
`discusses RFC 2401 and IPsec protocols and states “[a]ll of these documents
`
`are available on the IETF website.” Ex. 1064, 9.
`
`Petitioner explains that RFC 2401 describes the IPsec protocol
`
`promulgated by the Internet Engineering Task Force (IETF). Pet. 25–26.
`
`Petitioner provides the Ginoza Declaration, by Sandy Ginoza, who, acting as
`
`a designated representative of the IETF, previously testified that RFC 2401
`
`was published on the RFC Editor’s website and was publicly available in
`
`November 1998. Id. at 24–25 (citing Ex. 1060 ¶¶ 105–07; Ex. 1063, 39:14–
`
`40:24). Petitioner provides additional documentary evidence in the form of
`
`an October 1996 RFC 2026 publication (Ex. 1036, 5–6 (explaining that any
`
`12
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`IPR2016-01585
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`interested person can obtain RFC documents from a number of Internet hosts
`
`using anonymous FTP, gopher, WWW, and other document-retrieval
`
`systems)). Pet. 23 (citing Ex.1036, 3, 5). The additional documentary
`
`evidence further corroborates the indicia of availability on the face of RFC
`
`2401. Exhibit 1036, RFC 2026, states it reflects “generally-accepted
`
`practices” for RFC documents and states any interested person can obtain
`
`RFCs “from a number of Internet hosts.” Ex. 1036, 4, 6. “They [the
`
`procedures described in the document] provide ample opportunity for
`
`participation and comment by all interested parties.” Id. at 4 (“The goal of
`
`technical competence, the requirement for prior implementation and testing,
`
`and the need to allow all interested parties to comment all require significant
`
`time and effort.”).
`
`Patent Owner characterizes Petitioner’s showing as insufficient. PO
`
`Resp. 34–39. Patent Owner contends that Sandy Ginoza and Dr. Tamassia
`
`lack personal knowledge about the publication of RFC 2401, and challenges
`
`other evidence as too general and lacking a sufficient foundation. See PO
`
`Resp. 34–38 (discussing Pet. 24–26, Ex. 1036, 4–5; Ex. 1060–65; Ex. 2022,
`
`22: 7–19). Patent Owner does not contest Petitioner’s characterization of the
`
`two magazine articles, Exhibits 1064 and 1065, other than to refer to them as
`
`follows: “Exhibit 1064 is allegedly an article from InfoWorld magazine
`
`(dated August 16, 1999) and Exhibit 1065 is allegedly an article from
`
`NetworkWorld magazine (dated March 15, 1999).” PO Resp. 36. As
`
`Petitioner argues, the articles show that “the skilled person would have
`
`known that RFCs such as RFC 2401 could be downloaded from the IETF’s
`
`website.” Reply Br. 18 n.2.
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`13
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`In addition, RFC 2026 states it reflects “generally-accepted practices”
`
`for RFC documents and states any interested person can obtain RFCs “from
`
`a number of Internet hosts.” See PO Resp. 38 & n.6 (citing Ex. 1036, 4,
`
`discussing Inst. Dec. 11); Ex. 1036, 4, 6. Patent Owner contends that
`
`Petitioner has not shown that this evidence of “generally accepted practices”
`
`“is accurate.” Id. Patent Owner notes that the document represents
`
`“flexible” standards, so that “there is no assurance that the procedures of
`
`RFC 2026 that were quoted by Petitioner were actually applied.” Id. at 38.
`
`We find Dr. Tamassia’s testimony as to public accessibility of RFCs
`
`based on his general knowledge as a user of RFCs to be credible, especially
`
`given the independent support of RFC 2026 (Ex. 1036).7 See Ex. 1003
`
`¶¶ 116–23; Ex. 2019, 103:1–12 (testifying his “business includes having
`
`viewed RFCs, having discussed RFCs”), 106:11–17 (describing an RFC
`
`document); Ex. 1036, 5–6. Moreover, RFC 2401’s contents are consistent
`
`with the publication process described by RFC 2026 and Dr. Tamassia,
`
`including the inclusion of a date “November 1998” on the top right corner of
`
`the first page of the document. Ex. 1008, 1. In addition, this document—a
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`request for suggestions and improvements for an Internet standards protocol,
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`having no indication of being a mere draft or internal paper—is precisely the
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`type of document whose very purpose is public disclosure, including on the
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`Internet. Both of the magazine articles, Exhibits 1064 and 1065, further
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`corroborate the indicia of availability on the face of RFC 2401, although
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`they are not necessary to our finding of public accessibility. We do not rely
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`
`7 As addressed below, Patent Owner objects and moves to dismiss a number
`of Exhibits based on hearsay and relevancy. See Paper 21 (Motion to
`Exclude).
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`on the testimony of Sandy Ginoza, Exhibits 1060 and 1063, which Patent
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`Owner seeks to exclude as discussed further below.
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`In making our determination, we note least one District Court
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`characterized RFCs as having “been written and circulated”: “[M]uch of the
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`development and technical management of the Internet has been by the
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`consensus of Internet users. This is evidenced . . . by IETF and the more
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`than 2000 RFC’s which have been written and circulated.” (quoting
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`PGMedia, Inc. v. Network Sols., Inc., 51 F. Supp. 2d 389, 406 (S.D.N.Y.
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`1999) (internal citation omitted)).8
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`“A given reference is ‘publicly accessible’ upon a satisfactory
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`showing that such document has been disseminated or otherwise made
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`available to the extent that persons interested and ordinarily skilled in the
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`subject matter or art exercising reasonable diligence, can locate it.” SRI
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`Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008)
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`(quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
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`Cir. 2006)). We find that Petitioner has established, by a preponderance of
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`the evidence, that RFC 2401 (dated November 1998) was disseminated and
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`made available to persons of ordinary skill interested in computer
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`networking and security to be deemed “publicly accessible” at the relevant
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`time. Therefore, on this record, we determine RFC 2401 qualifies as a prior
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`art printed publication under 35 U.S.C. § 102(b).
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`C. Tamassia Declaration (Ex. 1003)
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`Patent Owner argues that the entirety of the Tamassia Declaration
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`should be given little or no weight because Dr. Tamassia “failed to consider,
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`8 See ’331 FWD (Paper 29), 13 (citing the case).
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`let alone opine on, how any of the claim features are disclosed in asserted
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`references.” PO Resp. 42. Patent Owner also contends “the technology
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`involved is undisputedly complex,” and “[t]he cited references are similarly
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`complex, and require explanatory expert testimony.” Id. at 45.
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`Petitioner responds that Dr. Tamassia has “offered probative
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`testimony on many of the factual inquiries underpinning an obvious[ness]
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`analysis” that “can certainly ‘help the trier of fact to understand the evidence
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`or determine a fact in issue.’” Pet. Reply 19 (quoting Fed. R. Evid. 702).9
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`Petitioner also contends “no rule requires an expert to opine on the ultimate
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`question of obviousness or on every potentially relevant fact [at] issue for
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`his opinion to be admissible or entitled to weight.” Id. at 20.
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`Patent Owner does not articulate a persuasive reason for giving Dr.
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`Tamassia’s declaration, as a whole, little or no weight in our analysis. We
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`agree with Petitioner that the panel can determine the appropriate amount of
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`weight to afford to expert testimony without requiring the expert to opine on
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`every relevant factual and legal issue. The cases upon which Patent Owner
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`relies do not show otherwise. For example, Patent Owner cites Schumer v.
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`Lab. Comput. Sys., Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002), for the
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`proposition that “[expert] testimony . . . must identify each claim element,
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`state the witnesses’ interpretation of the claim element, and explain in detail
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`how each claim element is disclosed in the prior art reference.” PO Resp. 43
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`(emphasis by Patent Owner).
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`9 The parties do not dispute the panel’s preliminary findings regarding
`qualifications of a person of ordinary skill in the art, maintained here after
`considering the record anew. See Inst. Dec. 14–15 (citing Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art can reflect the
`appropriate level of ordinary skill in the art)).
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`Patent Owner’s quotation of Schumer omits introductory words
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`necessary to the meaning of the quoted sentence. In its entirety, the quoted
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`portion of Schumer states the following:
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`Typically, testimony concerning anticipation must be testimony
`from one skilled in the art and must identify each claim
`element, state the witnesses’ interpretation of the claim element,
`and explain in detail how each claim element is disclosed in the
`prior art reference. The testimony is insufficient if it is merely
`conclusory.
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`Schumer, 308 F.3d at 1315–16 (emphasis added). The Federal Circuit then
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`adds that it is not the task of the courts to “attempt to interpret confusing or
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`general testimony to determine whether a case of invalidity has been made
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`out” and “if the testimony relates to prior invention and is from an interested
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`party, as here, it must be corroborated.” Id. at 1316. Instead of requiring a
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`specific format for the content of all testimony regarding invalidity as
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`asserted by Patent Owner, this portion of Schumer confirms that a tribunal
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`should not rely upon conclusory, overly general, confusing, and self-
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`interested testimony. Id.; see also Koito Mfg. Co., Ltd. v. Turn-Key-Tech,
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`LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004) (“General and conclusory
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`testimony, such as that provided by Dr. Kazmer in this case, does not suffice
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`as substantial evidence of invalidity.”). Patent Owner does not show that the
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`whole of Dr. Tamassia’s testimony suffers from any of these failings.
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`
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`As Petitioner notes, in Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064
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`(Fed. Cir. 2015), the Federal Circuit states that in IPRs, “Board members,
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`because of expertise, may more often find it easier to understand and
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`soundly explain the teachings and suggestions of prior art without expert
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`assistance.” Pet. Reply 21 (quoting Belden, 805 F.3d at 1079). Relying on
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`Belden, the court dismissed Patent Owner’s similar argument in its appeal of
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`the related ’238 FWD, holding “even if the record contains expert testimony,
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`the law does not require the PTAB to rely upon it.” VirnetX, 665 F. App’x
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`at 884 (quoting Patent Owner’s argument: “[B]ecause [according to
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`VirnetX] ‘the technology involved is undisputedly complex,’ VirnetX avers
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`that the PTAB could not have made ‘unpatentability findings in the absence
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`of any supporting expert evidence.’”) (nonprecedential). The ’237 IPR and
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`’238 IPR (challenging the same patent) involved the same secure
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`communications technology as involved here (supra note 5).
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`Under 35 U.S.C. § 316(e), the preponderance of the evidence standard
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`governs in determining whether Petitioner establishes unpatentability. We
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`exercise discretion to determine the appropriate weight to accord the
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`evidence presented, including expert opinions, based on the underlying facts
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`supporting the opinion. We accord relevant portions of Dr. Tamassia’s
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`testimony the appropriate weight based on that particular testimony and
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`supporting evidence.
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`D. Obviousness Over Beser and RFC 2401
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`1. Overview of Beser
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`Beser describes a system that establishes an IP (internet protocol)
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`tunneling association on a public network between two end devices. See Ex.
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`1007, Abs.
`
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`Figure 1 of Beser follows:
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`
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`Figure 1 of Beser illustrates a network system, including public network 12,
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`network devices 24 and 26, private network 20, trusted third-party network
`