`571-272-7822
` Date: August 24, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00482
`Patent 7,188,180 B2
`____________
`
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`I. BACKGROUND
`
`Apple Inc. filed a Petition (Paper 1) (“Pet.”) seeking an inter partes
`review of claims 1, 4, 6, 10, 12–15, 17, 20, 22, 26, 28–31, 33, 35, and 37 of
`U.S. Patent No. 7,188,180 B2 (Ex. 1001, “the ’180 patent”) pursuant to
`35 U.S.C. §§ 311–319. On September 3, 2014, the Board instituted an inter
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`partes review of claims 1, 4, 6, 10, 12–15, 17, 20, 22, 26, 28–31, 33, 35, and
`37 (Paper 10) (“Dec. on Inst.”).
`Subsequent to institution, VirnetX (“Patent Owner”) filed a Patent
`Owner Response (Paper 19) (“PO Resp.”), and Petitioner filed a Reply
`(Paper 23) (“Pet. Reply”). An Oral Hearing was conducted on June 2, 2015.
`The Board has jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued 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, 4, 6, 10, 12–15, 17, 20, 22,
`26, 28–31, 33, 35, and 37 of the ’180 patent are unpatentable.
`
`
`The ’180 Patent (Ex. 1001)
`A.
`The ’180 patent describes methods for communicating over the
`Internet. Ex. 1001, 9:49–50.
`
`
`Illustrative Claim
`B.
`Claim 1 of the ’180 patent is reproduced below:
`
`1. A method for accessing a secure computer network
`address, comprising steps of:
`receiving a secure domain name;
`sending a query message to a secure domain name
`service, the query message requesting from the secure domain
`name service a secure computer network address corresponding
`to the secure domain name;
`receiving from the secure domain name service a
`response message containing the secure computer network
`address corresponding to the secure domain name; and
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`the secure
`to
`sending an access request message
`computer network address using a virtual private network
`communication link.
`
`C.
`
`Cited Prior Art
`June 6, 2000
`June 12, 2012
`
`(Ex. 1008)
`(Ex. 1010)
`
`Tavs
`Bhatti
`
`
`US 6,073,175
`US 8,200,837 B1
`
`
`
`
`
`Takahiro Kiuchi and Shigekoto Kaihara, “C-HTTP – The Development of a
`Secure, Closed HTTP-Based Network on the Internet,” PROCEEDINGS OF
`SNDSS (1996) (Ex. 1004 – “Kiuchi”).
`
`
`D.
`
`Instituted Grounds of Unpatentability
`
`
`References
`
`Kiuchi
`
`Basis
`
`§ 102
`
`§ 103
`
`§ 103
`
`Claims Challenged
`
`1, 4, 10, 12–15, 17, 20,
`26, 28–31, 33, and 35
`1, 4, 10, 12–15, 17, 20,
`26, 28–31, 33, and 35
`6, 22, and 37
`
`Kiuchi and Bhatti
`
`Kiuchi and Tavs (alone or
`in combination with Bhatti)
`
`
`
`Claim Interpretation
`E.
`Virtual Private Network (VPN) Communication Link
`We previously determined that, under a broad but reasonable
`construction, one of skill in the art would have understood the term “virtual
`private network communication link,” in light of the Specification, to
`include “a transmission path between two devices that restricts access to
`data, addresses, or other information on the path, generally using obfuscation
`methods to hide information on the path, including, but not limited to, one or
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`more of authentication, encryption, or address hopping.” Dec. on Inst. 6–7. 1
`Patent Owner disputes this interpretation and argues that the term “virtual
`private network communication link” must be “a communication path
`between computers in a virtual private network” (PO Resp. 8), “requir[es]
`computers within a VPN to communicate directly” (PO Resp. 10), and
`requires a “network of computers,” which, according to Patent Owner must
`be “more than a ‘path between two devices.’” PO Resp. 14.
`We decline to modify our previous construction of this term in the
`manner suggested by Patent Owner because such a modification is
`immaterial in this proceeding for reasons set forth below. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim
`terms need only be construed to the extent necessary to resolve the case).
`
`
`
`Secure Computer Network Address
`We previously construed the term “secure computer network
`address,” broadly but reasonably, and in light of the Specification to mean
`“an address that requires authorization for access.” Patent Owner does not
`agree with this construction and argues that one of skill in the art would have
`broadly but reasonably understood the term “secure computer network
`address,” in light of the Specification, to require the secure computer
`network address to be “associated with a computer capable of virtual private
`network communications.” PO Resp. 16.
`
`1 Our construction is consistent with the broadest, reasonable construction in
`Inter Partes Reexamination Control No. 95/001,792. See Cisco Systems,
`Inc. v. VirnetX, Inc., Appeal 2014-000491, slip. op. at 4–8 (PTAB Apr. 1,
`2014) (Decision on Appeal) (involving U.S. Patent No. 7,188,180).
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`Patent Owner argues that one of ordinary skill in the art would have
`understood that a “secure computer network address” must be “associated
`with a computer capable of virtual private network communications”
`because a claim recites “sending an access request message to the secure
`computer network address using a virtual private network communication
`link.” PO Resp. 16. We agree with Patent Owner that claim 1, for example,
`recites “sending an access request message to the secure computer network
`address using a virtual private network communication link.” However,
`Patent Owner does not explain sufficiently why an explicitly recited claim
`limitation must be incorporated into the construction of an associated claim
`term. Indeed, if one of ordinary skill in the art would have understood that
`all secure computer network addresses must be associated with a computer
`capable of VPN communications and that any computer network address
`that is associated with computers that are incapable of VPN communications
`would be understood by one of ordinary skill in the art not to be a “secure
`computer network address” (even if authorization for access is required),
`then any such recited claim limitation would be superfluous.
`Patent Owner also argues that “VirnetX’s proposed construction has
`been agreed to by its litigation adversaries and has been adopted by a district
`court.” PO Resp. 17. Even if Patent Owner’s proposed construction “has
`been agreed to by” parties in litigation and the district court, Patent Owner
`does not assert or demonstrate persuasively that one of ordinary skill in the
`art would have broadly but reasonably construed the term “secure computer
`network address” in light of the Specification to require association with a
`computer capable of virtual private network communications.
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`In any event, Patent Owner does not appear to contend that the cited
`references fail to disclose a secure computer network address that is
`associated with a computer capable of VPN communications and, therefore,
`does not demonstrate sufficiently that the construction of “secure computer
`network address” will bear on the outcome of the issues in this inter partes
`review. We decline to modify our construction of this term.
`
`Secure Domain Name
`We previously construed the term “secure domain name,” broadly but
`reasonably, and in light of the Specification to mean “a name that
`corresponds to a secure computer network address.” Patent Owner does not
`agree with this construction and argues that one of skill in the art would have
`broadly but reasonably understood the term “secure domain name,” in light
`of the Specification, to require “a non-standard domain name that
`corresponds to a secure computer network address and cannot be resolved by
`a conventional domain name service (DNS).” PO Resp. 19. In support of
`Patent Owner’s proposed construction of the term, Patent Owner states that
`the Specification “takes pains to explain” the difference between a “secure
`domain name” and a “name that corresponds to a secure computer network
`address.” PO Resp. 18 (citing Ex. 1023, 802 (citing Ex. 1001, 51:18–32)).
`The cited portions of the Specification disclose an example of
`“replac[ing] the top-level domain name . . . with a secure top-level domain
`name.” Ex. 1001, 51:19–21. Patent Owner does not demonstrate that the
`Specification also discloses that a secure domain name must be “non-
`standard” and must be incapable of being resolved by a conventional domain
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`name service. For at least this reason, we do not agree with Patent Owner’s
`proposed construction of the term.
`We also adopt and incorporate by reference our analysis of this
`construction in the companion case. See Apple Inc. v. VirnetX Inc., Case
`IPR2014-00481, slip. op. at 13–14 (PTAB 8/24/15) (also discussing
`prosecution history).
`Thus, we decline to modify our construction of this term.
`
`Secure Domain Name Service
`Patent Owner argues that one of skill in the art would have broadly
`but reasonably understood the term “secure domain name service,” in light
`of the Specification, to require “recogniz[ing] that a query message is
`requesting a secure computer address.” PO Resp. 20.
`Claim 1, for example, recites sending a query message to “a secure
`domain name service” requesting a secure computer network address and
`receiving “a response message containing the secure computer network
`address.” Patent Owner does not demonstrate sufficiently that claim 1
`otherwise requires that the “secure domain name service” “recognizes that
`the query message is requesting a secure computer address.” “[T]he claims
`themselves provide substantial guidance as to the meaning of particular
`claim terms” and “the context in which a term is used in the asserted claim
`can be highly instructive.” Phillips v. AWH Corp., 415 F.3d 1303, 1314
`(Fed. Cir. 2005). At least based on the context of the claim, we cannot agree
`with Patent Owner that one of ordinary skill in the art would have
`understood that “recogniz[ing]” is required by claim 1 in the absence of a
`recitation suggesting this alleged requirement.
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`We also look to the Specification in construing claim terms under a
`broad but reasonable standard because “the person of ordinary skill in the art
`is deemed to read the claim term not only in the context of the particular
`claim in which the disputed term appears, but in the context of the entire
`patent, including the specification.” Phillips, 415 F.3d at 1313 (citing
`Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir.
`1998)). Patent Owner does not indicate that the Specification discloses that
`“recogniz[ing]” is required by a secure domain service in either sending a
`query message to the secure domain service or receiving a response message
`from the secure domain name service. Nor do we identify such a disclosure
`in the Specification. Hence, further based on the context of the
`Specification, we cannot agree with Patent Owner that one of ordinary skill
`in the art would have understood that a “secure domain name service” must
`have any specific recognition capabilities in the absence of such a disclosure
`in the Specification of this alleged requirement.
`Patent Owner argues that “VirnetX has disclaimed secure domain
`services that do not perform this recognition” and that “[a] district court later
`relied on VirnetX’s statements.” PO Resp. 20–21. However, Patent Owner
`does not indicate that the district court determined how one of ordinary skill
`in the art would have construed the term “secure domain name service”
`broadly but reasonably in light of the Specification and that, under this broad
`but reasonable construction, one of ordinary skill in the art would have
`understood that the “secure domain name service” to require
`“recogniz[ing].”
`Patent Owner argues that, during a reexamination proceeding, Patent
`Owner allegedly proposed various examples of possible functionality of a
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`secure domain name service. For example, Patent Owner argues that in the
`reexamination proceeding, Patent Owner allegedly stated that a secure
`domain name service “may allow an entity to register . . . names” and “may
`. . . support the establishment of a VPN communication link.” PO Resp. 21.
`However, Patent Owner does not demonstrate persuasively that these
`possible functions of a secure domain service (i.e., that a secure domain
`service “may” register names or support a VPN link) support the contention
`that one of ordinary skill in the art would have understood that a secure
`domain service requires “recogniz[ing].”
`We also adopt and incorporate by reference our analysis of this
`construction in the companion case. See Apple Inc. v. VirnetX Inc., Case
`IPR2014-00481, slip. op. at 14–26 (PTAB 8/24/15). For at least the above
`reasons, we do not adopt Patent Owner’s proposed construction of the term
`“secure domain name service.”
`
`Client Computer
`Patent Owner argues that one of skill in the art would have understood
`that a “client computer” must be a “user’s computer.” PO Resp. 22. Claim
`15 recites a client computer that performs the method of claim 1.
`Patent Owner argues that a “client computer” must be a “user’s
`computer” but does not specify a difference between a “client computer” and
`a “user’s computer.” Instead, Patent Owner merely states that the
`Specification discloses a “user’s computer 2601.” PO Resp. 22 (citing
`Ex. 1001, 40:53–56). We note that the Specification illustrates a component
`“2601” but does not appear to disclose that component “2601” is a “user
`computer.” Spec. Fig. 26. Indeed, the Specification does not appear to
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`disclose any specific name for component “2601” at all. Even if the
`Specification explicitly disclosed that component “2601” as illustrated in
`Figure 26 of the Specification is a “user’s computer,” Patent Owner does not
`explain sufficiently why one of ordinary skill in the art would have
`understood that a “client computer,” as recited in claim 15 must be a “user’s
`computer,” or how such a “user’s computer” would differ from a “client
`computer.” PO Resp. 22.
`Patent Owner also argues that the Specification discloses a “computer
`3301” that “is manned by a user.” PO Resp. 22–23. We note that the
`Specification discloses that element “3301” is a “client computer” (see, e.g.,
`Ex. 1001, 50:2). Patent Owner does not indicate if the Specification refers
`to element “3301” as a “user’s computer” as well, and, if so, how calling
`element “3301” a “user’s computer” (as opposed to a “client computer”)
`would result in a difference in element “3301,” what this supposed
`difference would be, and how this supposed difference would modify the
`broad but reasonable construction of the term “client computer,” as recited
`in claim 15.
`Patent Owner also argues that the Specification discloses a “user’s
`computer 2501.” PO Resp. 23 (citing Ex. 1001, 39:53–55, 40:36–38). The
`Specification discloses a “user’s computer 2501” that “includes a client
`application 2504.” Ex. 1001, 39:53–54. The Specification also discloses
`that the “user’s computer 2601 includes a conventional client (e.g., a web
`browser).” Ex. 1001, 40:36–38. Hence, as Patent Owner points out, the
`Specification discloses an example of a component referred to as “user’s
`computer” (i.e., element 2601) that includes “a client application” and the
`“client application” may be, in one example, a “web browser.” Patent
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`Owner does not assert or demonstrate persuasively that the Specification
`also discloses that the “user’s computer 2601” is a “client computer,” as
`recited in claim 15. Nor does Patent Owner demonstrate sufficiently how
`one of ordinary skill in the art, based on this disclosure of a “user’s
`computer,” would broadly but reasonably construe the term “client
`computer,” as recited in claim 15 to be required to be a “user’s computer.”
`The ’180 patent Specification employs the term “user’s computer” in
`a “conventional scheme . . . shown in FIG 25. A user’s computer 2501
`includes a client application 2504 (for example a web browser) . . . .”
`Ex. 1001, 39:53–55. Although Patent Owner refers to this “conventional”
`computer as “another embodiment,” the ’180 patent Specification disparages
`the “conventional architecture” that employs a user’s computer, because it is
`not secure enough. See id. at 39:63–40:5; PO Resp. 21. In general, the ’180
`patent Specification states that “[t]he present invention” involves a “client
`computer” with a “client application” that “communicates with a server.”
`See Ex. 1001, 7:43–50. This description of “[t]he present invention” does
`not mention, let alone require, a “user’s computer.”
`Therefore, contrary to Patent Owner’s arguments, the ’180 patent
`Specification does not repeatedly treat a “client computer” and a “user’s
`computer” as the same. The broadest reasonable construction of a client
`computer is a computer associated with a client.
`We also adopt and incorporate by reference our analysis of this
`construction in the companion case. See Apple Inc. v. VirnetX Inc., Case
`IPR2014-00481, slip. op. at 26–27 (PTAB 8/24/15) (also discussing
`prosecution history).
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`For at least the above reasons, we do not adopt Patent Owner’s
`proposed construction of the term “client computer” as a “user’s computer.”
`Instead, we construe the term “client computer,” broadly but reasonably, to
`include a computer associated with a client.
`
`Access Request Message
`As Patent Owner explains, the construction of this term “do[es] not
`appear to be relevant to the parties’ disputes.” PO Resp. 25.
`
`II. ANALYSIS
`A. Kiuchi
`For at least the foregoing reasons, we find that Petitioner has
`demonstrated that claims 1, 4, 10, 13–15, 17, 20, 26, 29–31, 33, and 35 are
`anticipated by Kiuchi under 35 U.S.C. § 102.
`Petitioner explains 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, in response, receiving “the IP address” of the
`(requested) server-side proxy (i.e., sends a “query message” requesting “a
`secure computer network address” and receives a “response message” that
`contains the requested address that corresponds to the server-side proxy).
`Pet. 24–25 (emphasis omitted). As Petitioner also explains, Kiuchi discloses
`the client-side proxy “forwards HTTP/1.0 requests” to the requested server-
`side proxy after the connection is established. Pet. 25.
`Patent Owner argues that Kiuchi discloses a “host address as the
`‘secure computer network address’ to which the secure domain name
`corresponds” but that the response message of Kiuchi contains a “secure
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`computer network address” of “the server-side proxy” (and not the “host”).
`PO Resp. 32 (emphasis omitted). In other words, Patent Owner argues that,
`in contrast to claim 1, which requires sending a query message requesting an
`address and receiving a response message containing the address requested
`in the query message, Kiuchi discloses sending a query message requesting
`an address of “the host” but receiving a response message containing an
`address of “the server-side proxy,” rather than “the host.” Based on this
`presumption that “the host” of Kiuchi differs from the “server-side proxy” of
`Kiuchi, Patent Owner argues that Kiuchi fails to disclose the claimed
`invention and also that “the Board has exceeded its statutory authority by
`instituting in part on rationales that were not before it.” PO Resp. 30.
`However, Patent Owner does not explain sufficiently a difference between
`“the host” and the “server-side proxy” of Kiuchi.
`Kiuchi discloses that a client-side proxy “asks the C-HTTP name
`server whether it can communicate with the host” and that, in response, the
`C-HTTP name server examines “the requested server-side proxy” and
`responds by sending the IP address of the server-side proxy. Ex. 1004, 65
`(emphasis added). In other words, Kiuchi discloses that “the host” that is
`requested is the requested “server-side proxy.”
`Patent Owner argues that “Kiuchi explains that the origin server is the
`host.” PO Resp. 33 (citing Ex. 1004, 65, § 2.3(1)–(2)). We have examined
`the cited portions of Kiuchi but do not agree with Patent Owner that Kiuchi
`discloses that “the origin server is the host.” Instead, as previously
`discussed, Kiuchi explicitly discloses that “the host” is the server-side proxy.
`In fact, Kiuchi does not appear to disclose or otherwise refer to the “origin
`server” in the cited portion of the reference at all.
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`Patent Owner argues that Kiuchi discloses that “the C-HTTP name
`server is provided with this URL . . . [and] responds not with the host/origin
`server’s network address . . . but with the IP address of the server-side
`proxy.” PO Resp. 36. We agree with Patent Owner that Kiuchi discloses
`the C-HTTP name server providing the IP address of the server-side proxy.
`For reasons previously discussed, Patent Owner has not demonstrated
`sufficiently a difference between receiving from the C-HTTP name server a
`response message containing the IP address corresponding to the server-side
`proxy and receiving from the secure domain name service a response
`message containing the secure computer network address corresponding to
`the secure domain name, as recited in claim 1, for example.
`Patent Owner argues that Kiuchi fails to disclose an access request
`message. PO Resp. 36. In particular, Patent Owner argues that Kiuchi
`discloses an “HTTP/1.0 request” but that Kiuchi fails to disclose “sending
`the HTTP/1.0 message to the alleged secure computer network address.” PO
`Resp. 39. Claim 1 recites “sending an access request message to the secure
`computer network address.” Patent Owner does not demonstrate that claim
`1 also recites “sending an HTTP/1.0 request to the secure computer network
`address” or that the “access request message” is an “HTTP/1.0 request.” For
`at least this reason, we are not persuaded by Patent Owner’s argument.
`Even if claim 1 recited “sending an HTTP/1.0 request to the secure
`computer network address,” as Patent Owner contends could have been
`recited in claim 1, we disagree with Patent Owner that Kiuchi fails to
`disclose this proposed feature. For example, Kiuchi discloses “sending . . .
`requests to the server-side proxy” in which “a client-side proxy forwards
`HTTP/1.0 requests” to the server-side proxy. Ex. 1004, 66. Patent Owner
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`does not demonstrate persuasively a material difference between the client-
`side proxy “sending” a request to a server-side proxy and a client-side proxy
`“forwarding” a request to a server-side proxy. In both cases, a request is
`transmitted from the client-side proxy to the server-side proxy.
`Patent Owner argues that the “HTTP/1.0 message” of Kiuchi is not
`the same as the claimed “access request message” because, according to
`Patent Owner, the “HTTP/1.0 message” of Kiuchi “seeks an HTML resource
`from the origin/host server” but “does not seek any ‘communication,
`information, or services’ with the server-side proxy.” PO Resp. 39. As
`previously discussed, Kiuchi discloses a client-side proxy “[s]ending C-
`HTTP request to the server-side proxy” in which the “client-side proxy
`forwards the HTTP/1.0 request” to the server-side proxy for communication
`and exchange of services between devices. Ex. 1004, 66. For example,
`Kiuchi discloses one example in which “patient information” is
`“transfer[red]” “among hospitals and related institutions.” Ex. 1004, 64.
`Patent Owner does not indicate sufficiently how Kiuchi’s request for
`communication between network devices for communication or information
`(e.g., patient information) exchange, for example, differs from a device
`seeking “any communication, information, or services.” Hence, to the
`extent that claim 1 requires seeking “any communication, information, or
`services,” we disagree with Patent Owner that Kiuchi fails to disclose this
`feature.
`Patent Owner also argues that the “HTTP/1.0 message” of Kiuchi is
`not the same as the claimed “access request message” because, according to
`Patent Owner, the “HTTP/1.0 message” of Kiuchi “is not sent using a
`Virtual private network communication link.” PO Resp. 40 (bolding
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`omitted). Patent Owner also argues that Kiuchi fails to disclose sending a
`request “using a virtual private network communication link” because
`“Kiuchi’s C-HTTP system lacks the ‘network’ aspect of a VPN.” PO Resp.
`41. Hence, Patent Owner argues that Kiuchi fails to disclose a “network.”
`We disagree with Patent Owner’s argument.
`For example, Kiuchi discloses one embodiment of the use of a C-
`HTTP name server (and client-side and server-side proxies) in “networks
`among hospitals and related institutions.” Ex 1004, 64. At least in view of
`this explicit disclosure of “networks,” we are not persuaded by Patent Owner
`that Kiuchi fails to disclose a “network.”
`Patent Owner also argues that “any message from the client-side
`proxy [of Kiuchi] is not sent using a VPN communication link” because
`“Kiuchi fails to disclose direct communications.” PO Resp. 43. Hence,
`Patent Owner argues that Kiuchi fails to disclose a “direct communication.”
`Claim 1, for example, recites sending an access request to the secure
`network address using a virtual private network communication link. Claim
`1 does not recite sending an access request message over a “direct
`communication.” At least for this reason, we are therefore not persuaded by
`Patent Owner’s argument.
`To the extent that Patent Owner argues that a “direct communication”
`is recited implicitly in claim 1, for example, we disagree with Patent Owner
`at least because even if a “direct communication” is required, Kiuchi
`discloses this feature. As discussed above, Kiuchi discloses a client-side
`proxy (i.e., first network device) “[s]ending C-HTTP requests to the server-
`side proxy” in which the client-side proxy “forwards HTTP/1.0 requests” to
`the server-side proxy. Ex. 1004, 66. Kiuchi also discloses that “[a] client-
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`side proxy and server-side proxy communicate with each other using a
`secure, encrypted protocol.” Ex. 1004, 64. Kiuchi does not disclose that the
`communication between the client-side proxy and the server-side proxy is
`not a “direct communication” and Patent Owner does not explain adequately
`how the communication between the client-side proxy and the server-side
`proxy of Kiuchi differs from a “direct communication,” as Patent Owner
`contends is recited implicitly in claim 1.
`Regarding claims 13, 15, 29, and 31, Patent Owner argues that Kiuchi
`fails to disclose a client computer. PO Resp. 48. Claim 13 recites sending
`the access request message at the client computer and claim 15 recites that
`the method is performed by a client computer. In particular, Patent Owner
`argues that “evidence showed that the user agent containing a web browser
`behind the client-side proxy was the true client [computer] in Kiuchi.” PO
`Resp. 49. Hence, Patent Owner argues that while Kiuchi discloses a “user
`agent” and a “client-side proxy,” the “user agent” of Kiuchi corresponds to
`the claimed “client computer” and the “client-side proxy” of Kiuchi
`supposedly does not. We are not persuaded by Patent Owner’s arguments at
`least because Patent Owner does not demonstrate sufficiently a difference
`between Kiuchi’s “client-side proxy” and the claimed “client computer.”
`For example, while Patent Owner argues that there is “evidence” that shows
`allegedly that the “user agent” of Kiuchi corresponds to the claimed “client
`computer,” the alleged “evidence” is not before us and does not appear to be
`part of the record. In addition, Patent Owner does not indicate that there was
`also “evidence” (and what such “evidence” would be) that shows that the
`“client-side proxy” of Kiuchi cannot be equated with the claimed “client
`computer” and any reasons in support of such a theory. We do not
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`independently identify any reasons why the “client-side proxy” of Kiuchi
`cannot be equated with the claimed “client computer.”
`Patent Owner argues that the “client-side proxy” of Kiuchi cannot be
`equated with the claimed “client computer” because, according to Patent
`Owner, “there was evidence that the ‘client’ of Kiuchi is actually a web
`browser, a component that is distinguishable from the client-side proxy.”
`PO Resp. 49 (quoting VirnetX v. Cisco Sys., 767 F.3d at 1324). Even if
`Patent Owner is correct that a “client” of Kiuchi is a “web browser,” Patent
`Owner does not demonstrate sufficiently a meaningful difference between
`the claimed “client computer” and the “client-side proxy” of Kiuchi. For
`example, although Patent Owner argues that the Federal Circuit commented
`on the term “client,” Patent Owner does not assert that the Federal Circuit
`also commented on the term “client computer” and the relevance of any such
`potential comments to the issue as to whether the “client-side proxy” of
`Kiuchi does or does not encompass the claimed “client computer.” We do
`not independently identify any comments by the Federal Circuit pertaining
`to the claimed “client computer.”
`Patent Owner argues that “Kiuchi describes the system in a way that
`differentiates its proxies from its user agent computers.” PO Resp. 50. In
`other words, Patent Owner argues that the “client-side proxy” of Kiuchi
`somehow differs from the “user agent” of Kiuchi. The issue before us is
`whether the “client-side proxy” of Kiuchi encompasses the claimed “client
`computer,” and not whether the “client-side proxy” of Kiuchi is or is not the
`same as the “user agent” of Kiuchi. Thus, even if Patent Owner’s contention
`is correct that the “client-side proxy” of Kiuchi is different from the “user
`agent” of Kiuchi, Patent Owner does not assert or demonstrate adequately a
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`difference between the “client-side proxy” of Kiuchi and the claimed “client
`computer.” Patent Owner’s argument is not persuasive.
`Patent Owner also argues that if the “client-side proxy” of Kiuchi is
`equated with the claimed “client computer,” then Kiuchi’s system “collapses
`. . . into a system of the type Kiuchi criticizes, where an end-user has an
`opportunity to obtain the institution’s public key.” PO Resp. 50. First, we
`disagree with Patent Owner that equating Kiuchi’s “client-side proxy” with
`the claimed “client computer,” has any bearing on any potential or alleged
`criticisms that may or may not be disclosed by Kiuchi. We note that
`although Patent Owner’s proposes an alleged “criticism” in Kiuchi of
`“obtain[ing] the institution’s public key,” claim 13, for example, does not
`recite preventing or enabling a user from obtaining an institution’s public
`key. Indeed, claim 13 does not recite a “public key” at all.
`Considering the claim limitations that are recited by the claims,
`Kiuchi does not disclose that utilizing the “client-side proxy” to send a query
`message, receive a response message, or send an access request message, as
`recited in claim 15 (which depends from claim 1), for example, would result
`in any particular “criticism” of the Kiuchi system. In fact, as previously
`discussed, Kiuchi appears to disclose the “client-side proxy” performing
`each of these claim features.
`Patent Owner argues that one of ordinary skill in the art would have