Trials@uspto.gov Paper 42
`571-272-7822
` Date: July 29, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-004041
`
`Patent 7,987,274 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
`
`Microsoft Corp. filed a Petition (Paper 2) (“Pet.”) seeking an inter
`
`partes review of claims 1–5, 7, 8, 10, 12, 15, and 17 of U.S. Patent No.
`
`
`1 As discussed below, IPR2014-00484 has been joined with IPR2014-00404.
`This Final Written Decision applies to the joined case.
`
`

`
`IPR2014-00404
`Patent 7,987,274 B2
`
`7,987,274 B2 (Ex. 1001, “the ’274 patent”) pursuant to 35 U.S.C. §§ 311–
`
`319. On July 31, 2014, the Board instituted an inter partes review of claims
`
`1–5, 7, 8, 10, 12, 15, and 17 (Paper 13) (“Dec. on Inst.”).
`
`Apple Inc. (“Petitioner”) filed a Petition (IPR2014-00484, Paper 1)
`
`seeking an inter partes review of claims 1–5, 7, 8, 10, 12, 13, 15, 17, and 18
`
`of the ’274 patent pursuant to 35 U.S.C. §§ 311–319. On September 15,
`
`2014, the Board instituted an inter partes review of claims 1–5, 7, 8, 10, 12,
`
`15, and 17 (IPR2014-00484) and joined IPR2014-00484 with IPR2014-
`
`00404 pursuant to 35 U.S.C. § 315(c) (IPR2014-00484, Paper 11 – Dec. on
`
`Inst.). On April 16, 2015, the present proceeding was terminated with
`
`respect to Microsoft Corporation only. Paper 38.
`
`Subsequent to institution, VirnetX Inc. (“Patent Owner”) filed a
`
`Patent Owner Response (Paper 26) (“PO Resp.”), and Petitioner filed a
`
`Reply (Paper 34) (“Pet. Reply”). An Oral Hearing was conducted on April
`
`28, 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 1–5, 7, 8, 10, 12, 15, and 17 of
`
`the ’274 patent are unpatentable.
`
`
`
`A.
`
`The ’274 Patent (Ex. 1001)
`
`The ’274 patent describes methods for communicating over the
`
`Internet. Ex. 1001, 9:38–39.
`
`
`
`2
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`

`
`IPR2014-00404
`Patent 7,987,274 B2
`
`
`B.
`
`Illustrative Claim
`
`Claim 1 of the ’274 patent is reproduced below:
`
`
`1. A method of accessing a secure network address,
`comprising:
`sending a query message from a first network device to a
`secure domain service, the query message requesting from the
`secure domain service a secure network address for a second
`network device;
`receiving at the first network device a response message
`from the secure domain name service containing the secure
`network address for the second network device; and
`sending an access request message from the first network
`device to the secure network address using a virtual private
`network communication link.
`
`C.
`
`Cited Prior Art
`
`
`
`Lindblad US 6,225,993 B1
`Bhatti
`US 8,200,837 B1
`
`
`
`
`
`May 1, 2001
`June 12, 2012
`
`(Ex. 1009)
`(Ex. 1010)
`
`
`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
`
`Kiuchi and Lindblad
`Kiuchi and Bhatti
`
`Kiuchi, Bhatti, and
`Lindblad
`
`
`
`Basis
`
`§ 102
`
`§ 103
`§ 103
`
`§ 103
`
`3
`
`Claims Challenged
`
`1–4, 7, 8, 10, 12, 15, and
`17
`5
`1–4, 7, 8, 10, 12, 15, and
`17
`5
`
`

`
`IPR2014-00404
`Patent 7,987,274 B2
`
`
`E.
`
`Claim Interpretation
`
`Virtual Private Network (VPN) Communication Link
`
`We previously determined that, under a broadest 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
`
`more of authentication, encryption, or address hopping.” Dec. on Inst. 7. 2
`
`Patent Owner disputes this interpretation and argues that the term “virtual
`
`private network communication link” 1) must be “a communication path
`
`between computers in a virtual private network” (PO Resp. 6), 2) “requir[es]
`
`computers within a VPN to communicate directly” (PO Resp. 9), and 3)
`
`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).
`
`
`
`
`2 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 grandparent patent to the ’274 patent,
`U.S. Patent No. 7,188,180).
`
`4
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`IPR2014-00404
`Patent 7,987,274 B2
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`Secure Domain (Name) Service
`
`Patent Owner argues that one of skill in the art would have 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. 16. Petitioner proposes that a secure domain (name)
`
`service (SDNS) should be construed as “[a] service that can resolve secure
`
`computer network addresses for a secure domain name for which a
`
`conventional domain name service [(“DNS”)] cannot resolve addresses.”
`
`See Pet. 13; PO Resp. 15 (discussing Petitioner’s proposed construction).
`
`Claim 1, for example, recites sending a query message to “a secure
`
`domain service” requesting a secure network address and receiving “a
`
`response message from the secure domain name service containing the
`
`secure network address.” Claim 1 does not recite “recogniz[ing] 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 of this alleged requirement.
`
`Based on the context of the claim, the Specification, and the
`
`prosecution history, claim 1 does not require “recogniz[ing]” as argued by
`
`Patent Owner. The Specification describes an “SDNS 313” that “contains a
`
`cross-reference database of secure domain names and corresponding secure
`
`network addresses. That is, for each secure domain name, SDNS 3313
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`IPR2014-00404
`Patent 7,987,274 B2
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`stores a computer network address corresponding to the secure domain
`
`name.” Ex. 1001, 47:15–18. This disclosure comes closest to aligning with
`
`the claim term, “secure domain service” (i.e., an SDNS as set forth in the
`
`disclosure). Patent Owner does not point the panel to a disclosure in the
`
`Specification that clearly supports the requirement of an SDNS to
`
`“recognize that the query message is requesting a secure computer address.”
`
`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 “recogniz[ing]” is required by claim 1 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. 16–17. However, Patent Owner
`
`does not indicate that the district court determined, under a broadest
`
`reasonable standard, how one of ordinary skill in the art would have
`
`construed the term “secure domain service” in light of the Specification and
`
`that, under this broadest reasonable construction, one of ordinary skill in the
`
`art would have understood the “secure domain service” to require
`
`“recogniz[ing].” Indeed, based on the record before us, it appears the district
`
`court did not construe the term “secure domain service” at all, much less
`
`under a broadest reasonable standard.
`
`Patent Owner argues that, during a reexamination proceeding of a
`
`different (but related) matter (Inter Partes Reexamination Control No.
`
`95/001,270), Patent Owner allegedly proposed various examples of possible
`
`functionality of a secure domain name service. For example, Patent Owner
`
`argues that in the reexamination proceeding for U.S. Patent No. 7,188,180,
`
`6
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`IPR2014-00404
`Patent 7,987,274 B2
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`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. 17–18. 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].”
`
`For at least the above reasons, and to the extent it is material, we
`
`adopt Petitioner’s proposed construction of the term “secure domain
`
`service.”3
`
`
`
`Tunnel Packeting
`
`Patent Owner argues that one of ordinary skill in the art would have
`
`understood the term “tunnel packeting” to mean “forming a packet to be
`
`transmitted that contains data structured in one protocol format within the
`
`format of another protocol.” PO Resp. 19. However, Patent Owner does not
`
`demonstrate sufficiently that the construction of “tunnel packeting” will bear
`
`on the outcome of the issues in this inter partes review. Hence, we decline
`
`to modify our construction of this term.
`
`
`
`Client Computer
`
`
`3 We adopt and incorporate by reference our analysis of this construction in
`the companion case. See Apple Inc. v. VirnetX Inc., Case IPR2014-00403,
`slip. op. at 8–20 (PTAB July 29, 2015) (also discussing prosecution history).
`
`7
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`IPR2014-00404
`Patent 7,987,274 B2
`
`
`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. 21. Claim
`
`15 recites a client computer that is connected to a communication network.
`
`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.” 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 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.” Id. at 21.
`
`Patent Owner also argues that the Specification discloses a “computer
`
`3301” that “is manned by a user.” Id. We note that the Specification
`
`discloses that element “3301” is a “client computer” (see, e.g., Spec. 45:19).
`
`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 broadest reasonable
`
`construction of the term “client computer,” as recited in claim 15.
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`8
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`IPR2014-00404
`Patent 7,987,274 B2
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`Also, the ’274 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, 38:61–63. Although Patent Owner refers to this
`
`“conventional” computer as “another embodiment,” the ’274 patent
`
`Specification disparages the “conventional architecture” that employs a
`
`user’s computer, because it is not secure enough. See Ex. 1001, 39:4–13. In
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`general, the ’274 patent Specification states that “[t]he present invention”
`
`involves a “client computer” with a “client application” that “communicates
`
`with a server.” See Ex. 1001, 7:40–44. This description of “[t]he present
`
`invention” does not mention, let alone require, a “user’s computer.”
`
`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,” under a broadest reasonable
`
`standard, 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. 24.
`
`
`
`Secure Network Address
`
`As Patent Owner explains, the construction of this term “do[es] not
`
`appear to be relevant to the parties’ disputes.” PO Resp. 24.
`
`
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`IPR2014-00404
`Patent 7,987,274 B2
`
`
`II. ANALYSIS
`
`A. Kiuchi
`For at least the following reasons, we find that Petitioner has
`
`demonstrated that claims 1–4, 7, 8, 10, 12, 15, and 17 are anticipated by
`
`Kiuchi under 35 U.S.C. § 102.
`
`Patent Owner argues that this proceeding should be terminated
`
`because “the Board relies on the host server’s IP address and the host server,
`
`meaning Kiuchi’s origin server, respectively.” PO Resp. 29. Under 35
`
`U.S.C. § 314(d), “the determination . . . whether to institute an inter partes
`
`review . . . shall be final and nonappealable.” See In re Cuozzo Speed
`
`Technologies, LLC, 778F.3d 1271, 1277 (Fed. Cir. 2015). Therefore, even if
`
`we relied on “Kiuchi’s origin server,” we disagree with Patent Owner that
`
`such an alleged reliance would indicate that “the proceeding should be
`
`terminated.” In any event, we disagree with Patent Owner that we relied
`
`upon “Kiuchi’s origin server” as explained in more detail below. Because
`
`Patent Owner’s argument ostensibly in support of terminating the
`
`proceeding is based on Patent Owner’s erroneous interpretation, Patent
`
`Owner has provided insufficient reasons to terminate the present proceeding.
`
`Petitioner explains that Kiuchi discloses a client-side proxy (i.e., “first
`
`network device”) that sends a request to a C-HTTP name server (i.e., a
`
`“secure domain service”) for a secure network address for a server-side
`
`proxy (i.e., “second network device”). See, e.g., Pet. 28. In other words,
`
`Petitioner equates the “second network device,” as recited in claim 1, with
`
`the “server-side proxy” of Kiuchi.
`
`Patent Owner contends that Kiuchi discloses that the first network
`
`device (or client-side proxy) requests a secure network address for the
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`IPR2014-00404
`Patent 7,987,274 B2
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`“origin server” of Kiuchi and not the server-side proxy of Kiuchi, the server-
`
`side proxy being equated with the recited “second network device.” PO
`
`Resp. 32–34. We disagree with Patent Owner.
`
`Claim 1 recites sending a message from a first network device for an
`
`address for a second network device and, in response, receiving at the first
`
`network device the address for the second network device. 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.” In response to the request from
`
`the client-side proxy, the client-side proxy (i.e., “first network device”)
`
`receives “the IP address and public key of the server-side proxy.” Ex. 1004,
`
`65. In other words, Kiuchi discloses a first network device (or a client-side
`
`proxy) sending a message to the C-HTTP name server (or secure domain
`
`service) to request a secure network address (e.g., an “IP address and public
`
`key”) for a second network device (i.e., server-side proxy) and then, in
`
`response, receiving at the client-side proxy the requested secure network
`
`address for the second network device (i.e., “the IP address and public key
`
`of the server-side proxy”). Patent Owner does not demonstrate persuasively
`
`a difference between Kiuchi and the claimed invention.
`
`Patent Owner argues that Kiuchi discloses that the client-side proxy
`
`sends a request for a network address for the “origin server” but not for the
`
`server-side proxy. However, Kiuchi discloses that in response to the request
`
`to communicate with “the host,” the name server examines “the requested
`
`server-side proxy” and returns “the IP address . . . of the server-side proxy.”
`
`Ex. 1004, 65 (emphasis added). Thus, contrary to Patent Owner’s
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`IPR2014-00404
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`contention, “the host” of Kiuchi corresponds to the “server-side proxy” (or
`
`second network device, as recited in claim 1).
`
`Patent Owner also argues that Kiuchi fails to disclose an access
`
`request message, as recited in claim 1. In particular, Patent Owner argues
`
`that Kiuchi discloses a “user agent” sending a query message for a secure
`
`domain service, rather than a “first network device” (i.e., a client-side proxy
`
`of Kiuchi) sending a request to a secure domain service. PO Resp. 36 (citing
`
`Ex. 2041 ¶ 42 (“Declaration of Fabian Monrose, Ph.D.” or “Monrose Dec.”).
`
`We are not persuaded by Patent Owner’s arguments. Dr. Monrose testifies
`
`that Kiuchi discloses an “HTTP/1.0 message [that] is sent ‘from the user
`
`agent’ and reaches neither the host/origin server nor the server-side proxy.”
`
`Ex. 2041 ¶ 42. However, as previously discussed, Kiuchi discloses a step of
`
`“sending . . . requests to the server-side proxy” in which “a client-side proxy
`
`forwards HTTP/1.0 requests from the user agent” to the server-side proxy.
`
`Ex. 1004, 66. Neither Patent Owner nor Patent Owner’s declarant (Dr.
`
`Monrose) explains sufficiently how an “HTTP/1.0 request” that is
`
`“forwarded” by a client-side proxy to a server-side proxy fails to reach the
`
`server-side proxy in Kiuchi or that the forwarded request in Kiuchi is
`
`somehow diverted prior to reaching the server-side proxy and does not arrive
`
`at its intended destination.
`
`Patent Owner also argues that Kiuchi discloses that the client-side
`
`proxy “dispatches a new C-HTTP request” but Kiuchi fails to disclose that
`
`the client-side proxy sends “an HTTP/1.0 request.” PO Resp. 37. First, we
`
`note that claim 1 recites “sending an access request message.” Claim 1 does
`
`not recite or otherwise require “sending an HTTP/1.0 request.” For at least
`
`this reason, we are not persuaded by Patent Owner’s argument. Also, as
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`Patent 7,987,274 B2
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`previously discussed, 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 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 Kiuchi discloses an “HTTP/1.0 request” that
`
`“is not an access request message [as recited in claim 1] at least because it
`
`does not seek any ‘communication, information, or services’ with the server-
`
`side proxy.” PO Resp. 38 (citing Ex. 2041 ¶¶ 44, 46). Kiuchi discloses a
`
`client-side proxy “[s]ending C-HTTP request to the server-side proxy” in
`
`which the “client-side proxy forward 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. PO Resp. 38.
`
`Patent Owner argues that Kiuchi fails to disclose sending an
`
`“HTTP/1.0 message” using a “virtual private network communication link.”
`
`PO Resp. 39. In particular, Patent Owner argues that Kiuchi discloses
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`sending a message from a client-side proxy to a server-side proxy, which,
`
`according to Patent Owner, is “a point-to-point connection, not a network as
`
`claimed.” PO Resp. 39–40. Patent Owner also argues that Kiuchi fails to
`
`disclose sending a request “using a virtual private network communication
`
`link” because “the request [of Kiuchi] lacks the ‘network’ aspect of a VPN
`
`communication link and further because [Kiuchi merely discloses] a point-
`
`to-point message [instead of] a VPN communication link.” PO Resp. 42–43
`
`(citing Ex. 2041 ¶ 52). 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 argues that Kiuchi discloses sending an HTTP/1.0
`
`request but that “the request must pass through both the client-side and
`
`server-side proxies to reach the origin server.” PO Resp. 41 (citing Ex. 2041
`
`¶ 51). According to Patent Owner, this indicates that “Kiuchi fails to
`
`disclose direct communications to any host server and any message from the
`
`client-side proxy . . . is not sent using a VPN communication link.” PO
`
`Resp. 41–42. Hence, Patent Owner argues that Kiuchi fails to disclose a
`
`“direct communication.”
`
`Claim 1, for example, recites sending an access request from a first
`
`network device to a secure network address using a virtual private network
`
`communication link. Claim 1 does not recite sending an access request
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`message over a “direct communication.” 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. 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-side proxy and server-
`
`side proxy communicate with each other using a secure, encrypted protocol
`
`(C-HTTP).” 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
`
`implicitly recited in claim 1.4
`
`Regarding claim 15, Patent Owner argues that Kiuchi fails to disclose
`
`a “client computer,” in which “client computer,” as recited in claim 15, is
`
`construed to mean a “user’s computer.” PO Resp. 44–45. In other words,
`
`Patent Owner argues that Kiuchi fails to disclose a “user’s computer.”
`
`
`4 The Federal Circuit determined that “Kiuchi’s client-side and server-side
`proxies terminate the connection, process information, and create a new
`connection – actions that are not ‘direct’ within the meaning of the asserted
`claims.” VirnetX, Inc. v. Cisco Systems, Inc., 767 F.3d 1308, 1317 (Fed. Cir.
`2014). Hence, the Federal Circuit determined that a client-side proxy did
`not form a “direct communication” with an origin server. However, the
`Federal Circuit did not determine whether or not the client-side proxy forms
`a “direct communication” with a server-side proxy.
`
`15
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`

`
`IPR2014-00404
`Patent 7,987,274 B2
`
`Claim 15 recites that “a client computer [is] connected to a communication
`
`network.” As previously discussed and in view of the apparent lack of
`
`distinction between a “client” and a “user,” based on Patent Owner’s
`
`arguments, we are not persuaded by Patent Owner that one of ordinary skill
`
`in the art would have construed, under a broadest reasonable standard, the
`
`term “client computer,” in light of the Specification, to mean “user’s
`
`computer.”
`
`We also disagree with Patent Owner that Kiuchi fails to disclose a
`
`“client computer,” or a computer associated with a client. As previously
`
`discussed, Kiuchi discloses a “client-side proxy” that is associated with a
`
`“client.” Hence, Kiuchi discloses a “client computer.”
`
`In addition, assuming one of ordinary skill in the art would have
`
`understood that a “client computer” must include specific reference to a
`
`“user,” as Patent Owner appears to contend, Kiuchi discloses this feature.
`
`Kiuchi discloses, for example, a “user agent” and “communication between
`
`a client-side proxy and user agent.” Ex. 1004, 65. In other words, the “user
`
`agent” of Kiuchi is connected to (i.e., in communication with) a
`
`communication network (which includes a client-side proxy). Patent Owner
`
`does not demonstrate persuasively a difference between the “user agent” of
`
`Kiuchi (that is connected to a communication network) and the “client
`
`computer” that is also “connected to a communication network,” as recited
`
`in claim 15.
`
`
`
`B.
`
`Kiuchi and Bhatti/Lindblad
`
`Regarding claims 1–5, 7, 8, 10, 12, 15, and 17, Patent Owner argues
`
`that it would not have been obvious to one of ordinary skill in the art to have
`
`16
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`

`
`IPR2014-00404
`Patent 7,987,274 B2
`
`combined the teachings of Kiuchi and Bhatti because Kiuchi discloses an
`
`“origin server” that, according to Patent Owner, corresponds to the “second
`
`network device,” as recited in claim 1, for example. PO Resp. 47–49. Even
`
`if the “origin server” of Kiuchi would somehow render the combination of
`
`Kiuchi and Bhatti improper, we need not consider Patent Owner’s argument
`
`further because, as previously discussed, Petitioner relies on the “server-side
`
`proxy” and not the “origin server” of Kiuchi as the recited second network
`
`device.
`
`Patent Owner also argues that Bhatti fails to disclose “using a virtual
`
`private network communication link.” PO Resp. 50. However, as discussed
`
`above, we agree with Petitioner that Kiuchi discloses this feature.
`
`No additional issues with respect to Bhatti or the Lindblad reference
`
`are identified. PO Resp. 50–51.
`
`
`
` ORDER
`
`Petitioner has demonstrated, by a preponderance of the evidence, that
`
`claims 1–4, 7, 8, 10, 12, 15, and 17 are anticipated under 35 U.S.C. § 102 by
`
`Kiuchi or unpatentable under 35 U.S.C. § 103(a) over Kiuchi and Bhatti and
`
`that claim 5 is unpatentable over 35 U.S.C. § 103(a) over the combination of
`
`Kiuchi and Lindblad or the combination of Kiuchi, Lindblad, and Bhatti.
`
`In consideration of the foregoing, it is hereby:
`
`
`
`ORDERED that claims 1–5, 7, 8, 10, 12, 15, and 17 of the ’274 patent
`
`have been shown to be unpatentable.
`
`This is a final decision. Parties to the proceeding seeking judicial
`
`review of the decision must comply with the notice and service requirements
`
`of 37 C.F.R. § 90.2.
`
`17
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`

`
`IPR2014-00404
`Patent 7,987,274 B2
`
`
`
`PETITIONER:
`
`Jeffrey P. Kushan
`Joseph A. Micallef
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`jmicallef@sidley.com
`
`
`
`PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`Jason E. Stach
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`jason.stach@finnegan.com
`
`18