Case No. IPR2015-00866
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`
`
`Paper No.
`Filed: July 6, 2015
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: naveenmodi@paulhastings.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
`
`v.
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`VIRNETX INC.
`Patent Owner
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`
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`
`
`Case IPR2015-00866
`Patent 8,458,341
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`
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`
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`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 8,458,341
`
`
`
`
`Filed on behalf of: VirnetX Inc.
`By:
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: josephpalys@paulhastings.com
`
`
`
`

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`
`
`I.
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`II.
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`Case No. IPR2015-00866
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`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
`
`The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review ......................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`The Petition Improperly Relies on Material That It Fails to
`Establish Is Statutory Prior Art ............................................................. 2
`
`The Petition’s Obviousness Ground Is Redundant and Should
`Be Denied .............................................................................................. 9
`
`The Petition Fails to Show a Reasonable Likelihood Petitioner
`Will Prevail With Respect to Obviousness .........................................14
`
`III. The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected .........................................................................................................20
`
`A. Overview of the ’341 Patent ................................................................22
`
`B.
`
`C.
`
`D.
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`E.
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`F.
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`G.
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`Level of Ordinary Skill in the Art .......................................................23
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`“Interception of the Request” (Claims 1, 11, 15, and 25) ...................24
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`“Provisioning Information” (Claims 1 and 15) ...................................28
`
`“Secure Communications Service” (Claims 1, 2, 4, 6, 11, 15,
`16, 18, 20, and 25) ...............................................................................30
`
`“Indication” (Claims 1 and 15) ...........................................................32
`
`“Virtual Private Network Communication Link” (Claims 1, 3,
`15, and 17) ...........................................................................................33
`
`1.
`
`2.
`
`3.
`
`A “VPN Communication Link” Does Not Exist Outside
`of a Virtual Private Network .....................................................34
`
`“Authentication” and “Address Hopping” Alone Do Not
`Result in a “Virtual Private Network Communication
`Link” .........................................................................................35
`
`A “Virtual Private Network Communication Link” Must
`Be Direct ...................................................................................38
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`Case No. IPR2015-00866
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`4.
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`5.
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`A “Virtual Private Network Communication Link”
`Requires a Network ...................................................................41
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`A “Virtual Private Network Communication Link”
`Requires Encryption ..................................................................43
`
`H.
`
`I.
`
`“Domain Name” (Claims 1 and 15) ....................................................44
`
`“Modulation” (Claims 7, 8, 21, and 22) ..............................................45
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`IV. Conclusion .....................................................................................................46
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`ii
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`Case No. IPR2015-00866
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`A.R.M., Inc. v. Cottingham Agencies Ltd.,
`IPR2014-00671, Paper No. 10 (Oct. 3, 2014) ...................................................... 3
`
`Actavis, Inc. v. Research Corp. Techs., Inc.,
`IPR2014-01126, Paper No. 22 (Jan. 9, 2015) ....................................................... 3
`
`Apple Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00450, Paper No. 9 (June 29, 2015) ...................................................... 5
`
`Apple Inc. v. VirnetX, Inc.,
`IPR2014-00237, Paper No. 15 (May 14, 2014) ............................................ 25, 45
`
`Apple Inc. v. VirnetX, Inc.,
`IPR2014-00481, Paper No. 1 (Mar. 7, 2014) ............................................... 35, 44
`
`Apple Inc. v. VirnetX Inc.,
`IPR2014-00483, Paper No. 11 (Sept. 15, 2014) ................................................. 12
`
`In re Chaganti,
`554 F. App’x 917, 922 (Fed. Cir. 2014) ............................................................. 14
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (Aug. 29, 2014) .......................................................... 5
`
`In re Cyclobenzaprine Hydrochloride Extended
`Release Capsule Patent Litig.,
`676 F.3d 1063 (Fed. Cir. 2012) .......................................................................... 14
`
`Elec. Frontier Found. v. Pers. Audio, LLC,
`IPR2014-00070, Paper No. 21 (Apr. 18, 2014) ................................................ 8, 9
`
`EMC Corp. v. Personal Web Techs., LLC,
`IPR2013-00087, Paper No. 25 (June 5, 2013) .............................................. 11, 13
`
`Eon–Net LP v. Flagstar Bancorp.,
`653 F.3d 1314 (Fed. Cir. 2011) .......................................................................... 43
`
`
`
`iii
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`
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .......................................................................... 19
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`Case No. IPR2015-00866
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`Garmin Int’l inc. v. Cuozzo Speed Tech, LLC,
`IPR2012-00001, Paper No. 15 (Jan. 9, 2013) ............................................... 21, 40
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ................................................................................................ 14
`
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) .............................................................................. 19
`
`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027, Paper No. 26 (June 11, 2013) .................................................... 2
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 15
`
`In re Klopfenstein,
`380 F.3d 1345 (Fed. Cir. 2004) ........................................................................ 2-3
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 14
`
`L-3 Comm. Holdings, Inc. v. Power Survey, LLC,
`IPR2014-00832, Paper No. 9 (Nov. 14, 2014) ..................................................... 3
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper No. 7 (Oct. 25, 2012) ...................................... 10, 11, 12
`
`Medichem, SA v. Rolabo, SL,
`437 F.3d 1157 (Fed. Cir. 2006) .................................................................... 19, 20
`
`Microsoft Corp. v. Proxyconn, Inc.,
`No. 2014-1542, 2015 U.S. App. LEXIS 10081 (Fed. Cir. Jun. 16,
`2015) ................................................................................................................... 21
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093, Paper No. 28 (Apr. 29, 2013) ............................................ 21, 40
`
`Petroleum Geo-Services Inc., v. WesternGeco LLC,
`IPR2014-01476, Paper No. 18 (Mar. 17, 2015) ................................................. 14
`
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`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 21
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`Case No. IPR2015-00866
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`Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP,
`IPR2014-00514, Paper No. 18 (Sep. 9, 2014) .................................................. 8, 9
`
`ScentAir Techs., Inc. v. Prolitic, Inc.,
`IPR2013-00180, Paper No. 18 (Aug. 26, 2013) ............................................. 2, 11
`
`Square, Inc. v. Unwired Planet, LLC,
`CBM2014-00156, Paper 22 (Feb. 26, 2015) .................................................... 4, 5
`
`Toyota Motor Corp. v. Am. Vehicular Sciences LLC,
`IPR2013-00421, Paper No. 15 (Jan. 13, 2014) ................................................... 11
`
`VirnetX, Inc. v. Cisco Sys., Inc.,
`767 F.3d F.3d 1308, 1317 ................................................................................... 41
`
`Xilinx, Inc. v. Intellectual Ventures I LLC,
`IPR2013-00112, Paper No. 14 (June 27, 2013) .................................................. 40
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) ............................................................................ 20
`
`ZTE Corp. & ZTE (USA) Inc. v. ContentGuard Holdings Inc.,
`IPR2013-00134, Paper No. 12 (June 19, 2013) .................................................. 40
`
`Federal Statutes
`
`35 U.S.C. § 103 .................................................................................................. 13, 14
`
`35 U.S.C. § 311(b) ......................................................................................... 1, 2, 6, 7
`
`35 U.S.C. § 312(a)(3) ................................................................................................. 2
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314(a) ..................................................................................................... 2
`
`Federal Rules
`
`37 C.F.R. § 42.1(b) .................................................................................................. 10
`
`37 C.F.R. § 42.6(a)(3) ................................................................................................ 5
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`37 C.F.R. § 42.65(a) ................................................................................................... 7
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`Case No. IPR2015-00866
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`37 C.F.R. § 42.100(b) .............................................................................................. 20
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`vi
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`
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`I.
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`Introduction
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`Case No. IPR2015-00866
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`Patent Owner VirnetX Inc. respectfully submits this Preliminary Response
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`in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107, responding to the
`
`Petition for Inter Partes Review (the “Petition”) filed by Apple Inc. against Patent
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`Owner’s U.S. Patent No. 8,458,341 (“the ’341 patent”). Patent Owner requests
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`that the Board not institute inter partes review for several reasons.
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`First, Petitioner relies on material that it has not shown is a “patent[] or
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`printed publication[]” under 35 U.S.C. § 311(b). Second, Petitioner proposes
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`redundant grounds without identifying how any one ground improves on any other,
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`contravening Board precedent requiring petitioners to identify differences in
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`proposed rejections. Next, Petitioner has not met its burden of demonstrating a
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`reasonable likelihood of prevailing in proving unpatentability of any challenged
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`’341 patent claim. And finally, Petitioner proposes a number of incorrect claim
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`constructions upon which it bases its unpatentability grounds. Each of these
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`reasons requires denial of institution.
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`II. The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review
`The grounds that may be raised in a petition for inter partes review (IPR) are
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`limited to those “that could be raised under section 102 or 103 and only on the
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`basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b).
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`In addition, the Board will not consider redundant grounds and to the extent they
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`are proposed, Petitioner carries the burden of “articulat[ing] a meaningful
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`Case No. IPR2015-00866
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`distinction in terms of relative strengths and weaknesses with respect to application
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`of the prior art disclosures to one or more claim limitations.” ScentAir Techs., Inc.
`
`v. Prolitic, Inc., IPR2013-00180, Paper No. 18 at 3 (Aug. 26, 2013); see also Idle
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`Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper No. 26 at 3 (June 11,
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`2013) (“[A]t [the] time of institution the Board analyzes the petition on a claim-by-
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`claim, ground-by-ground basis, to eliminate redundant grounds.”) To be instituted,
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`a petition must also “show[] that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the petition.”
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`35 U.S.C. § 314(a). This showing requires that the petition “identif[y], in writing
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`and with particularity, each claim challenged, the grounds on which the challenge
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`to each claim is based, and the evidence that supports the grounds for the challenge
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`to each claim.” 35 U.S.C. § 312(a)(3). Petitioner fails to meet each of these
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`requirements.
`
`A. The Petition Improperly Relies on Material That It Fails to
`Establish Is Statutory Prior Art
`Prior art relied on in a petition for inter partes review may only consist of
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`“patents or printed publications.” 35 U.S.C. § 311(b). As such, the burden is on
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`Petitioner to establish that RFC 2401, which is not a patent and on which Petitioner
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`relies for its proposed ground of unpatentability, was “sufficiently accessible to the
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`public interested in the art.” In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir.
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`2
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`2004); see also Actavis, Inc. v. Research Corp. Techs., Inc., IPR2014-01126, Paper
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`Case No. IPR2015-00866
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`No. 22 at 9-13 (Jan. 9, 2015) (finding that “Petitioner has not satisfied its burden to
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`prove that [a] thesis is a printed publication under § 102(b)”); L-3 Comm.
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`Holdings, Inc. v. Power Survey, LLC, IPR2014-00832, Paper No. 9 at 12 (Nov. 14,
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`2014) (“The party seeking to introduce the reference ‘should produce sufficient
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`proof of its dissemination or that it has otherwise been available and accessible to
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`persons concerned with the art to which the document relates and thus most likely
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`to avail themselves of its contents.’”); A.R.M., Inc. v. Cottingham Agencies Ltd.,
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`IPR2014-00671, Paper No. 10 at 7 (Oct. 3, 2014).
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`Petitioner merely alleges that RFC 2401 (Ex. 1008) “was published in
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`November 1998.” (Pet. at 24 (citing Ex. 1008 at 1).) Petitioner’s allegation is
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`insufficient to overcome Petitioner’s burden of proving that RFC 2401 is a printed
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`publication. First, Petitioner does not explain in the Petition how or why
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`November 1998 is the publication date for RFC 2401. A review of Petitioner’s 55
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`exhibits, reveals testimony by Petitioner’s expert, Dr. Tamassia, on the subject of
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`RFC 2401’s publication date, but this testimony is never cited to nor discussed in
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`the Petition. Second, even if Dr. Tamassia’s testimony was improperly considered
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`to be part of the Petition, it fails to establish that RFC 2401 was “sufficiently
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`accessible to the public interested in the art” as of the alleged publication date.
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`As indicated above, the Petition nakedly asserts that RFC 2401 was
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`published on November 1998. But the Petition provides no explanation why RFC
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`2401 was “sufficiently accessible to the public interested in the art” as of its
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`alleged publication date. This deficiency is fatal to the Petition’s claims regarding
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`the status of RFC 2401 as a printed publication. See Square, Inc. v. Unwired
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`Planet, LLC, CBM2014-00156, Paper 22 at 6-7 (Feb. 26, 2015) (explaining that a
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`Petition’s naked assertion of a publication date is insufficient because the Peitioner
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`“must prove in its Petition” the references’ publication date and “that, as of that
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`date, [the reference] was publicly accessible.”) (emphasis added); compare Square,
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`Inc., CBM2014-00156, Paper 2 at 39 (July 11, 2014), with Pet. at 24.
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`The nominal recitation of the alleged publication date on the first page of the
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`RFC, (see Ex. 1008 at 1, Ex. 1013 at 1), cannot and does not relieve Petitioner of
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`its burden of explaining in the Petition why RFC 2401 was “sufficiently
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`accessible to the public interested in the art” as of its alleged publication date. And
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`while RFC 2401 nominally includes a date, nowhere in the document is there any
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`indication as to what the date means. (See Ex. 1008 at 1, Ex. 1013 at 1.) Like
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`here, in Square, Inc., the alleged publication date (September 30, 1996) also
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`appeared on the face of the cited reference (Vazvan). Square, Inc., CBM2014-
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`00156, Paper 22 at 6-7. But the Board held that it was Petitioner’s burden to offer
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`proof “in its Petition” of Vazvan’s publication date, which Petitioner did not, and
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`“it [was] not the Board’s task to prove that the date on the face of Vazvan is not the
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`Case No. IPR2015-00866
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`publication date.” Id.
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`Furthermore, the Petition’s clear deficiencies cannot be remedied by Dr.
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`Tamassia’s declaration. First and foremost, the Petition never cites to any of Dr.
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`Tamassia’s testimony regarding the publication date of RFC 2401. Nor can it be
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`expected or assumed that Dr. Tamassia’s declaration and all its arguments, which
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`cover multiple patents and number several hundred pages, are simply part of the
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`Petition. Such a “practice amounts to incorporation by reference—which is
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`impermissible under [the Board’s] rules.” See Apple Inc. v. Contentguard
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`Holdings, Inc., IPR2015-00450, Paper No. 9 at 10 (June 29, 2015), citing 37
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`C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one
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`document into another document.”). Even incorporating just those portions of Dr.
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`Tamassia’s declaration that discuss the alleged publication date of RFC 2401—
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`which would still be improper and without precedent given that the Petition never
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`cites to these paragraphs—would incorporate several pages into the Petition and
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`would serve to “circumvent the page limits imposed on petitions for inter partes
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`review.” Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 7–
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`10 (Aug. 29, 2014) (informative) (refusing to consider “arguments that are not
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`made in the Petition, but are instead incorporated by reference . . . .”).
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`Case No. IPR2015-00866
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`But even assuming Dr. Tamassia’s testimony could be (improperly) read
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`into the Petition, Petitioner still has not met its burden because it fails to establish
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`(1) the alleged publication date, and (2) that RFC 2401 would have been
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`sufficiently accessible to the public interested in the art on its alleged publication
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`date. First, Dr. Tamassia does not establish that RFC 2401 was actually published
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`in November 1998, as alleged by the Petition. In his declaration, Dr. Tamassia
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`refers to RFC 2026 in his discussion of how RFCs are “typically” released. (Ex.
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`1005 at ¶ 190.) RFC 2026, provided by the same “Network Working Group” as
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`RFC 2401 (compare Ex. 1036 at 1, with Ex. 1008 at 1), purports to “document[]
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`the process used by the Internet community for the standardization of protocols
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`and procedures” and to “define[] the stages in the standardization process, the
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`requirements for moving a document between stages and the types of documents
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`used during this process.” (See Ex. 1036 at 1.)1 Dr. Tamassia then makes an
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`1 The Petition does not cite to RFC 2026 or to any testimony citing to the
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`document. Therefore, it cannot properly be relied upon to establish RFC 2401 as a
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`printed publication. However, Patent Owner addresses the document to the extent
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`the Board considers statements by Petitioner’s expert regarding RFC 2026 not
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`cited in the Petition. As explained, these statements, and RFC 2026 itself, still fail
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`to establish that RFC 2401 qualifies as a printed publication within the meaning of
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`Section 311(b).
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`uncorroborated statement that “[t]he publication date of each RFC is . . . typically
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`Case No. IPR2015-00866
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`in the top right corner of the first page of the document.” (Ex. 1005 at ¶ 190.) But
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`Dr. Tamassia never discusses the basis for this statement and so his testimony
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`should be accorded no weight. See 37 C.F.R. § 42.65(a). Dr. Tamassia has not
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`been established as someone familiar with, let alone an expert in, the workings of
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`the Internet Engineering Task Force (IETF) – the body responsible for the RFCs.
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`Further, neither Dr. Tamassia nor the Petition establish or even allege that Dr.
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`Tamassia has personal knowledge that RFC 2401 was actually released on its
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`alleged publication date in the way he claims RFCs were typically released.
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`Hence, because Dr. Tamassia has not been shown to be an expert with respect to
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`IETF and has also not been shown to have personal knowledge of the facts, his
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`uncorroborated statements regarding the publication date of RFC 2401 should be
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`accorded no weight. Id.
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`Second, Dr. Tamassia’s declaration does not establish that RFC 2401 was
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`“sufficiently accessible to the public interested in the art” as of its alleged
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`publication date. Thus, even assuming the RFCs were released in the manner Dr.
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`Tamassia alleges (though Patent Owner submits that Petitioner has not provided
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`any evidence to establish that it was), Petitioner has still not established that RFC
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`2401 qualifies as a printed publication within the meaning of Section 311(b).
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`RFC 2026 generally states that “RFCs can be obtained from a number of
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`Internet hosts using anonymous FTP, gopher, World Wide Web, and other Internet
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`document-retrieval systems.” (Id. at 6.) But RFC 2026 does not explain how the
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`public interested in the art would become aware of the location of such Internet
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`document-retrieval systems. Indeed, Dr. Tamassia suggests that the intended
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`audience of RFC 2401 would have been limited to the “Network Working Group,”
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`stating that the nominal date that RFC documents are “published” merely “starts a
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`period for others to provide comments on the document” (in particular, what RFC
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`2026 refers to as “community review”). (See Ex. 1005 at ¶ 190; Ex. 1036 at 20.)
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`In the past, the Board has found that references similar to RFC 2401 are not
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`statutory prior art. For example, in Samsung Elecs. Co. v. Rembrandt Wireless
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`Techs., LP, IPR2014-00514, Paper No. 18 at 5, 7 (Sep. 9, 2014), the petitioner
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`relied on a “Draft Standard” of the Institute of Electrical and Electronics Engineers
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`(“IEEE”). The Board found that the petitioner had failed to establish the Draft
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`Standard qualified as a printed publication because the petitioner did not provide
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`evidence as to whether the Draft Standard was made available to persons outside of
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`the IEEE “Working Group” responsible for the Draft Standard and how members
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`of the public would have known about the Draft Standard. See id. at 7-8.
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`Similarly, in Elec. Frontier Found. v. Pers. Audio, LLC, IPR2014-00070, Paper
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`No. 21 at 22-24 (Apr. 18, 2014), the Board found that a reference was not a printed
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`publication where a “Petitioner fail[ed] to provide any information regarding [a
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`Case No. IPR2015-00866
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`reference] posting, the group [to which the reference was posted], who is in the
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`group, or the size of the group.” In both cases, the Board denied institution based
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`on these findings. See Samsung Elecs., IPR2014-00514, Paper No. 18 at 10
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`(“Because Petitioner has not met its burden in establishing that Draft Standard is a
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`‘printed publication’ and, thus, prior art, Petitioner has not shown a reasonable
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`likelihood of prevailing on the grounds asserted.”); Elec. Frontier Found.,
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`IPR2014-00070, Paper No. 21 at 26.
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`Petitioner has similarly failed to meet its burden to establish that RFC 2401
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`is a printed publication. For example, Petitioner has not provided any evidence as
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`to (1) whether RFC 2401 was made available to persons outside of the “Network
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`Working Group”; (2) how members of the public outside of the “Network Working
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`Group” would have known about RFC 2401; (3) who is in “Network Working
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`Group”; or (4) the size of the Network Working Group. Therefore, because the
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`Petition does not establish that RFC 2401 was a printed publication to qualify as
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`prior art, and because all of Petitioner’s proposed rejections rely on RFC 2401, the
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`Board should deny institution of the Petition.
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`B.
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`The Petition’s Obviousness Ground Is Redundant and Should Be
`Denied
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`Concurrent with this Petition, in which Petitioner challenges claims 1-11,
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`14-25, and 28 of the ’341 patent as obvious over Beser in view of RFC 2401,
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`Petitioner also filed a petition for inter partes review in IPR2015-00867 (“the ’867
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`Case No. IPR2015-00866
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`Petition”). The ’867 Petition challenges the same patent and the same claims,
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`asserting two grounds of rejection. The ’867 Petition’s first ground of rejection
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`simply substitutes Beser with Aventail, alleging that claims 1, 4, 5, 9-11, 14, 15,
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`18, 19, 23-25, and 28 would have been obvious over Aventail in view of RFC
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`2401. Its second ground of rejection alleges that claims 2, 3, 6-8, 16, 17, and 20-
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`22 would have been obvious over Aventail in view of RFCs 2401 and 2543. The
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`Petition fails to assert or explain why the proposed grounds in the Petition are not
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`redundant of the grounds in the ’867 Petition. Instead, the Petition contends,
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`without explanation, that each Petition presents “non-redundant grounds.” (Pet. at
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`2.) Given the Board’s jurisprudence regarding redundancy, Petitioner’s redundant
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`grounds should be rejected.
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`Redundant grounds place a significant burden on the Board and the patent
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`owner, and cause unnecessary delay that jeopardizes meeting the statutory deadline
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`for final written decisions. Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
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`CBM2012-00003, Paper No. 7 at 2 (Oct. 25, 2012). The consideration of
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`redundant grounds frustrates Congress’s intent that the Board “secure the just,
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`speedy, and inexpensive resolution of every proceeding,” in violation of 37 C.F.R.
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`§ 42.1(b).
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`Case No. IPR2015-00866
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`The Board explains that where multiple grounds of rejection are presented,
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`the “[d]ifferences between the claimed invention and the prior art are a critically
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`important underlying factual inquiry . . . .” Liberty Mut. Ins. Co., CBM2012-
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`00003, Paper No. 7 at 2-3. The redundancy inquiry does not focus on “whether the
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`applied prior art disclosures have differences, for it is rarely the case that the
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`disclosures of different prior art references, will be literally identical. EMC Corp.
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`v. Personal Web Techs., LLC, IPR2013-00087, Paper No. 25 at 3 (June 5, 2013).
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`Rather, the Board considers “whether the petitioner articulated a meaningful
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`distinction in terms of relatives strengths and weaknesses with respect to
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`application of the prior art disclosures to one or more claim limitations.” Id. at 3-4.
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`The Petitioner carries the burden of articulating that “meaningful distinction.”
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`ScentAir Techs., IPR2013-00180, Paper No. 18 at 3. Put simply, “[t]o avoid a
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`holding of redundancy, the Petition has to explain why one reference is better in
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`one respect but worse in another respect.” Toyota Motor Corp. v. Am. Vehicular
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`Sciences LLC, IPR2013-00421, Paper No. 15 at 29 (Jan. 13, 2014).
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`Petitioner’s burden of articulating a distinction between its redundant
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`grounds is not lessened or removed simply because those grounds may appear in
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`more than one petition. In fact, the policy considerations behind denying
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`redundant grounds are even more compelling when those grounds are presented
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`across multiple petitions. Multiple petitions necessitate multiple written decisions
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`and an analysis of a corresponding number of briefs, as well as the potential for
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`Case No. IPR2015-00866
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`differing panels of judges, multiple scheduling conferences, and multiple oral
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`arguments—all of which tax the Board’s resources and diminish its ability to
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`ensure the speedy resolution of each proceeding. Moreover the Board has
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`previously recognized grounds as being redundant across petitions and dismissed
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`the redundant grounds. See Apple Inc. v. VirnetX Inc., IPR2014-00483, Paper No.
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`11 at 6 (Sept. 15, 2014).
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`In Liberty Mutual, the Board identified two types of redundant rejections:
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`(1) “horizontally” redundant rejections and (2) “vertically” redundant rejections.
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`Liberty Mut. Ins. Co., CBM2012-00003, Paper No. 7 at 3. The Board explained
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`that horizontally
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`redundant
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`rejections apply “a plurality of prior art
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`references . . . not in combination to complement each other but as distinct and
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`separate alternatives.” Id. Vertical redundancy “exists when there is assertion of
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`an additional prior art reference to support another ground of unpatentability when
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`a base ground already has been asserted against the same claim without the
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`additional reference and the Petitioner has not explained what are the relative
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`strength and weakness of each ground.” Id. at 12.
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`Here, the Petition is horizontally redundant in view of the ’867 Petition. In
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`both petitions, Petitioner alleges that claims 1-11, 14-25, and 28 are rendered
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`obvious by either Beser or Aventail in view of RFC 2401. These grounds are
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`horizontally redundant and Petitioner fails to provide any explanation to the
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`Case No. IPR2015-00866
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`contrary.
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`In the instant Petition, Petitioner relies on RFC 2401, in conjunction with
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`Beser, for the claimed “virtual private network communication link.” (Pet. at 33-
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`48.) According to the Petition, one skilled in the art would have encrypted the
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`tunneling associations taught in Beser in light of RFC 2401. (Id. at 26-33.)
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`Similarly, in the ’867 Petition, Petitioner again relies on RFC 2401, this time in
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`conjunction with Aventail, for the claimed “virtual private network communication
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`link.” Attempting to address redundancy, Petitioner claims its grounds are “non-
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`redundant” because each petition “present[s] unique correlations of the challenged
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`’341 claims to the prior art.” (Pet. at 2.) But, as the Board has explained, a
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`redundancy analysis does not focus on whether the prior art references are
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`identical. EMC Corp., IPR2013-00087, Paper No. 25 at 3. And Petitioner does
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`not attempt to “articulate[] a meaningful distinction in terms of relative strengths
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`and weaknesses with respect to application of the prior art disclosures to one or
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`more claim limitations.” Id. at 3-4.2 Consequently, the Board should deny
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`Petitioner’s redundant grounds.
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`2 All emphasis is added except where otherwise noted.
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`Case No. IPR2015-00866
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`C. The Petition Fails to Show a Reasonable Likelihood Petitioner
`Will Prevail With Respect to Obviousness
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`Petitioner proposes that claims 1-11, 14-25, and 28 would be rendered
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`obvious under 35 U.S.C. § 103 based on Beser in view of RFC 2401. Obviousness
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`is a question of law based on underlying factual findings, including: (1) the scope
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`and content of the prior art; (2) the differences between the claims and the prior art;
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`(3) the level of ordinary skill in the art; and (4) objective indicia of
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`nonobviousness. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18
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`(1966). Each of these factors should be considered in an obviousness analysis. In
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`re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676
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`F.3d 1063, 1075, 1077, 1080 (Fed. Cir. 2012). In particular, “[i]t is not sufficient
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`to demonstrate that each of the components in a challenged claim is known in the
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`prior art.” Petroleum Geo-Services Inc., v. WesternGeco LLC, IPR2014-01476,
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`Paper No. 18 at 18 (Mar. 17, 2015) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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`398 (2007).) “Petitioner also must explain how a person of ordinary skill in the art
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`would combine the elements disclosed in the [claims], and why such a person
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`would be motivated to do so.” Id. (citing In re Chaganti, 554 F. App’x 917, 922
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`(Fed. Cir. 2014)).
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`Even when elements may be known in the art, “there [must be] an apparent
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`reason to combine the known elements in the fashion claimed by the patent at
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`issue,” and “this analysis should be made explicit.” KSR, 550 U.S. at 418.
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`“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
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`Case No. IPR20