Case No. IPR2015-00867
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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
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`v.
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`VIRNETX INC.
`Patent Owner
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`
`
`Case IPR2015-00867
`Patent 8,458,341
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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
`
`
`
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`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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`
`
`

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`
`
`I.
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`II.
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`Case No. IPR2015-00867
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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
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`A.
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`B.
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`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 ............................................................................................ 10
`
`The Petition Fails to Show a Reasonable Likelihood Petitioner
`Will Prevail With Respect to Any Claim ............................................ 14
`
`1.
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`2.
`
`3.
`
`4.
`
`5.
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`The Cited Portions of Aventail Do Not Disclose the
`Claimed “Determination” ......................................................... 15
`
`The Cited Portions of Aventail Do Not Disclose
`Receiving “the Requested IP Address of the Second
`Network Device” ....................................................................... 22
`
`The Cited Portions of Aventail Do Not Disclose the
`Claimed Features of At Least Claims 14 and 28 ...................... 24
`
`The Petition Does Not Apply the Proposed Claim
`Construction for “Provisioning Information” To Aventail ....... 26
`
`The Petition Fails to Comply with 35 U.S.C. §312(a)(3)
`and 37 C.F.R. § 42.104(b)(4) .................................................... 28
`
`III. The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected ......................................................................................................... 29
`
`A. Overview of the ’341 Patent ................................................................ 30
`
`B.
`
`C.
`
`D.
`
`Level of Ordinary Skill in the Art ....................................................... 31
`
`“Interception of the Request” (Claims 1, 11, 15, and 25) ................... 33
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`“Provisioning Information” (Claims 1 and 15) ................................... 37
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`i
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`Case No. IPR2015-00867
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`E.
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`F.
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`G.
`
`“Secure Communications Service” (Claims 1, 2, 4, 6, 11, 15,
`16, 18, 20, and 25) ............................................................................... 39
`
`“Indication” (Claims 1 and 15) ........................................................... 41
`
`“Virtual Private Network Communication Link” (Claims 1, 3,
`15, and 17) ........................................................................................... 42
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`A “VPN Communication Link” Does Not Exist Outside
`of a Virtual Private Network ..................................................... 43
`
`“Authentication” and “Address Hopping” Alone Do Not
`Result in a “Virtual Private Network Communication
`Link” ......................................................................................... 44
`
`A “Virtual Private Network Communication Link” Must
`Be Direct ................................................................................... 47
`
`A “Virtual Private Network Communication Link”
`Requires a Network ................................................................... 50
`
`A “Virtual Private Network Communication Link”
`Requires Encryption .................................................................. 52
`
`H.
`
`I.
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`“Domain Name” (Claims 1 and 15) .................................................... 53
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`“Modulation” (Claims 7, 8, 21, and 22) .............................................. 54
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`IV. Conclusion ..................................................................................................... 55
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`ii
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`Case No. IPR2015-00867
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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. Evolutionary Intelligence, LLC,
`IPR2014-00079, Paper No. 8 (Apr. 25, 2014) .................................................... 14
`
`Apple Inc. v. VirnetX, Inc.,
`IPR2014-00481, Paper No. 1 at 6 (Mar. 7, 2014) ........................................ 44, 53
`
`Apple Inc. v. VirnetX Inc.,
`IPR2014-00237, Paper No. 15 (May 14, 2014) .................................................. 33
`
`Apple Inc. v. VirnetX Inc.,
`IPR2014-00483, Paper No. 11 (Sept. 15, 2014) ................................................. 12
`
`Apple Inc. v. VirnetX Inc.,
`IPR2014-00811, Paper No. 1 (March 2, 2015) ................................................... 20
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (Aug. 29, 2014) .......................................................... 5
`
`Elec. Frontier Found. v. Pers. Audio, LLC,
`IPR2014-00070, Paper No. 21 (Apr. 18, 2014) .................................................... 9
`
`EMC Corp. v. Personal Web Techs., LLC,
`IPR2013-00087, Paper No. 25 (June 5, 2013) .................................................... 11
`
`Eon–Net LP v. Flagstar Bancorp.,
`653 F.3d 1314 (Fed. Cir. 2011) .......................................................................... 52
`
`Garmin Int’l inc. v. Cuozzo Speed Tech, LLC,
`IPR2012-00001, Paper No. 15 (Jan. 9, 2013) ............................................... 30, 49
`iii
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`

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`Google Inc. et al. v. EveryMD.com LLC,
`IPR2014-00347, Paper No. 9 (May 22, 2014) .................................................... 14
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`Case No. IPR2015-00867
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`Helmsderfer v. Bobrick Washroom Equip., Inc.,
`527 F.3d 1379 (Fed. Cir. 2008) .......................................................................... 24
`
`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027, Paper No. 26 (June 11, 2013) .................................................... 2
`
`In re Klopfenstein,
`380 F.3d 1345 (Fed. Cir. 2004) ............................................................................ 3
`
`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) ...................................... 11, 12, 13
`
`Microsoft Corp. v. Proxyconn, Inc.,
`No. 2014-1542, 2015 U.S. App. LEXIS 10081 (Fed. Cir. Jun. 16,
`2015) ............................................................................................................. 23, 30
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093, Paper No. 28 (Apr. 29, 2013) ............................................ 30, 49
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 29
`
`Rambus Inc. v. Rea,
`527 Fed. Appx. 902 (Fed. Cir. 2013) .................................................................. 29
`
`Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP,
`IPR2014-00514, Paper No. 18 (Sep. 9, 2014) ...................................................... 9
`
`ScentAir Techs., Inc. v. Prolitic, Inc.,
`IPR2013-00180, Paper No. 18 (Aug. 26, 2013) ................................................... 2
`
`Square, Inc. v. Unwired Planet, LLC,
`CBM2014-00156, Paper 22 (Feb. 26, 2015) .................................................... 4, 5
`
`Tempur Sealy Int’l, Inc. v. Select Comfort Corp.,
`IPR2014-01419, Paper No. 9 (Mar. 27, 2015) ................................................... 14
`
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`iv
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`Toyota Motor Corp. v. Am. Vehicular Sciences LLC,
`IPR2013-00421, Paper No. 15 (Jan. 13, 2014) ................................................... 12
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`Case No. IPR2015-00867
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`VirnetX, Inc. v. Cisco Sys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014) .......................................................................... 50
`
`Xilinx, Inc. v. Intellectual Ventures I LLC,
`IPR2013-00112, Paper No. 14 (June 27, 2013) .................................................. 49
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) ............................................................................ 29
`
`ZTE Corp. & ZTE (USA) Inc. v. ContentGuard Holdings Inc.,
`IPR2013-00134, Paper No. 12 (June 19, 2013) .................................................. 49
`
`Statutes
`
`35 U.S.C. § 311(b) ......................................................................................... 1, 2, 7, 8
`
`35 U.S.C. § 312(a)(3) ................................................................................. 1, 2, 27, 28
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`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314(a) ............................................................................................passim
`
`Other Authorities
`
`37 C.F.R. § 42.1(b) .................................................................................................. 11
`
`37 C.F.R. § 42.6(a)(3) ................................................................................................ 5
`
`37 C.F.R. § 42.65(a) ............................................................................................... 7, 8
`
`37 C.F.R. § 42.100(b) .............................................................................................. 29
`
`37 C.F.R. § 42.104(b) ................................................................................................ 1
`
`37 C.F.R. § 42.104(b)(4) ........................................................................ 14, 15, 27, 28
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
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`
`v
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`
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`I.
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`Introduction
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`Case No. IPR2015-00867
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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
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`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. The Petition also fails to identify where and what in the prior
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`art discloses each claimed feature, violating the particularity requirements of
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`35 U.S.C. § 312(a)(3) and 37 C.F.R. § 42.104(b). And finally, Petitioner proposes
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`a number of incorrect claim constructions upon which it bases its unpatentability
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`grounds. Each of these 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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`Case No. IPR2015-00867
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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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`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
`
`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.
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`A. The Petition Improperly Relies on Material That It Fails to
`Establish Is Statutory Prior Art
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`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 and RFC 2543, which are not patents and on
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`2
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`which Petitioner relies on for its proposed grounds of unpatentability, were
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`Case No. IPR2015-00867
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`“sufficiently accessible to the public interested in the art.” In re Klopfenstein, 380
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`F.3d 1345, 1348 (Fed. Cir. 2004); see also Actavis, Inc. v. Research Corp. Techs.,
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`Inc., IPR2014-01126, Paper No. 22 at 9-13 (Jan. 9, 2015) (finding that “Petitioner
`
`has not satisfied its burden to prove that [a] thesis is a printed publication under §
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`102(b)”); L-3 Comm. Holdings, Inc. v. Power Survey, LLC, IPR2014-00832, Paper
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`No. 9 at 12 (Nov. 14, 2014) (“The party seeking to introduce the reference ‘should
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`produce sufficient proof of its dissemination or that it has otherwise been available
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`and accessible to persons concerned with the art to which the document relates and
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`thus most likely to avail themselves of its contents.’”); A.R.M., Inc. v. Cottingham
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`Agencies Ltd., 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 26 (citing Ex. 1008 at 1).) Petitioner similarly alleges
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`that RFC 2543 (Ex. 1013) “was published in March 1999.” (Pet. at 28 (citing Ex.
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`1013 at 1).) Petitioner’s thin allegations are, however, insufficient to overcome
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`Petitioner’s burden of proving that RFCs 2401 and 2543 are printed publications.
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`First, Petitioner does not explain in the Petition how November 1998 and March
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`1999 are the publication dates for the RFCs. Instead, to support its contentions,
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`Petitioner improperly attempts to incorporate by reference arguments from a
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`declaration by its expert, Dr. Tamassia. Second, even if Dr. Tamassia’s arguments
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`were improperly considered as part of the petition, they fail to establish that RFCs
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`Case No. IPR2015-00867
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`2401 and 2543 were “sufficiently accessible to the public interested in the art” as
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`of the alleged publication dates.
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`As indicated above, the Petition nakedly asserts that RFC 2401 was
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`published on November 1998 and that RFC 2543 was published on March 1999.
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`But the Petition provides no explanation why RFCs 2401 and 2453 were
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`“sufficiently accessible to the public interested in the art” as of their alleged
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`publication dates. This deficiency is fatal to the Petition’s claims regarding the
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`status of RFCs 2401 and 2453 as printed publications. 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
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`Petitioner “must prove in its Petition” the references’ publication date and “that,
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`as of that date, [the reference] was publicly accessible.”) (emphasis added);
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`compare Square, Inc., CBM2014-00156, Paper 2 at 39 (July 11, 2014), with Pet. at
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`26, 28.
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`The nominal recitation of the alleged publication dates on the first page of
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`the RFCs, (see Ex. 1008 at 1, Ex. 1013 at 1), cannot and does not relieve Petitioner
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`of its burden of explaining in the Petition why RFCs 2401 and 2453 were
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`“sufficiently accessible to the public interested in the art” as of the alleged
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`publication dates. And while both RFCs nominally include a date, nowhere in the
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`documents is there any indication as to what the date means. (See Ex. 1008 at 1,
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`Case No. IPR2015-00867
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`Ex. 1013 at 1.) Like here, in Square, Inc., the alleged publication date (September
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`30, 1996) also appeared on the face of the cited reference (Vazvan). Square, Inc.,
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`CBM2014-00156, Paper 22 at 6-7. But the Board held that it was Petitioner’s
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`burden to offer proof “in its Petition” of Vazvan’s publication date, which
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`Petitioner did not, and “it [was] not the Board’s task to prove that the date on the
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`face of Vazvan is not the publication date.” Id.
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`Furthermore, the Petition’s clear deficiencies cannot be remedied by a cite to
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`Dr. Tamassia’s declaration, (Pet. at 26, 28, citing Ex. 1005 at ¶¶ 186-97), because
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`such a “practice amounts to incorporation by reference—which is impermissible
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`under [the Board’s] rules.” See Apple Inc. v. Contentguard Holdings, Inc.,
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`IPR2015-00450, Paper No. 9 at 10 (June 29, 2015), citing 37 C.F.R. § 42.6(a)(3)
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`(“Arguments must not be incorporated by reference from one document into
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`another document.”). Indeed, Petitioner cannot incorporate into the petition the
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`several pages of text referenced by ¶¶ 186-97 of Dr. Tamassia’s declaration
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`because that would serve to “circumvent the page limits imposed on petitions for
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`inter partes review.” Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454,
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`Paper 12 at 7–10 (Aug. 29, 2014) (informative) (refusing to consider “arguments
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`that are not made in the Petition, but are instead incorporated by reference . . . .”);
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`see also id. at 9 (“This practice of citing the Declaration to support conclusory
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`statements that are not otherwise supported in the Petition also amounts to
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`Case No. IPR2015-00867
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`incorporation by reference.”).
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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 dates, and (2) that RFC 2401 and RFC 2543 would have
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`been sufficiently accessible to the public interested in the art on their alleged
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`publication dates. First, Dr. Tamassia does not establish that RFC 2401 and RFC
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`2453 were actually published in November 1998 and March 1999, as alleged by
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`the Petition. In his declaration, Dr. Tamassia refers to RFC 2026 in his discussion
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`of how RFCs are “typically” released. (Ex. 1005 at ¶ 190.) RFC 2026, provided
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`by the same “Network Working Group” as RFCs 2401 and 2543 (compare Ex.
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`1036 at 1, with Ex. 1008 at 1 and Ex. 1013 at 1), purports to “document[] the
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`process used by the Internet community for the standardization of protocols and
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`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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`Case No. IPR2015-00867
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`uncorroborated statement that “[t]he publication date of each RFC is . . . typically
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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). Moreover, Dr. Tamassia
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`has not been established as someone familiar with, let alone an expert in, the
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`workings of the Internet Engineering Task Force (IETF) – the body responsible for
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`the RFCs. Further, neither Dr. Tamassia nor the Petition establish or even allege
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`that Dr. Tamassia has personal knowledge that RFCs 2401 and 2543 were actually
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`released on their alleged publication dates in the way he claims RFCs were
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`typically released. Hence, because Dr. Tamassia has not been shown to be an
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`expert with respect to IETF and has also not been shown to have personal
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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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`knowledge of the facts, his uncorroborated statements regarding the publication
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`dates of RFCs 2401 and 2543 should be accorded no weight. Id.
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`Second, Dr. Tamassia’s declaration does not establish that the RFCs were
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`“sufficiently accessible to the public interested in the art” as of their alleged
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`publication dates. 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 RFCs
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`2401 and 2543 qualify as printed publications within the meaning of Section
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`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 RFCs 2401 and 2543 would have been limited to the “Network
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`Working Group,” stating that the nominal date that RFC documents are
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`“published” merely “starts a period for others to provide comments on the
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`document” (in particular, what RFC 2026 refers to as “community review”). (See
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`Ex. 1005 at ¶ 190; Ex. 1036 at 20.)
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`Case No. IPR2015-00867
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`In the past, the Board has found that references similar to RFCs 2401 and
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`2543 are not statutory prior art. For example, in Samsung Elecs. Co. v. Rembrandt
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`Wireless Techs., LP, IPR2014-00514, Paper No. 18 at 5, 7 (Sep. 9, 2014), the
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`petitioner relied on a “Draft Standard” of the Institute of Electrical and Electronics
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`Engineers (“IEEE”). The Board found that the petitioner had failed to establish the
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`Draft Standard qualified as a printed publication because the petitioner did not
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`provide evidence as to whether the Draft Standard was made available to persons
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`outside of the IEEE “Working Group” responsible for the Draft Standard and how
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`members 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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`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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`Case No. IPR2015-00867
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`Petitioner has similarly failed to meet its burden to establish that RFCs 2401
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`and 2543 are printed publications. For example, Petitioner has not provided any
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`evidence as to (1) whether RFCs 2401 and 2543 were made available to persons
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`outside of the “Network Working Group”; (2) how members of the public outside
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`of the “Network Working Group” would have known about RFCs 2401 and 2543;
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`(3) who is in “Network Working Group”; or (4) the size of the Network Working
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`Group. Therefore, because the Petition does not establish that RFCs 2401 and
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`2543 were printed publications to qualify as prior art, and because all of
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`Petitioner’s proposed rejections rely on either RFCs 2401 and/or 2543, the Board
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`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, 4, 5,
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`9-11, 14, 15, 18, 19, 23-25 and 28 of the ’341 patent as obvious over Aventail in
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`view of RFC 2401, and claims 2, 3, 6-8, 16, 17, and 20-22 as obvious over
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`Aventail, RFC 2401, and RFC 2543, Petitioner also filed a petition for inter partes
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`review in IPR2015-00866 (“the ’866 Petition”). The ’866 Petition challenges the
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`same patent and the same claims. The ’812 Petition’s grounds of rejection simply
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`substitute Aventail with Beser, alleging that claims 1-11, 14-25 and 28 are obvious
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`over Beser in view of RFC 2401. The Petition fails to assert or explain why the
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`proposed grounds in the Petition are not redundant of the grounds in the ’866
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`10
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`Petition. Instead, the Petition contends, without explanation, that each Petition
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`Case No. IPR2015-00867
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`presents “non-redundant grounds.” (Pet. at 2.) Given the Board’s jurisprudence
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`regarding redundancy, Petitioner’s redundant 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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`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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`11
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`The Petitioner carries the burden of articulating that “meaningful distinction.”
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`Case No. IPR2015-00867
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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
`
`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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`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).
`
`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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`12
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`that horizontally redundant rejections apply “a plurality of prior art references . . .
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`Case No. IPR2015-00867
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`not in combination to complement each other but as distinct and separate
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`alternatives.” Id. Vertical redundancy “exists when there is assertion of an
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`additional prior art reference to support another ground of unpatentability when a
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`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 ’866 Petition. In
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`both petitions, Petitioner alleges that at least claims 1, 4, 5, 9-11, 14, 15, 18, 19,
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`23-25 and 28 are rendered obvious by either Beser or Aventail in view of RFC
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`2401. These grounds are horizontally redundant and Petitioner fails to provide any
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`explanation to the contrary.
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`In the instant Petition, Petitioner relies on RFC 2401, in conjunction with
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`Aventail, for the claimed “virtual private network communication link.” (Pet. at
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`29-51.) According to the Petition, a VPN communication link with “end-to-end”
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`encryption would have been obvious based on Aventail in light of RFC 2401. (Id.
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`at 29-31, 46-51.) Similarly, in the ’866 Petition, Petitioner again relies on RFC
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`2401, this time in conjunction with Beser, for the claimed “virtual private network
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`communication link.” Attempting to address redundancy, Petitioner claims its
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`grounds are “non-redundant” because each petition “present[s] unique correlations
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`of the challenged ’341 claims to the prior art.” (Pet. at 2.) But, as the Board has
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`Case No. IPR2015-00867
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`explained, a redundancy analysis does not focus on whether the prior art references
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`are 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
`
`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 (emphasis added). Consequently, the Board
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`should deny Petitioner’s redundant grounds.
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`C. The Petition Fails to Show a Reasonable Likelihood Petitioner
`Will Prevail With Respect to Any Claim
`The Board may not authorize an inter partes review unless the information
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`presented in the petition “shows that there is a reasonable likelihood that the
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`petitioner would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314(a). A petition must be denied if it fails to explain
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`“[h]ow the construed claim is unpatentable,” and “specify where each element of
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`the claim is found in the prior art patents or printed publications relied upon.” 37
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`C.F.R. § 42.104(b)(4). See, e.g., Google Inc. et al. v. EveryMD.com LLC,
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`IPR2014-00347, Paper No. 9 at 18-20 (May 22, 2014) (rejecting petition for
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`insufficient explanation); Apple Inc. v. Evolutionary Intelligence, LLC, IPR2014-
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`00079, Paper No. 8 at 17-19 (Apr. 25, 2014) (rejecting petition for including
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`“vague” explanation of the prior art); Tempur Sealy Int’l, Inc. v. Select Comfort
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`Corp., IPR2014-01419, Paper