Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper #
`Entered: 105
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD, APPPLE, INC.,
`and BLACK SWAMP IP, LLC,
`Petitioners,
`
`v.
`
`VIRNETX, INC.,
`Patent Owner.
`____________
`
`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`____________
`
`Record of Oral Hearing
`Held: January 24, 2020
`____________
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`and KARL D. EASTHOM and JASON W. MELVIN, Administrative Patent
`Judges.
`
`
`
`
`
`
`
`
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`JEFFREY P. KUSHAN, ESQUIRE
`SAMUEL A. DILLON, ESQUIRE
`Sidley Austin, LLP
`1501 K Street, N.W., Suite 600
`Washington, D.C. 20005
`
`
`JAMES BAILEY, ESQUIRE
`Law Office of James T. Bailey
`504 West 136th Street, Apartment 1B
`New York, New York 10031
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`JOSEPH E. PALYS, ESQUIRE
`DANIEL ZEILBERGER, ESQUIRE
`NAVEEN MODI, ESQUIRE
`Paul Hastings, LLP
`875 15th Street, N.W.
`Washington, D.C. 20005
`
`
`
`The above-entitled matter came on for hearing Friday, January 24,
`2020, at 10:00 a.m., at the U.S. Patent and Trademark Office, 600 Dulany
`Street, Alexandria, Virginia.
`
`
`
`
`
`
`
`
`
`2
`
`
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`P R O C E E D I N G S
`THE USHER: All rise.
`
`JUDGE TIERNEY: You may be seated.
`
`All right. Welcome everyone. This is a hearing for IPR 2015-01046
`
`and -01047.
`
`If we could have Petitioner introduce themselves today?
`
`MR. KUSHAN: Good morning, Yours Honors. Jeff Kushan from
`Sidley on behalf of Apple and with me is Sam Dillon from our firm.
`
`MR. BAILEY: Jim Bailey. Law Office of James T. Bailey on behalf
`of the Petitioner, Mangrove.
`
`JUDGE TIERNEY: Welcome to the hearing.
`
`Patent Owner, could you introduce yourself and your colleagues?
`
`MR. PALYS: Good morning, Your Honors. Joseph Palys for
`VirnetX. I’m joined with my colleagues Dan Zeilberger and Naveen Modi.
`
`JUDGE TIERNEY: Welcome to the hearing.
`
`MR. PALYS: Thank you.
`
`JUDGE TIERNEY: So it’s my understanding that each side will have
`60 minutes today for total presentation time. Any objections from either
`side?
`MR. PALYS: None from Patent Owner.
`
`MR. KUSHAN: No, Your Honor.
`
`JUDGE TIERNEY: All right. Thank you. We’ll begin today with
`
`Petitioner presenting their case and then we’ll go to Patent Owner followed
`by rebuttal and surrebuttal. Each party may reserve an amount of time. No
`more than half their time may be reserved for rebuttal.
`
`Are there any issues we need to take up before we begin today? I’ll
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`2
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`start with Patent Owner. Do you have any issues you wish to address?
`
`MR. PALYS: No, Your Honor.
`
`JUDGE TIERNEY: All right. Petitioner, any issues?
`
`MR. KUSHAN: No, Your Honor.
`
`JUDGE TIERNEY: Then I say we begin.
`
`And Petitioner, if you’ll let me know about how much time would you
`like to --
`
`MR. KUSHAN: If we could reserve 40 minutes for the opening and
`the balance for rebuttal. Also, my colleague would like to handout some
`copies of demonstratives.
`
`JUDGE TIERNEY: Thank you. We’d appreciate it.
`
`MR. KUSHAN: Good morning, Your Honors. Jeff Kushan again. I
`have been designated by the Petitioner to present the views of the Petitioners
`on the patentability issues. I’m also going to make a brief observation on the
`IPR privity issue in my opening, but Mr. Bailey will be addressing any
`issues or questions that you have regarding that topic and I’ll also address in
`rebuttal any issues that VirnetX has raised on the RPI issue.
`
`One other housekeeping point in our mandatory notices we updated.
`We just wanted to bring to your attention there was a decision this week
`from the federal circuit affirming a PTO decision. The only thing I want to
`note about that, that was VirnetX v. Cisco Systems, Decision 2019-1043.
`And just to point out that in that proceeding it was a Rule 36. There was no
`decision, but if you look in the briefing you can see that the question of
`whether Kiuchi anticipates or renders obvious the claims of that patent
`which involved a VPN element was addressed in that briefing and I don’t
`know what you can draw from it, but I would like to just bring that to your
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`3
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`attention. As it should, the federal circuit has affirmed, at least in one
`instance, a patentability/unpatentability finding on the PTO over Kiuchi.
`
`Now, in our petitions, Petitioners presented challenges based on two
`mappings of the claims to the Kiuchi reference and the reason we did that
`was that the claims were open-ended and they defined the terms of the
`elements of the claims in a general way, so that causes those claims to cover
`various aspects of the Kiuchi system and that’s why we have a presentation
`that talks about the two mappings that we’ve employed.
`
`What I’d like to do is start with the user agent mapping. This is where
`the user agent in Kiuchi is the client. The other mapping I’ll take up second
`and that’s where the client proxy of the Kiuchi system is the client. There’s
`no dispute that the Kiuchi user agent is a client, so the disputes in that case
`focus on other issues. I’m going to take up the ’151 Patent first. The main
`issue in dispute in the ’151 Patent under this mapping is whether Kiuchi
`discloses the DNS proxy element of the claims.
`
`Now, it does. If you would put up Slide 45? This is the ’151 claims
`that are at issue. There’s additional claims, but one of the things we pointed
`out in the petition is that the client side proxy works in concert with the C-
`HTTP, the name server, of the Kiuchi system to perform this determining
`step that’s required by the claims. It receives a DNS request containing a
`URL, it asks the C-HTTP name server if it can communicate with the host in
`the URL. Based on the information it receives, the client side proxy takes
`different actions and we think that definitely shows it’s performing the
`determining step as it’s laid out in the claims.
`
`Slide 48, please? And that’s entirely consistent, that distributed way
`of making that determination is entirely consistent with their patent. Their
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`4
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`patent says that it can implement the DNS related functions, combine them
`in a single device or distribute them across multiple devices that are
`operating independently in the same way Kiuchi’s client side proxy works
`with the C-HTTP name server to perform that determining step to determine
`if the DNS that’s been made by the Kiuchi user agent corresponds to a
`secure server.
`
`Slide 49? In their opening remand brief, VirnetX contends there was
`no law to support reading “determining” with this ordinary meaning as
`covering a scenario like this where two things are interacting to make a
`determination and we provided in our reply brief that a couple cases,
`including the ePlus v. Lawson case, which shows in its ordinary meaning the
`Federal Circuit has found “determining” to cover scenarios like what you see
`going on in Kiuchi. So we believe under the record that we’ve set up that
`the DNS proxy element is met by the Kiuchi client side proxy working with
`the C-HTTP name server.
`
`JUDGE EASTHOM: But under that mapping, how do you get the
`encryption back to the client that’s the user agent in Kiuchi?
`
`MR. KUSHAN: So that actually engages the next question I want to
`get into and that is does it require, do the claims require, end-to-end
`encryption and first thing I want to point is that for one of the claims, Claim
`13, it does not require encryption at all. If you can look at Slide 52?
`
`JUDGE EASTHOM: Just Claims 1 and 7 that say the channel
`between the client and server?
`
`MR. KUSHAN: Correct, and the -- in the -- and you can see the
`difference here is one claim is talking about that encryption when Claim 13
`is referring to a secure channel. So this whole question of whether end-to-
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`5
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`end encryption is required by their claims certainly can’t concern Claim 13
`and I’d like to talk about that first, and we believe Kiuchi clearly shows use
`of a secure channel.
`
`If you can look at Claim 42 or Slide 42, please? This is the mapping
`we’ve been discussing and what’s clear in the Kiuchi system is that there is a
`secured channel. Those dotted lines are the firewalls that allocate the two
`private networks and then the space in between is the public internet. And in
`that setting, you have encryption used to protect those communications in
`Kiuchi system. So in the scheme that Kiuchi has, it encrypts that data over
`the public segments of the network path and it uses firewalls to protect the
`private networks.
`
`Slide 53? In the related litigation between VirnetX and Apple and
`Cisco, there’s a decision which kind of captures some of VirnetX’s position
`on what is required for security and encrypted channels. And one thing
`that’s made clear in this testimony from VirnetX that was credited by the
`Federal Circuit is that a network design which is virtually distinguishable
`from Kuichi is sufficient where because it protects the data that’s going over
`the public network using encryption and it protects the other ends, the prior
`networks, with firewalls.
`
`Now, in their surreply, VirnetX is contending that there’s no proof
`that there’s physical security and those private networks are secure, but I
`think that’s accurately portrayed in the record. Kiuchi itself makes clear that
`it uses the firewalls to protect those private networks. It uses -- there’s
`passages in our petition which discuss the aspects of Kiuchi that identify
`those secure networks within the private networks and that’s, for example, at
`page 17 of our petition.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`6
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`
`Kiuchi itself, in Section 4.2, describes those private networks as well
`and it uses, again, the similar concept that there’s a firewall that’s designed
`to protect those private networks from any attack. So in our view, there’s no
`question that the -- there was a secure channel from the user agent to the
`origin server in Kiuchi’s system because you have the combination that the
`court has found to be secure, a set of private networks protected by firewalls
`and public segments used, they’re protected by or the data is protected with
`encryption.
`
`JUDGE TIERNEY: Could you just walk me through? Are we on
`mapping one or mapping two right now?
`
`MR. KUSHAN: This is the mapping with the client side, with the
`user agent as the client, so that would be the first mapping.
`
`JUDGE TIERNEY: Okay. So it’s encrypted from the user agent to
`the client side proxy, right?
`
`MR. KUSHAN: And if you want to put up Slide 42 again? It’s this
`mapping where we’ve got the client as the user agent. The DNS proxy
`module is the --
`
`JUDGE EASTHOM: Actually, it’s not encrypted from there. It’s just
`secured from the client.
`
`MR. KUSHAN: So for the user agent to the border of the private
`network, it’s not encrypted. That’s just protected by the firewall and then in
`between the firewalls or the proxies you have encryption.
`
`JUDGE EASTHOM: So your argument is “between” just means not
`all the way?
`
`MR. KUSHAN: Correct, and that’s consistent with the position that
`VirnetX has taken elsewhere as they’ve argued that that phrase “between,”
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`7
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`which is a claim construction issue, now should be read as going from the
`user agent all the way to the origin server, but in the related litigation they
`took the position it was only sufficient -- all that was required to provide
`encryption in that setting was for that public network segment of it. So
`“between” is within as opposed to the entire span.
`
`JUDGE EASTHOM: Did the court address that in that case, that --
`
`MR. KUSHAN: So the court in the district court case found that there
`was a requirement to go end-to-end. Now, the difference is you’re under the
`broadest reasonable interpretation for this patent. And the reason we think
`you should use that broadest reasonable interpretation is because they
`advanced what they portrayed as a reasonable interpretation between A and
`B as not requiring point-to-point. And so if you have two interpretations of
`a term that are both reasonable under BRI, you should employ the broader
`construction and that’s what we have here.
`
`JUDGE MELVIN: What about the expiration though?
`
`MR. KUSHAN: The expiration is relevant to the ’135 Patent --
`
`JUDGE MELVIN: Okay.
`
`MR. KUSHAN: -- which is not the ’151. So the -- so there are
`different expiration dates. The ’151 is under -- still under BRI.
`
`JUDGE MELVIN: I mean; does that mean we should apply different
`standards?
`
`MR. KUSHAN: Well, I think in this one claim term which is
`implicating only the ’151 Patent, you could do that. I think for the other
`ones, we’re comfortable. I don’t believe there’s really a dispute between the
`parties that you can use either standard, you’re going to get the same
`construction.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`8
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`
`JUDGE MELVIN: If we were to apply the same standard and were to
`adopt Phillips, is Patent Owner’s construction correct then?
`
`MR. KUSHAN: Well, if you adopt Patent Owner’s construction, I
`think it’s, at the end of the day, inconsequential because we have another
`ground as to why the claims are unpatentable under that construction and
`that’s because this modification to add end-to-end encryption would have
`been obvious, and I can just touch on that very briefly.
`
`JUDGE MELVIN: And that applies to both of your mappings for
`Kiuchi? It’s not like the other obviousness ground where you’re relying on
`the modification of the DNS separation?
`
`MR. KUSHAN: Correct. So in this setting, it’s really -- only one of
`the mappings is implicating this issue because if we read it under the broader
`construction, there’s anticipation because it’s never apart from the end-to-
`end encryption. And also keep in mind that Claim 13, regardless of what
`you address with the encryption channels, is not implicating this fight. So
`that’s just a separate issue.
`
`So just -- I want to very briefly -- for the obviousness ground for this,
`the question is would it have been obvious to extend to provide end-to-end
`encryption of Kiuchi’s system and the answer is yes, and this is based on the
`combination with the publication called Rescorla that addresses something
`called the S-HTTP protocol, secure HTTP protocol. S-HTTP is a security
`mechanism that’s designed for use with HTTP clients and servers like those
`that are in Kiuchi.
`
`Rescorla identifies several benefits. We’ve addressed this in our
`briefs and I think it’s part of the dispute that a skilled person would have
`been able to readily use S-HTTP in Kiuchi’s system because it’s a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`9
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`replacement for an HTTP. Now, Slide 59 please? And Dr. Guerin provided
`testimony to support, you know, all of those points. Now, VirnetX has two
`responses. One it says that Kiuchi discourages the use of end-to-end
`encryption and second it argues that Rescorla is not a printed publication.
`Neither of those have any merit. Can you go to Slide 58?
`
`
`What Kiuchi says is that it’s C-HTTP protocol is designed to coexist
`with secured HTTP proposals. This is particularly probative here because
`when you look and see what they’re speaking of with S, secure, HTTP
`protocols, they point you back to the S-HTTP protocol. If you look at pages
`10 to 11, this is the citation to 12 which is discussed on pages 10 to 11 of
`Kiuchi and that takes you to -- this points the skilled person to a website
`where all of these documents relating to the development of S-HTTP
`protocol can be found and that’s also important because that refutes the
`second proposition they made that Rescorla is not publicly available.
`
`So here is Kiuchi pointing the skilled person to a place where you can
`obtain the documents that would include Rescorla. 61, please? So we think
`that’s sufficient, just that reference in Kiuchi would be sufficient to
`demonstrate public availability, but we also provided additional evidence
`with our petition that demonstrates public availability of Rescorla.
`
`JUDGE TIERNEY: All right. So I understand we need to interpret
`the word “between” if we go with map one. If we go with mapping two
`though where the -- let me sure I get my term -- client side proxy is after the
`user. Do we need to interpret “between” under that?
`
`MR. KUSHAN: I don’t think it’s implicated in that mapping because
`in that setting you’re looking at the client side proxy and speaking to the
`server side proxy and there’s no question that that is all encrypted from
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`10
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`point-to-point.
`
`JUDGE TIERNEY: Now, is -- okay. Explain why the client side
`proxy though is the client computer.
`
`MR. KUSHAN: I’m sorry? Could you repeat --
`
`JUDGE TIERNEY: Can you explain why the client side proxy would
`be the client computer?
`
`MR. KUSHAN: I’m happy to do that. I have --
`
`JUDGE TIERNEY: Actually, wait a second. I was going to go to the
`--
`MR. KUSHAN: We think --
`
`JUDGE TIERNEY: -- ’135 and the --
`
`MR. KUSHAN: So the client side proxy issue and whether that’s the
`
`client is -- if it’s okay with you, I’d like to take that up in a minute because
`that’s kind of a separate issue. I just wanted to try to keep things clean with
`this mapping, get through all of it and then move to the second mapping.
`
`JUDGE TIERNEY: We’ll take up the ’135 a little bit later.
`
`MR. KUSHAN: Yes, Your Honor. Yeah.
`
`JUDGE MELVIN: I’m curious. Your remand brief, does it discuss
`Kiuchi plus Rescorla?
`
`MR. KUSHAN: In the brief we filed -- at the opening remand brief,
`we did not get into much of the discussion. We did point it and we have it in
`our grounds and our petition, so we think it’s fairly raised.
`
`JUDGE EASTHOM: Okay. And then --
`
`MR. KUSHAN: And, in fact, the remand decision from the Federal
`Circuit directs you to look at that, if that answers your question.
`
`JUDGE EASTHOM: And then there’s -- it’s a similar question. So
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`11
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`Patent Owner raised Rescorla, the public availability issue, in the original
`trial; is that --
`
`MR. KUSHAN: I think they must have. I can’t recall. I think you
`can just look at the evidence that’s in the record and see that it’s publicly
`available. So I don’t want to argue that they’ve waived it.
`
`JUDGE EASTHOM: The other -- another side issue that I see raised
`here, I think your friend said that a lot of these issues, some of these issues
`might be new and I’m just wondering how do we sort that out because if we
`didn’t really discuss those in the original trial, are these remand briefs in the
`form -- almost in the nature of a reply or I don’t -- I don’t know how we
`treat those.
`
`MR. KUSHAN: So I think what we’ve tried to do in our briefing is
`address the topics that have been engaged in the original proceeding and
`which have been sent back from the remand to determine. So when we look
`at the remand decision, they vacated your final written decision. They
`walked through issues that the Federal Circuit had with certain aspects of
`that decision such as whether to construe “client.” There’s issues relating to
`how certain aspects of the systems work.
`
`One thing is very clear from that decision is that they’re calling for
`you to make a couple critical determinations such as whether Kiuchi uses
`direct communications. They are, I think, pretty clear calling through their
`construed “client” and when you look at that kind of a mandate from the
`Federal Circuit, it’s giving you, I think, a pretty broad mandate to go back
`and review the record and the issues that have been engaged in the original
`proceeding.
`
`JUDGE EASTHOM: Figure out the obviousness question.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`12
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`
`MR. KUSHAN: Yes, yes. So if it’s okay, I’d like to just turn to our
`first mapping as it pertains to the ’135 Patent and then we can go to the
`second mapping. If you can go to Slide 9? So Slide 9, the primary dispute
`on this mapping is whether in this system, in this mapping, the Kiuchi client
`computer communicates directly with the secured server and we believe the
`short answer to that is yes, it does.
`
`And Slide 15? Kiuchi explains that once a connection established, is
`established, between the user agent and the origin server, the user agent will
`generate a HTTP get request containing a URL. The HTTP get request is
`then sent to the origin server. Slide 14? This is an illustration of what’s
`going on. In response to receiving the HTTP get request, the origin server
`sends the user agent the resource that’s specified in the URL in the get
`request from the user agent.
`
`So in Kiuchi’s example, the sample, that HTML file in this URL, is
`sent from the origin server back to the user agent. Now, importantly, the
`origin server receives the same get message, get request, that was generated
`by the user agent. So this is the user agent sending it directly -- that message
`directly to the origin server and the origin servers respond.
`
`JUDGE MELVIN: I mean, is that the distinction of directness?
`
`MR. KUSHAN: Well, I think that is the -- a critical distinction of
`directness is whether the communication is going to directly address the
`target. And when you look -- and if you look in the briefing, I can see where
`there might be some confusion because we see VirnetX in particular
`portraying their disclaimer that is the root of this exclusion and definition of
`direct communications as excluding, allegedly, things that their own patent
`recognizes are not excluding such as passing through intermediary devices
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`13
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`and performing various operations.
`
`So if you look at Slide 23, I think one thing that isn’t in dispute is that
`the URL in the get request that is made by the user agent directly addresses
`the origin server and this is testimony from Dr. Monrose. It’s just checking
`off the boxes that that is the case.
`
`JUDGE TIERNEY: All right. So what we’re trying to do here then is
`understand, direct communication in the term of a prosecution history
`disclaimer?
`
`MR. KUSHAN: Correct.
`
`JUDGE TIERNEY: How broad or narrow do we read the disclaimer?
`I understand that they were disclaiming the Aventail teachings?
`
`MR. KUSHAN: Correct.
`
`JUDGE TIERNEY: So how broadly do we read it? Do we say they
`only excluded Aventail or do we say it’s a very broad disclaimer such that --
`I mean, direct communication could be just linking two computers via
`cabling.
`
`MR. KUSHAN: Right.
`
`JUDGE TIERNEY: Right.
`
`MR. KUSHAN: So why don’t we put up Slide 22, and we can -- I
`think the most constructive thing is to look at that disclaimer that they made
`in the prosecution of the ’135 Patent over the Aventail, and I think what you
`can do is take away three from this. Let me first answer your question. I
`don’t think we’re contending that the only thing they excluded was the
`Aventail system. I think you have to look at the attributes of what they cited
`Aventail has in its system that caused it to not be within the scope of the
`claim and that’s what I want to talk about.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`14
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`
`First, what you can see in this slide is that they have first identified
`connections that are created at the socket layer of the network architecture.
`So that’s one important distinction. The communications in Kiuchi are at
`the application layer of the network architecture.
`
`JUDGE MELVIN: Well, those are on top of the socket layer
`connection, right?
`
`MR. KUSHAN: Right. And one thing that’s also very important
`about this socket layer point they made is that its -- they basically are telling
`you that -- or told the Patent Office that because those are socket layer
`communications, those communications are incapable of addressing the
`ultimate target computer. So that’s an important variable in what they
`portrayed as the disclaimer. This feature of the connection that is made is
`very much in the middle of that disclaimer they made and that’s incapability
`of addressing the target computer. That becomes evident from that socket
`layer type of character at the connection.
`
`JUDGE EASTHOM: Could you -- can you explain that a little
`further? I don’t understand how you even talk to another server if you don’t
`tell the system who you’re going to talk to. I don’t see how it’s not in the
`SOCKS server. I just -- I guess I don’t understand the --
`
`MR. KUSHAN: So --
`
`JUDGE EASTHOM: -- engineering behind that.
`
`MR. KUSHAN: -- again, I think from a disclaimer perspective, we
`would look mostly to what VirnetX told the Patent Office --
`
`JUDGE EASTHOM: Right.
`
`MR. KUSHAN: -- and that’s what we’re working from here. If you
`can go back to Slide 21, please? This is the rest of the disclaimer discussion
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`15
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`and this is basically them telling the Patent Office that the only way that the
`Aventail client communicates is through these socket layer connections to
`the SOCKS server. So that’s a significant difference relative to Kiuchi
`which shows that the user agent is talking in a different way. It’s sending
`messages directly to the origin server.
`
`So based on what they portray as Aventail’s system, you can see that
`distinction that there is a direct communication going from the user agent to
`the origin server.
`
`JUDGE MELVIN: From the perspective of the user agent?
`
`MR. KUSHAN: From the perspective of the user agent and also
`from the origin server because, again, the origin server is receiving the same
`message that the user agent generated. It’s certainly been sent through a
`process where it gets wrapped in another message and encrypted and then
`unpacked, unwrapped and decrypted. But you look at what is sent from the
`user agent and received by the origin server and it’s the same URL and
`(indiscernible).
`
`So when we look at this disclaimer and we then look at how the --
`
`JUDGE EASTHOM: So how come a socket layer isn’t a direct
`addressability?
`
`MR. KUSHAN: Again, I have to go to what they said.
`
`JUDGE EASTHOM: They said, right.
`
`MR. KUSHAN: But this is what they told the Patent Office --
`
`JUDGE EASTHOM: Okay.
`
`MR. KUSHAN: -- and so it seems to us that the essential point they
`made is that whatever way the Aventail client is going to communicate in
`the system, it cannot -- it only talks to the SOCKS server. It has no ability to
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`16
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`talk to the target --
`
`JUDGE EASTHOM: Okay.
`
`JUDGE MELVIN: Regardless if messages actually make it to the
`target in Aventail.
`
`MR. KUSHAN: Right. And that’s -- again, with disclaimers you
`look to what the patent applicant or Patent Owner has represented as
`excluded from the claims and that somewhat cabins this inquiry.
`
`JUDGE TIERNEY: So when we -- again, this goes to disclaimer. Do
`we read it broadly or do we read it narrowly? You’re trying to tell me we
`have to read it narrowly, just claim only what the literal statements are?
`
`MR. KUSHAN: I think we would -- I mean, I think we take the
`position that we have distinctions between the nature of the Kiuchi system
`relative to the nature of the Aventail system that let you conclude that they
`are different and not within the scope of the disclaimer. So I don’t think you
`need to make an absolute finding about where that boundary of the
`disclaimer is.
`
`The critical question, and I think this is what the Federal Circuit has
`asked you to do, is to determine if the communications in Kiuchi are direct
`or not and we -- and I think we are trying to do that, help you do that, by
`showing you that they are direct and pointing to a distinction that I think is
`material relative to their representations to the Patent Office which is Kiuchi
`does communicate directly with the origin server, the Aventail system
`cannot directly communicate with the target.
`
`One other thing I do want to talk about and this, I think, is important
`to recognize. There are -- part of the confusion and where that boundary is,
`is when you look at network systems that take traffic from a starting point
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`
`
`17
`
`

`

`IPR2015-01046 (Patent 6,502,135 B1)
`IPR2015-01047 (Patent 7,490,151 B2)
`
`and move it through intermediary devices and get to an end-point and there’s
`two variables that I want to talk about. One is does the presence of firewalls
`and other similar types of intermediary devices prevent direct
`communication? The Federal Circuit, I think, has been clear to say, “No,
`that doesn’t -- that alone is not going to prevent direct communications.”
`
`JUDGE MELVIN: The Federal Circuit was clearer in other
`proceedings.
`
`MR. KUSHAN: Yes.
`
`JUDGE TIERNEY: Right.
`
`MR. KUSHAN: And any -- and I think if you look at Slide 19, they
`say routers, firewalls, similar servers do not impede direct communication.
`So you have to look at something beyond that to determine if there’s direct
`communications.
`
`JUDGE EASTHOM: But the same case, they also said the jury heard
`evidence that Kiuchi does not provide direct communication, right?
`
`MR. KUSHAN: Correct, and I think that does not preclude you from
`finding that it does in this proceeding. They were looking at a jury verdict
`and whether it could be supported by substantial evidence. Here, you have
`additional evidence. You have testimony from the experts that are -- was
`not in front of that court. You have also additional information from how
`different pieces of the system work.
`
`So the second thing I just want to flag is if you look at -- can you put
`up Slide 12, please? When you’re looking at direct addressability, I think
`this is one of the bits of evidence which I think is probative. This is
`testimon