Trials@uspto.gov
`571-272-7822
`
`
`Paper 112
`Entered: July 14, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD., and
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`IPR2015-010461
`Patent 6,502,135 B1
`____________
`
`Before MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge,
`KARL D. EASTHOM, JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining All Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318
`
`
`
`
`
`
`1 Apple Inc., which filed a petition in IPR2016-00062, has been joined as a
`Petitioner in this proceeding.
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`
`INTRODUCTION
`I.
`A. BACKGROUND AND SUMMARY
`The Mangrove Partners Master Fund, Ltd., and Apple Inc.
`(collectively, “Petitioner”) requested inter partes review of claims 1, 3, 4, 7,
`8, 10, and 12 of U.S. Patent No. 6,503,135 B1 (Ex. 1001, “the ’135 patent”).
`Paper 1, (“Pet.”).2 We issued a Decision instituting inter partes review.
`Paper 11 (“Inst. Dec.”).
`After Institution, VirnetX Inc. (“Patent Owner”) filed a Patent
`Owner’s Response (Paper 49 (redacted version), “PO Resp.”; Paper 44 (non-
`redacted version)), to which Petitioner replied (Paper 51 (redacted version),
`“Pet. Reply”; Paper 50 (non-redacted version); and Paper 53, “Pet. Separate
`Reply”). Oral argument was conducted on June 30, 2016. Our Final Written
`Decision was issued September 9, 2016. Paper 71 (“Original Decision”).
`On appeal, the Federal Circuit vacated our Original Decision and
`remanded the case for further proceedings. VirnetX Inc. v. Mangrove
`Partners Master Fund, Ltd., 778 F. App’x 897 (Fed. Cir. 2019). After
`conferring with the parties, we permitted Patent Owner to file a Motion for
`Additional Discovery (Paper 81), to which Petitioner filed an Opposition
`(Paper 82) and Patent Owner filed a Reply (Paper 87). We granted in part
`Patent Owner’s Motion. Paper 88. Patent Owner requested rehearing of our
`Decision on its Motion for Additional Discovery (Paper 92), to which
`Petitioner opposed (Paper 93) and Patent Owner replied (Paper 94).
`We permitted the parties to brief the issues for consideration on
`remand from the Federal Circuit. Petitioner filed a principal brief (Paper 95,
`
`
`2 We consider the Petition filed by The Mangrove Partners Master Fund,
`Ltd., not the similar petition filed by the joined party.
`
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`“Pet. Remand Br.”), Patent Owner filed an Opposition (Paper 96, “PO
`Remand Br.”), Petitioner filed a Reply (Paper 97, “Pet. Remand Reply”),
`and Patent Owner filed a Sur-Reply (Paper 98, “PO Remand Sur-Reply”).
`Oral argument was conducted on January 24, 2020, and a transcript appears
`in the record. Paper 105 (“Tr.”).
`This is a Final Written Decision on Remand as to the patentability of
`the challenged claims. For the reasons discussed below, we determine that
`Petitioner has shown by a preponderance of the evidence that the challenged
`claims are unpatentable.
`
`B. RELATED MATTERS
`The ’135 patent is at issue in the following civil actions: (i) Civ. Act.
`No. 6:13-cv-00211-LED (E.D. Tex.), filed February 26, 2013; (ii) Civ. Act.
`No. 6:12-cv-00855-LED (E.D. Tex.), filed November 6, 2012; and (iii) Civ.
`Act. No. 6:10-cv-00417-LED (E.D. Tex.), filed August 11, 2010. Pet. 1;
`Paper 8, 11–12.
`The ’135 patent is the subject of Reexamination Control
`Nos. 95/001,679 and 95/001,682. Pet. 2; Paper 8, 2–3.
`Petitioner additionally describes a related matter as follows:
`
`On January 21, 2020, the Federal Circuit issued its opinion in
`VirnetX Inc. v. Cisco Systems, Inc., No. 2019-1043 (Fed. Cir.
`Jan. 21, 2020), affirming, under Fed. Cir. R. 36, the Board’s
`decisions in Cisco Systems, Inc. v. VirnetX Inc., Control
`No. 95/001,746, Appeal Nos. 2015-007843, 2017-010852,
`2017-010852, each involving related U.S. Patent No. 6,839,759
`and, inter alia, the Kiuchi reference at issue in this proceeding.
`Paper 102, 1.
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`
`Additionally, Patent Owner identifies a number of PTO proceedings
`that involve U.S. Patent No. 7,490,151 (“the ’151 patent”). Paper 8, 3–4. Of
`particular significance here, the ’151 patent is at issue in IPR2015-01047,
`which has been treated as largely a companion proceeding to the present.
`See, e.g., VirnetX, 778 F. App’x at 904 (describing the ’135 patent and the
`’151 patent collectively; noting the patents “share a substantially identical
`specification”).
`Patent Owner identifies multiple other proceedings involving “patents
`stemming from the same applications that led to the ’135 patent.” Paper 8,
`3–10.
`
`C. THE ’135 PATENT
`The ’135 patent discloses a system and method for communicating
`over the Internet and the automatic creation of a virtual private network
`(VPN) in response to a domain-name server look-up function. Ex. 1001,
`2:66–3:2, 37:19–21. The ’135 patent describes “a protocol referred to as the
`Tunneled Agile Routing Protocol (TARP), [which] uses a unique two-layer
`encryption format and special TARP routers.” Id. at 2:66–3:2.
`
`ILLUSTRATIVE CLAIMS
`D.
`Claim 1 of the ’135 patent is illustrative of the claimed subject matter
`and is reproduced below:
`1. A method of transparently creating a virtual private network
`(VPN) between a client computer and a target computer,
`comprising the steps of:
`(1) generating from the client computer a Domain Name
`Service (DNS) request that requests an IP address
`corresponding to a domain name associated with the
`target computer;
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`(2) determining whether the DNS request transmitted in
`step (1) is requesting access to a secure web site; and
`(3) in response to determining that the DNS request in step
`(2) is requesting access to a secure target web site,
`automatically initiating the VPN between the client
`computer and the target computer.
`Ex. 1001, 47:20–32.
`
`E. PRIOR ART AND ASSERTED GROUNDS
`Petitioner asserts unpatentability on the following grounds:
`Claim(s) Challenged 35 U.S.C. § Reference(s)
`1, 3, 4, 7, 8, 10, 12
`102
`Kiuchi3
`
`8
`
`103
`
`Kiuchi, RFC 10344
`
`Pet. 4.
`
`F. CAFC REMAND
`On appeal, the Federal Circuit held that our prior decision erred by
`failing to construe “client computer” and reading it on Kiuchi’s client-side
`proxy without adequate analysis. VirnetX, 778 F. App’x at 908–09. It further
`held that reading “client computer” on Kiuchi’s user agent did not deprive
`VirnetX of adequate notice or opportunity to respond under the APA. Id.
`at 909.
`Considering the construction for “VPN between the client and target
`computers,” the Federal Circuit held that “[t]he statements VirnetX made
`
`
`3 Takahiro Kiuchi and Shigekoto Kaihara, “C-HTTP – The Development of
`a Secure, Closed HTTP-based Network on the Internet,” published by
`IEEE in the Proceedings of SNDSS 1996 (Ex. 1002).
`4 Mockapetris, P., RFC 1034, “Domain Names–Concepts and Facilities,”
`Nov. 1997 (Ex. 1005).
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`during reexamination constitute disclaimer.” VirnetX, 778 F. App’x at 910.
`The Federal Circuit determined that “a ‘VPN between the client computer
`and the target computer’ requires direct communication between the client
`and target computers” because VirnetX distinguished its claims over “a
`system in which a client computer communicates with an intermediate
`server via a singular, point-to-point connection.” Id.; see id. at 909–910
`(describing statements made to distinguish a prior art reference called
`“Aventail”). In light of that new construction, the Court remanded the case
`for us to determine whether Kiuchi satisfies the VPN limitation. Id.
`
`II. ANALYSIS
`A. CLAIM CONSTRUCTION
`The ’135 patent expired October 29, 2019, and we therefore construe
`its claims according to the standard used by district courts, as expressed in
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). PO
`Remand Br. 2–3; see In re CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1342 (Fed.
`Cir. 2016).
`The Federal Circuit instructed us as to the correct construction for a
`“VPN between the client computer and the target computer.” VirnetX,
`778 F. App’x at 909–10. Additionally, as to the ’151 patent, it held that,
`“[t]o the extent the Board intended to rely exclusively on Kiuchi’s client-
`side proxy for the claimed ‘client,’” it was necessary to construe the
`meaning of “client.” Id. at 907–08.
`
`1. “virtual private network (VPN)”
`The Federal Circuit held that the claim language “a virtual private
`network (VPN) between a client computer and a target computer” “requires
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`direct communication between the client and target computers” because,
`during reexamination, VirnetX disclaimed scope that would read on “a
`system in which a client computer communicates with an intermediate
`server via a singular, point-to-point connection.” 778 F. App’x at 910.
`The parties continue to dispute the impact of the Federal Circuit’s
`claim construction. Petitioner contends that, during the concurrent litigation,
`Patent Owner’s expert “testified that direct communication refers to direct
`addressability of the target computer.” Pet. Remand Br. 10 (emphasis
`omitted) (citing Ex. 1044, 50:25–51:5). Patent Owner takes the view that,
`regardless of how one understands “direct communication,” the claims
`cannot encompass “a ‘system in which a client computer communicates with
`an intermediate server via a singular, point-to-point connection,’ wherein
`‘[t]hat intermediate server then relays the data to a target computer on the
`same private network on which the server resides.” PO Remand Br. 12
`(quoting VirnetX, 778 F. App’x at 910).
`At bottom, the parties dispute whether Kiuchi describes direct
`communication that would fall within the claims’ scope as properly
`construed, and we address that issue below.
`
`2. “client computer”
`As to the proper construction of “client computer,” Petitioner submits
`that its “first anticipation mapping does not implicate this issue—there, the
`‘user agent’ is the ‘client computer.’” Pet. Remand Br. 6. Patent Owner does
`not dispute that assertion. PO Remand Br. 15–21. The construction does,
`however, impact Petitioner’s second anticipation mapping and we therefore
`address the dispute.
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`
`Petitioner submits that a “client computer” should be construed as a
`“computer from which a data request to a server is generated.” Pet. Remand
`Br. 6–9. Patent Owner, on the other hand, submits that the claimed client
`computer must refer to a “user’s computer.” PO Remand Br. 3–12.
`Petitioner contends that “client computer” refers to the “conventional
`client component of a client/server architecture.” Pet. Remand Br. 7 (citing
`Ex. 1003 ¶ 19; Ex. 1014, 5 (defining “client” as “[a]n application program
`that establishes connections for the purpose of sending requests.”)).
`According to Petitioner, that usage is consistent with the Specification’s
`specific use of “user’s computer” and description, for example, that “[a]
`user’s computer 2601 includes a conventional client (e.g., a web browser)
`2605.” Pet. Remand Br. 8 (quoting Ex. 1001, 38:14–15; citing Ex. 1001,
`37:30–32; 39:17–20, 39:22–29, 44:40–45). Petitioner reasons that because
`the ’135 patent uses the term “user’s computer” when desired, it does not
`indicate that the term is synonymous with “client computer.” Id. at 9.
`Finally, Petitioner argues that the Specification describes embodiments
`where a VPN is initiated by client software that runs on a computer not
`described as a user’s computer, showing that a client computer refers simply
`to the computer from which a data request to a server is generated. Id. (citing
`Ex. 1001, 31:57–64, 36:26–28, 40:27–30).
`Patent Owner focuses initially on the claim language reciting
`“initiating the VPN between the client computer and the target computer.”
`PO Remand Br. 3. In Patent Owner’s view, that language reflects the
`Specification’s description that the invention provides secure
`communication between a user’s computer running a web browser and a
`secure target site. Id. at 4 (citing Ex. 1001, 1:15–31, 4:59–5:12, 38:13–33).
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`In that way, Patent Owner contrasts its proposed construction with
`Petitioner’s, which Patent Owner contends would permit a server to act as
`the “client computer” and therefore contort the claim in an unnatural way.
`Id. at 8. Regarding the Specification’s description of a user’s computer
`including a conventional client application (Ex. 1001, 38:14–15), Patent
`Owner asserts it supports Patent Owner’s construction for “client computer”
`because it shows that the relevant client applications are those on user-
`operated computers, not just any software that communicates with a server.
`PO Remand Br. 8–9. Finally, Patent Owner addresses Petitioner’s contention
`that the Specification describes VPN connections involving a client
`computer that is not operated by a user. Id.at 10–11. In Patent Owner’s view,
`each of the Specification portions identified by Petitioner either does involve
`a user-operated computer or relates to embodiments outside the scope of the
`challenged claims. Id.
`The proper construction for “client computer” presents a close issue.
`Although we agree that the plain words seemingly refer to a computer that
`acts as a client in a client–server relationship, the Specification demonstrates
`that the claims are not so broad.
`The preamble recites “transparently creating a virtual private network
`(VPN) between a client computer and a target computer.”5 The Specification
`describes “automatic creation of a virtual private network (VPN) in response
`to a domain-name server look-up function” under a heading that states “Use
`
`
`5 Although the preamble does not necessarily limit the claim, here, the term
`“virtual private network” in the preamble provides antecedent basis for that
`term later in the claim. See Catalina Marketing Intern. v. Coolsavings.com,
`289 F. 3d 801, 808 (Fed. Cir. 2002). Moreover, the parties do not assert
`that the preamble here limits the claim.
`
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`of a DNS Proxy to Transparently Create Virtual Private Networks.”
`Ex. 1001, 37:17–21. The embodiment described in that section includes
`determining the need for a secure connection based on a DNS request from
`the user’s computer. Id. at 37:63–38:2; accord id. at 38:23–25 (“According
`to one embodiment, DNS proxy 2610 intercepts all DNS lookup functions
`from client 2605 and determines whether access to a secure site has been
`requested.”). The Specification explains that Figure 26 depicts the same
`embodiment and confirms that, when created, the VPN extends from the
`user’s computer with client software to the desired target site. Id. at 38:13–
`65. Although we are mindful that a single embodiment in the Specification
`should not be used to limit the claims, the close fit between this embodiment
`and the claims at issue counsels close consideration. Moreover, the
`Specification does not appear to discuss operations using DNS requests
`outside of the embodiment associated with Figure 26. Cf. id. at 32:27–35
`(describing improvements added through a continuation-in-part application
`as including “a DNS proxy server that transparently creates a virtual private
`network in response to a domain name inquiry”).
`If we were to construe the claimed “client computer” as Petitioner
`seeks, it would permit a claim scope that exceeds the Specification’s
`description. The parties essentially assert two ordinary meanings exist––one
`related to the user, the other related to the client–server relationship––but the
`Specification only describes the client computer vis-à-vis the user. So if we
`were to construe the claimed “client computer” as Petitioner seeks, it would
`read a meaning into the claim that the Specification does not describe.
`Though Petitioner’s proposed construction accurately expresses that the
`described client software generates a request for data from a server, the
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`construction is incomplete because it does not identify where the client
`computer fits within the overall VPN claimed. Patent Owner’s construction,
`on the other hand, is consistent with the Specification’s description that the
`VPN extends from a user’s computer to a desired target site.6
`Accordingly, we adopt Patent Owner’s construction for “client
`computer” as “a user’s computer.”
`
`B. ANTICIPATION
`Kiuchi discloses systems and methods for facilitating “secure HTTP
`communication mechanisms within a closed group of institutions on the
`Internet, where each member is protected by its own firewall.” Ex. 1002, 64
`(Abstract). It terms its approach C-HTTP, indicating “a closed HTTP
`(Hypertext Transfer Protocol)-based network (C-HTTP).” Id.
`C-HTTP allows a conventional user agent (such as web browser
`software running on a user’s computer) to request a resource identified in a
`URL. Id. at 65 (§ 2.3). A client-side proxy intercepts all such resource
`requests made by a user agent. Id. (“A client-side proxy behaves as an
`HTTP/1.0 compatible proxy, and it should be specified as a proxy server for
`external (outside the firewall) access in each user agent within the
`
`
`6 Petitioner points to a progeny of the ’135 patent, US 9,386,000, reciting
`claims with a “client device” further restricted “wherein the client device is
`a user device.” See Pet. Remand Reply 3–4. Petitioner reasons that “client”
`cannot restrict a device (like the computer claimed here) to a user device
`because then the further restriction in the ’000 patent would be
`superfluous. Id. Under the circumstances here with two ordinary meanings
`at issue, we view the claim language of the ’000 patent as only marginally
`relevant to the construction of the challenged claims, and potentially
`superfluous language does not persuade us that our construction discussed
`above is erroneous.
`
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`firewall.”). The “client-side proxy asks the C-HTTP name server whether it
`can communicate with the host specified in a given URL.” Id. “If the
`connection is permitted, the C-HTTP name server sends the IP address and
`public key of the server-side proxy” to the client-side proxy. Id. Once the
`client-side proxy receives that information, it “sends a request for connection
`to the server-side proxy.” Id. After verifying the client-side proxy’s
`information and access permission, the server-side proxy sends connection
`information to the client-side proxy, which in turn checks the connection
`information and establishes a secure connection. Id. at 65–66 (§ 2.3). In that
`connection, the client-side proxy encrypts requests from the user agent and
`forwards them to the server-side proxy, which in turn forwards them to “an
`origin server inside the firewall.” Id. at 66 (§ 2.3). Responses from the origin
`server are returned to the user agent, through the server-side proxy and
`client-side proxy, in turn. Id.
`Petitioner argues the Petition proposes two fundamental mappings of
`the claim language to Kiuchi’s disclosures. Pet. Remand Br. 11–13.
`
`1. Kiuchi anticipates claim 1 under Petitioner’s first mapping
`In Petitioner’s first mapping, Kiuchi’s user agent running on a
`computer acts as the claimed “client computer” to generate a DNS request
`using a domain name associated with an origin server, causing creation of a
`VPN between the user agent and the origin server that passes through the
`client-side proxy and server-side proxy. Id. at 11–12 (citing Pet. 26–27;
`Reply 8–11), 13–24. Petitioner illustrates this mapping using the following
`annotated version of a diagram appearing in the declaration of Dr. Guerin:
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`Pet. Remand Br. 12 (annotating Ex. 1003 ¶ 24).
`a. Kiuchi discloses “direct” communication
`Patent Owner argues that Petitioner’s first mapping does not satisfy
`the claim language because Kiuchi does not disclose a direct connection
`between the user agent and origin server. PO Remand Br. 15–21. According
`to Patent Owner, Kiuchi discloses three separate links, one between each
`pair of devices in the chain from the user agent to the origin server depicted
`above. Id. at 15. That argument, however, conflates link with connection.
`The two are not the same. The disclaimer recognized by the Federal Circuit
`relates to “a system in which a client computer communicates with an
`intermediate server via a singular, point-to-point connection” wherein “[t]hat
`intermediate server then relays the data to a target computer on the same
`private network on which the server resides.” VirnetX, 778 F. App’x at 910.
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`Interpreting the disclaimed scope as Patent Owner urges would
`contrast with the ’135 patent’s disclosure of multiple links between two
`TARP terminals as consistent with the claimed invention. See Ex. 1001,
`Fig. 2.7 Thus, simply using multiple links does not push a system outside the
`scope of the claims. Rather, we must consider the nature of the overall
`connection. Before the Office, Patent Owner described the claimed VPN as
`one “where data can be addressed to one or more different computers across
`the network, regardless of the location of the computer.” Ex. 2036, 5–6.
`Thus, the ability to address data to a particular computer is a key aspect of
`the claimed VPN. Id.; Ex. 1044, 50:25–51:5 (Patent Owner’s district-court
`expert stating that “direct communication refers to direct addressability”).8
`Kiuchi’s system is consistent with Patent Owner’s description of the
`claimed VPN. Kiuchi’s user agent generates a request that includes a
`resource address (in the form of a URL). See Ex. 1002 § 2.3 (“A client-side
`proxy behaves as an HTTP/1.0 compatible proxy, and it should be specified
`as a proxy server for external (outside the firewall) access in each user agent
`within the firewall.”); id. (“A client-side proxy asks the C-HTTP name
`server whether it can communicate with the host specified in a given
`URL.”). Indeed, Patent Owner’s expert, Dr. Monrose, testified that Kiuchi’s
`
`
`7 Patent Owner takes the position that the claimed VPN should be consistent
`with the described TARP routing. See, e.g., Tr. 37:24, 39:2–14, 40:5–15.
`8 With the same claim construction but a different factual record, the Federal
`Circuit held that substantial evidence supported a jury’s finding of no
`anticipation by Kiuchi. VirnetX, Inc. v. Cisco Systems, Inc., 767 F.3d 1308,
`1323–24 (Fed. Cir. 2014). That does not compel the same finding in this
`proceeding, where we reach a determination based on a preponderance of
`the evidence. Our unique factual record—including expert testimony—
`justifies our finding that Kiuchi does anticipate the claims.
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`URL provided by the user agent is an address of the resource on an origin
`server. Ex. 1036, 240:21–241:14; see also Tr. 38:13–16 (stating that the
`URL is “the identifier to the resource that you want that sits on the origin
`server”). The client-side proxy intercepts the request and, using the C-HTTP
`name server, maps the request to the particular server-side proxy that can
`access the requested resource. Ex. 1002, 65 (§ 2.3) (“If the connection is
`permitted, the C-HTTP name server sends the IP address and public key of
`the server-side proxy . . . .”). The client-side proxy establishes a connection
`with the server-side proxy, which retrieves the resource from the appropriate
`origin server and returns it to the client-side proxy, which in turn returns the
`resource to the user agent. Id. at 66 (“Once the connection is established, a
`client-side proxy forwards HTTP/1.0 requests from the user agent in
`encrypted form using C-HTTP format. . . . Using HTTP/1.0, a server-side
`proxy communicates with an origin server inside the firewall. . . . The
`resulting HTTP/1.0 response is sent to the user agent.”).
`Thus, Kiuchi’s system, unlike the disclaimed scope, allows a client
`(the user agent) to connect to a remote server transparently and access
`resources with only the single URL identifying the remote resource.
`Kiuchi’s system operates like the ’135 patent’s TARP, which allows the
`system to route a packet as required to reach the destination address
`provided by the client computer. Ex. 1001, 3:5–31. Kiuchi’s user agent does
`not communicate with the client-side proxy using a singular, point-to-point
`connection because the user agent addresses the desired endpoint and the
`VPN provides the required message routing for the user agent to receive a
`response from the desired endpoint.
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`Patent Owner asserts that Kiuchi discloses “a client computer
`communicating with an intermediary computer and a point-to-point . . .
`connection,” like the disclaimed system. Tr. 36:4–7. But Patent Owner
`provides no explanation of why Kiuchi’s connection is a point-to-point
`connection. Such a characterization belies Kiuchi’s disclosures, which state
`that, “[f]rom the view of the user agent or client-side proxy, all resources
`appear to be located in a server side proxy on the firewall” and further that
`“the server-side proxy forwards requests to the origin server.” Ex. 1002, 66
`(§ 2.3). Further, Patent Owner contends that Kiuchi’s connection stops at the
`proxies because “the communication is only configured to reach . . . the
`intermediary server.” Tr. 63:18–20. Similarly, Patent Owner contends that
`Kiuchi’s URL is “not to get the communication to the origin server.” Id.
`at 63:22–26. That argument is not consistent with Patent Owner’s
`acknowledgement that the URL is “the identifier to the resource that you
`want that sits on the origin server.” Tr. 38:13–16; accord Ex. 1036, 240:21–
`241:14. We find Kiuchi does not disclose that “a client computer
`communicates with an intermediate server via a singular, point-to-point
`connection” as was disclaimed.
`Patent Owner argues that Kiuchi’s URL, while identifying the desired
`resource on the origin server, is not an address because “it’s not the ultimate,
`the IP address that you're actually going to use to get to the target
`computer.” Tr. 38:13–25. But Patent Owner does not contend that the claims
`require such an IP address. Id. at 38:26–39:2. Rather, Patent Owner contends
`that Kiuchi does not disclose direct communication because its user agent
`does not provide the server-side proxy’s address. Tr. 39:6–12 (“[T]he client-
`side proxy doesn’t send that [the server-side proxy’s IP address] back to the
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`client and then the client sets up a direct communication with the server-side
`proxy or anything like that . . . .”). The claims, however, do not require that
`the client computer must provide the address of the target computer. Rather,
`they require only that the client computer generates a request for “an IP
`address corresponding to a domain name associated with the target
`computer.” Nor does Patent Owner’s distinction explain why Kiuchi’s
`communication is meaningfully less direct than that described in the ’135
`patent.
`Patent Owner argues that Kiuchi discloses modifying messages
`between an origin server and user agent and thus does not disclose direct
`communication. PO Resp. 31. But, as Petitioner points out (Reply 16;
`Remand Br. 16), Kiuchi teaches modifying content only for HTML objects,
`not for image and sound objects. Ex. 1002, 66–67; Ex. 1036, 229:22–230:12
`(Patent Owner’s declarant agreeing). Thus, Kiuchi’s disclosures of at least
`those types of resources maintain the requirement for direct communication.
`Indeed, although Kiuchi’s requests and responses are wrapped and encrypted
`over the proxy-to-proxy link, the user agent and origin server communicate
`using standard HTTP requests and responses. Ex. 1002, 66 (§ 2.3); see Pet.
`Remand Br. 21–22; Tr. 13:7–18; see also Ex. 1001, 13:33–39 (describing
`that an encrypted TARP packet is wrapped with an IP header for
`transmission over an intermediate link). Despite repeated questioning on
`Patent Owner’s distinction from Kiuchi, Patent Owner could not articulate a
`clear line between direct versus indirect communication. See Tr. 45:12–
`47:17, 49:13–50:14, 52:14–54:4. Patent Owner argues that Kiuchi does not
`use the URL sent by the user agent to get to the desired endpoint (see id. at
`42:14–43:1), but that is not consistent with Kiuchi’s disclosures as described
`
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`IPR2015-01046
`Patent 6,502,135 B1
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`above. Patent Owner contends also that “direct” must be whatever the
`’135 patent’s Specification describes (see id. at 53:16–22), but that sidesteps
`the question. Patent Owner has not adequately distinguished what was
`disclaimed from what the Specification describes. That is particularly
`important where Kiuchi shares many characteristics with the disclosed
`TARP system. As discussed above, we find that Kiuchi’s system does not
`use a singular, point-to-point connection as was disclaimed.
`Based on the totality of evidence in the record, we have evaluated the
`parties’ evidence and argument, and we find by a preponderance of evidence
`that Kiuchi discloses direct communication that satisfies the claimed VPN.
`b. Kiuchi discloses the additional limitations of claim 1
`Other than whether Kiuchi discloses a direct connection, on remand
`Patent Owner does not dispute Petitioner’s assertions for the first mapping.
`See PO Remand Br. 15–21. In the Original Decision, we found that Kiuchi
`discloses the remaining claim elements. Original Decision 5–10. Without
`any reason to reach a contrary conclusion, we maintain those findings.
`Kiuchi discloses all other elements of claim 1. The claimed client
`computer reads on Kiuchi’s user agent. See id. at 9–10. The claimed
`generating and determining steps of claim 1, relating to a DNS request, read
`on Kiuchi’s request from a user agent for a resource, which is sent by the
`client-side proxy to the C-HTTP name server and resolved to the IP address
`of a server-side proxy if directed at a resource on an origin server. See id.
`at 5–8. The claimed target computer reads on Kiuchi’s origin server. See id.
`at 8–9.
`
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`Patent 6,502,135 B1
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`
`2. Kiuchi does not anticipate claim 1 under Petitioner’s second mapping
`In Petitioner’s second asserted mapping, Kiuchi’s client-side proxy
`acts as the claimed “client computer” to create a VPN between the client-
`side proxy and server-side proxy. Id. at 12–13 (citing Pet. 26–27; Reply 8–
`11), 24–30. As part of that process, Petitioner asserts, the client-side proxy
`“generates a request” to the C-HTTP name server to request the IP address
`corresponding to a hostname associated with the server-side proxy. Id. at 25
`(citing Pet. 26–27; Ex. 1002, 65).
`Our construction for “client computer” forecloses that language
`reading on Kiuchi’s client-side proxy. Quite simply, the client-side proxy is
`not a user’s computer. Rather, it is a computer configured to manage the
`connection between a user’s computer and nonlocal networks. Ex. 1002, 65
`(§ 2.3) (“A client-side proxy behaves as an HTTP/1.0 compatible proxy, and
`it should be specified as a proxy server for external (outside the firewall)
`access in each user agent within the firewall.”).
`Petitioner argues that the client-side proxy is a “user’s computer” and
`thus a “client computer” under Patent Owner’s construction. Pet. Remand
`Br. 29–30. That argument is not persuasive. Petitioner argues that the client-
`side proxy has administrative users. Id. (citing Ex. 1002, 64–65). We agree
`with Patent Owner that Kiuchi does not describe that such users perform the
`claimed VPN method, and thus, administrative users do not show the client-
`side proxy is a client computer as claimed. See PO Remand Br. 22–23.
`Petitioner suggests additionally that Kiuchi’s disclosures encompass a
`“single-user institution, where every computer, including the client-side
`proxy, is that ‘user’s computer.’” See Pet. Remand Br. 30 (citing Ex. 1002,
`64–65, 69). We do not understand the term “user’s computer,”