`Tel: 571-272-7822
`
`
`Paper 71
`Entered: Sept. 9, 2016
`
`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.
`____________
`
`Case IPR2015-010461
`Patent 6,502,135 B1
`____________
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and C.F.R. § 42.73
`
`
`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. 6,502,135 B1 (“the ’135 patent”). We
`
`
`1 Apple Inc., which filed a petition in IPR2016-00062, has been joined as a
`Petitioner in the instant proceeding.
`
`
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`IPR2015-01046
`Patent 6,502,135 B1
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`issued a Decision to institute an inter partes review (Paper 11, “Inst. Dec.”)
`of the ’135 patent on the following grounds:
`1)
`Claims 1, 3, 4, 7, 8, 10, and 12 under 35 U.S.C. § 102 as
`anticipated by Kiuchi2
`2)
`Claim 8 under 35 U.S.C. § 103(a) as unpatentable over Kiuchi
`and RFC 1034.3
`Inst. Dec. 2, 12.
`After institution of trial, VirnetX Inc. (“Patent Owner”) filed a Patent
`Owner’s Response (Paper 44, “PO Resp.”), to which Petitioner replied
`(Paper 51, “Petitioner’s Consolidated Reply Brief” or “Pet. Reply” – see also
`Paper 50, non-redacted version). Apple Inc. also filed a Separate Reply
`(Paper 53, “Pet. Separate Reply”). Patent Owner filed a Motion to Exclude,
`to which Petitioner filed an Opposition to Patent Owner’s Motion to
`Exclude, to which Patent Owner filed a Reply to Petitioner’s Opposition of
`Motion to Exclude. Papers 59, 61, 62. Patent Owner and Petitioner also
`filed a Motion to Seal. Papers 43, 52. Oral argument was conducted on
`June 30, 2016. A transcript of that argument has been made of record.
`Paper 70, “Tr.”; see also Paper 69.
`We have jurisdiction under 35 U.S.C. § 318(a). After considering the
`evidence and arguments of both parties, and for the reasons set forth below,
`we determine that Petitioner met its burden of showing, by a preponderance
`
`
`2 Takahiro Kiuchi and Shigekoto Kaihara, C-HTTP – The Development of a
`Secure, Closed HTTP-Based Network on the Internet, PROCEEDINGS OF THE
`SYMPOSIUM ON NETWORK AND DISTRIBUTED SYSTEM SECURITY, IEEE 64-75
`(1996) (Ex. 1002, “Kiuchi”).
`3 P. Mockapetris, Domain names – Concepts and Facilities, Network
`Working Group, Request for Comments: 1034 (1987) (Ex. 1005, “RFC
`1034”).
`
`2
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`of the evidence, that claims 1, 3, 4, 7, 8, 10, and 12 of the ’135 patent are
`unpatentable.
`
`
`RELATED MATTERS
`The ’135 patent is the subject of 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.
`
`The ’135 patent is also the subject of Reexamination Control Nos.
`95/001,679, 95/001,682, and 95/001,269. Pet. 2.
`
`
`THE ’135 PATENT (EX. 1001)
`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,
`2:66–67, 37:19–21.
`
`
`ILLUSTRATIVE CLAIM(S)
`Independent claim 1 is representative of the claimed subject matter.
`Claim 1 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;
`determining whether the DNS request transmitted in
`(2)
`step (1) is requesting access to a secure web site; and
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`in response to determining that the DNS request in
`(3)
`step (2) is requesting access to a secure target web site,
`automatically initiating the VPN between the client computer
`and the target computer.
`
`
`OVERVIEW OF PRIOR ART
`Kiuchi (Exhibit 1002)
`Kiuchi discloses closed networks (i.e., closed HTTP (Hypertext
`Transfer Protocol)-based network (C-HTTP)) of related institutions on the
`Internet. Ex. 1002, 64. A client and client-side-proxy “asks the C-HTTP
`name server whether it can communicate with the [specified] host” and, if
`“the query is legitimate” and if “the requested server-side proxy is registered
`in the closed network and is permitted to accept the connection,” the “C-
`HTTP name server sends the [requested] IP address.” Ex. 1002, 65. After
`confirmation by the C-HTTP name server “that the specified server-side
`proxy is an appropriate closed network member, a client-side proxy sends a
`request for connection to the server-side proxy, which is encrypted.” Id.
`The server-side proxy “accepts [the] request for connection from [the]
`client-side proxy” (Ex. 1002, 65) and, after the C-HTTP name server
`determines that “the client-side proxy is an appropriate member of the closed
`network,” that “the query is legitimate,” and that “the client-side proxy is
`permitted to access . . . the server-side proxy,” the “C-HTTP name server
`sends the IP address [of the client-side proxy].” Ex. 1002, 66. Upon receipt
`of the IP address, the server-side proxy “authenticates the client-side proxy”
`and sends a connection ID to the client-side proxy. After the client-side
`proxy “accepts and checks” the connection ID, “the connection is
`established,” after which time the client-side proxy forwards “requests from
`the user agent in encrypted form using C-HTTP format.” Ex. 1002, 66.
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`RFC 1034 (Exhibit 1005)
`RFC 1034 discloses that a “name server may be presented with a
`query” and that the name server may either “pursue[] the query for the client
`at another server” (recursive approach) or “refer[] the client to another server
`and lets the client pursue the query” (iterative approach). Ex. 1005, 4.
`
`
`ANALYSIS
`Regarding claim 1, for example, Petitioner explains that Kiuchi
`discloses “a method of transparently creating a virtual private network
`(VPN) between a client computer and a target computer.” Pet. 26–27, Ex.
`1003, 18–20, 30, 31; Ex. 1002, 64, 65, 69. Kiuchi also discloses
`“(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 (Pet. 27, Ex. 1002 65; Ex. 1003 20–24),
`(2) determining whether the DNS request transmitted in step (1) is
`requesting access to a secure web site (Pet 27–28; Ex. 1002 65; Ex. 1003
`22–26), 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. 1005 28–
`29; Ex. 1002 65–66; Ex. 1003 23, 24, 26–31.
`
`DNS Request
`Patent Owner argues that Kiuchi fails to disclose a “DNS request,” as
`recited in claim 1. PO Resp. 20. Claim 1 recites a DNS request “that
`requests an IP address corresponding to a domain name associated with the
`target computer and determining whether the DNS request is requesting
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`access to a secure web site.” Hence, a “DNS request,” as recited in claim 1,
`is a request for an IP address corresponding to a domain name associated
`with a target computer and is capable of potentially requesting access to a
`secure web site. As Petitioner explains, Kiuchi discloses a request from a
`user agent and from the client-side proxy to “a C-HTTP name server asking
`to resolve the hostname in the request into an IP address” and that the C-
`HTTP name server “evaluates the request to determine if the hostname
`specifies a destination that is part of the closed network.” If “the hostname
`specifies a secure destination and the connection is permitted [the C-HTTP
`name server] returns an IP address associated with the secure hostname.”
`Pet. 27–28 (citing Ex. 1002, 65). Hence, we determine the “request” of
`Kiuchi and the “request,” as recited in claim 1, both request an IP address
`corresponding to a domain name and both are capable of potentially
`requesting access to a secure web site.
`Patent Owner argues that the “request” of Kiuchi differs from the
`claimed “DNS request” because “Kiuchi explains that the C-HTTP name
`service is used ‘instead of DNS.’” PO Resp. 20. As Patent Owner points
`out, Kiuchi discloses that “[i]n a C-HTTP-based network” a “C-HTTP-based
`secure, encrypted name and certification service is used” “instead of DNS.”
`Ex. 1002, 64, Abstract. However, other than what is tantamount to a mere
`difference in nomenclature, Patent Owner does not point out specific
`differences between the “request” of Kiuchi and the “request” as claimed.
`As discussed above, Kiuchi discloses a “request” that requests an IP address
`corresponding to a domain name that is capable of potentially requesting
`access to a secure web site, which appears to be the same as the request as
`claimed, with the only apparent difference being the use of the descriptor
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`“DNS” recited in claim 1. Furthermore, Patent Owner has argued in related
`proceedings that its claimed “secure domain name” “cannot be resolved by a
`conventional domain name service.” See, e.g., Apple Inc. v. Virnetx Inc.,
`IPR2015-00870, slip. op. at 22 (PTAB Jan. 25, 2016) (Paper 23) (citing
`related reexamination proceedings advancing the argument) (emphasis
`added). This further obscures what Patent Owner intends to cover by the
`term “DNS.”
`In addition, we credit testimony of Dr. Fabian Monrose that the claim
`term “domain name service request” “does not limit it to . . . specific RFCs”
`and Dr. Monrose’s observation of the lack of “any analysis as to [a domain
`name service request] being limited or not thereof to a specific RFC.” Ex.
`1036, 104:21-22, 105:18-19; see also Ex. 1036, 106:15-16 (“I haven’t
`provided any analysis that [a request as claimed] must comply with any
`RFC”). During oral argument, in response to a questions asking what a DNS
`requires, Patent Owner declined to define it, generally contending that
`whatever it is, Kiuchi does not disclose it. See Tr. 70:6–12 (“I think one of
`ordinary skill in the art would know that. But clearly when a reference
`specifically tells you it is not using DNS, you don’t even have to go down
`that road,” id. 71:8–9 (processing the DNS request in Patent Owner’s
`invention “might not be conventional”), id. 71:1–74:24, 84:4–24 (“It is still a
`DNS request . . . whether you want to call it conventional - - non-
`conventional or whatever.”). Hence, we disagree with Patent Owner’s
`implied contention that renaming a request that requests an IP address
`corresponding to a domain name that is capable of requesting access to a
`secure web site from “DNS request” to “C-HTTP-based . . . service . . .
`instead of DNS” (as disclosed by Kiuchi and as recited in claim 1) alone is
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`sufficient to create a patentable difference between the seemingly identical
`requests.
`Patent Owner also argues that Kiuchi’s “request” differs from the
`claimed “request” because Kiuchi discloses “that the . . . DNS lookup is
`generated only if an error condition occurs in which C-HTTP connectivity
`fails.” PO Resp. 20–21. However, claim 1 does not appear to recite any
`specific steps to be performed with respect to an error condition or whether
`connectivity fails (or not) in conjunction with the (non-recited) error
`condition.
`
`Target Computer (and IP Address corresponding to a domain name)
`Patent Owner argues that “Kiuchi’s C-HTTP name server does not
`return the IP address of the URL in the request, which identifies Kiuchi’s
`origin server, but instead returns a server-side proxy’s IP address.” PO
`Resp. 23 (citing Ex. 2047 95:9–14). We agree with Patent Owner that
`Kiuchi discloses returning the IP address of the requested server-side proxy.
`However, we conclude that Petitioner has met its burden by a preponderance
`of the evidence for demonstrating the lack of sufficient differences between
`Kiuchi and the disputed claim limitation. For example, both Kiuchi and
`claim 1 provide for a request that requests an IP address (i.e., of a server-side
`proxy, in Kiuchi) corresponding to a domain name (i.e., the URL provided
`in the request, in Kiuchi) associated with the target computer (i.e., associated
`with the origin server in Kiuchi).
`Patent Owner argues that the domain name in the request
`(corresponding to the IP address of the “server-side proxy” of Kiuchi) is not
`“associated with” the “origin server” (i.e., target computer) of Kiuchi (see,
`
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`e.g., Patent Owner’s Sur-Reply, Paper 67, 13-14). We disagree with Patent
`Owner’s contention. As Kiuchi discloses, the domain name in the request
`corresponds to the IP address of the server-side proxy of Kiuchi. One of
`skill in the art would have understood that the domain name that corresponds
`to the IP address of the server-side proxy would be “associated with” the
`origin server of Kiuchi at least because the requested server-side proxy itself
`is “associated with” the origin server. For example, the “server-side proxy
`communicates with an origin server inside the firewall” and “forwards
`requests to the origin server.” In addition, according to Kiuchi, “[i]t is
`possible to map any of the virtual directories on the server-side proxy to any
`of the directories in one or more origin servers inside the firewall.” Ex.
`1002, 66. One of skill in the art would have understood that if there were no
`“association” between the two components, then communication, transfer of
`requests, or mutual mapping of directories between the two components
`would not be possible, the two components having no association with each
`other. Thus, the domain name corresponding to the IP address of the server-
`side proxy (that is “associated with” the origin server) is itself “associated
`with” the origin server (or “target computer”).
`
`Client Computer
`Patent Owner argues that the “client computer,” as recited in claim 1,
`is a “user’s computer” and that “Kiuchi’s client-side proxy is not a user’s
`computer” because “Kiuchi does not disclose any user associated with the
`client-side proxy.” PO Resp. 24–25.
`As an initial matter and as discussed above, Petitioner argues that
`“Kiuchi describes a method . . . that allows a user agent . . . to access private
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`web pages” and that the “user agent makes an HTTP request to connect to a
`host that is specified within a URL,” which “[t]he client-side proxy receives
`. . . and [the client-side proxy then] sends a request to a C-HTTP name
`server.” Pet. 26–27. In other words, Petitioner equates Kiuchi’s “user
`agent” with the claimed “client computer” because Petitioner argues that the
`“user agent” is allowed access to private web pages and the “user agent
`makes [a] . . . request to connect to a host.” We agree with Petitioner. Nor
`does Patent Owner provide sufficient arguments to persuasively refute
`Petitioner’s showing that Kiuchi’s “user agent” constitutes a “client
`computer,” even under Patent Owner’s proposed definition of a “client
`computer” as being “associated with” a user. Indeed, it appears that Patent
`Owner agrees that Kiuchi’s “user agent” is the same as the claimed “client
`computer.”4
`Patent Owner also argues that Petitioner equates the “client-side
`proxy” of Kiuchi (and not the “user agent”) with the claimed “client
`computer.” See, e.g., PO Resp. 24–25. Assuming Patent Owner to be
`correct that Petitioner’s position is that the “client-side proxy” (and not the
`“user agent”) of Kiuchi is a “client computer” as claimed, and assuming that
`a “client computer” must be “associated with” a user, we are not persuaded
`by Patent Owner that Kiuchi fails to disclose this feature. For example,
`Kiuchi discloses that users within an institution (e.g., “hospitals and related
`institutions” – Ex. 1002, 64) are provided with access to “information [that
`is] shared among” institutions in which a “client-side proxy” receives a
`request for access from a user agent. One of skill in the art would have
`
`4 For example, Patent Owner points out that “Kiuchi discloses a
`communication system [including] a ‘client,’ also referred to as a ‘user
`agent’.” PO Resp. Br. 25.
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`understood that in order for a user or “user agent” in an “institution” to
`provide a request to access information, the “user agent” (itself being
`“associated with” a user) would be “associated with” the “client-side proxy”
`to which the user agent sends a request. Otherwise, the user would be
`unable to send a request to the client-side proxy, the client-side proxy not
`being associated with the user in the first place. Patent Owner does not
`demonstrate sufficient differences between a “client-side proxy” of Kiuchi
`that is “associated with” a user (and receives a request from the associated
`user via the user agent) and the claimed “client computer” that Patent Owner
`argues must also be somehow “associated with” a user.
`Still operating under the presumption that Patent Owner is correct that
`Petitioner equates the client-side proxy of Kiuchi (and not the user agent)
`with the claimed “client computer,” Patent Owner argues that Kiuchi’s
`“client-side proxy” is distinct from the claimed “client computer” because,
`according to Patent Owner, Kiuchi provides “separate references to the
`‘client’ and ‘client-side proxy.’” PO Resp. 25. We are not persuaded by
`Patent Owner’s argument, at least because, even assuming that Kiuchi refers
`to a “client” and “client-side proxy” separately as Patent Owner contends,
`Patent Owner does not point out sufficient differences between the “client-
`side proxy” of Kiuchi and a “client computer,” as recited in claim 1, for at
`least the previously stated reasons.
`Patent Owner argues that the Federal Circuit “found evidence that the
`‘client’ of Kiuchi is actually a web browser, a component that is
`distinguishable from the client-side proxy.” PO Resp. 26 (citing VirnetX,
`Inc. v. Cisco Systems, Inc., 767 F.3d 1308, 1324 (Fed. Cir. 2014)).
`Presumably, Patent Owner argues that the “client-side proxy” cannot be
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`equated with the “client computer,” as recited in claim 1, because the
`Federal Circuit held that the “web browser” of Kiuchi must be equated with
`the claimed “client computer” (and, presumably, Kiuchi’s client-side proxy
`may not be equated with the claimed “client computer”). We are not
`persuaded by Patent Owner’s implied argument.
`First, the Federal Circuit held that “the district court did not err in
`denying [Defendant’s] JMOL motion with respect to invalidity,” because
`“there was evidence that the ‘client’ of Kiuchi is actually a web browser.”
`Cisco, 767 F.3d at 1324. We disagree with Patent Owner’s implied
`argument that the Federal Circuit held that 1) Kiuchi’s “web browser” must
`be equated with the claimed “client computer,” 2) Kiuchi’s “client-side
`proxy” must not be equated with the claimed “client computer,” and
`3) Kiuchi’s “web browser” (which is supposedly mandated by the Federal
`Circuit to be exclusively equated with the claimed “client computer”) differs
`materially from the claimed “client computer” such that Kiuchi fails to
`disclose a “client computer.” Rather, the Federal Circuit actually held that
`there was sufficient “evidence” that Kiuchi discloses a web browser as a
`“client” such that the district court did not err in denying defendant’s JMOL
`motion. See id. This holding does not address whether Kiuchi’s client-side
`proxy (which Patent Owner asserts Petitioner equates with the claimed
`“client computer”) is the same as or is different from (and, if so, in what
`way) the claimed “client computer.”
`Second, as Patent Owner points out, the district court and the Federal
`Circuit do not construe claim terms under a broadest reasonable
`interpretation standard as we do. Patent Owner argues that despite the
`differing standards of claim construction, the Federal Circuit “has
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`emphasized that the Board nevertheless has an ‘obligation to acknowledge
`that interpretation’ and ‘to assess whether it is consistent with the broadest
`reasonable construction of the term.” PO Resp. 26–27 (citing Power
`Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir 2015)). We
`acknowledge the district court’s construction as being slightly narrower than
`our construction and as involving different evidence, arguments, and
`standards of proof. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2142–2146 (2016).
`Third, as previously discussed, Patent Owner contends that the
`Federal Circuit “found evidence that the ‘client’ of Kiuchi is actually a web
`browser, a component that is distinguishable from the client-side proxy.”
`Hence, the Federal Circuit states that the district court was presented with
`evidence that Kiuchi discloses a web browser that is a client and is not the
`same as the client-side proxy of Kiuchi. In other words, the Federal Circuit
`makes no comment on claim construction at all (under any standard, much
`less a broadest reasonable standard) since the “web browser” and the “client-
`side proxy” are both terms disclosed by Kiuchi and neither term is recited in
`claim 1, for example.
`
`
`VPN
`
`Claim 1 recites “automatically initiating the VPN between the client
`computer and the target computer.” Patent Owner argues that Kiuchi fails to
`disclose a VPN because Kiuchi discloses a “point-to-point connection that
`exists only between the two proxies, and thus is not a network.” PO Resp.
`30. Hence, Patent Owner argues that Kiuchi fails to disclose a “network.”
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`We are not persuaded by Patent Owner’s argument for at least the reasons
`set forth by Petitioner. Consol. Pet. Reply 12–13.
`For example, Kiuchi discloses the use of a C-HTTP name server (and
`client-side and server-side proxies) in “networks among hospitals and related
`institutions.” Ex. 1002, 64. At least in view of this explicit disclosure of
`“networks,” we are not persuaded by Patent Owner that Kiuchi fails to
`disclose a “network” even assuming we were to adopt Patent Owner’s
`proposed definition of a “network” as requiring more than two devices.
`Patent Owner argues that Kiuchi fails to disclose a Virtual Private
`Network (VPN) because “a VPN necessarily requires a . . . ‘direct
`communication’” and Kiuchi discloses that “the C-HTTP proxy servers
`preclude the user agent and origin server (the true client and target) from
`directly communicating with one another.” PO Resp. 29, 31.
`Claim 1 recites “initiating the VPN between the client computer and
`the target computer” but does not recite or otherwise require a “direct
`communication” between the client computer and the target computer.
`Hence, we need not consider whether or not Kiuchi discloses a “direct
`communication” between any specific devices.
`Patent Owner argues that one of skill in the art would have understood
`that a VPN must include “direct communication” under a broadest
`reasonable interpretation of the claim term “VPN” in light of the
`Specification because the Specification discloses this requirement (and
`should be imported into the claims). PO Resp. 7–8 (citing Ex. 1001, 38:30–
`33; 39:22–25; 40:30–35; 41:23–27; 7:40–49; 31:62–32:3; 36:25–28; Figs. 2,
`24, 26, 28, 29, 33). We note that the cited portions of the Specification
`disclose various examples of “a virtual private network [] created between
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`user computer . . . and secure target site” (see, e.g., id. at 38:30–33) but none
`of the examples appear to disclose that a VPN must have a “direct
`communication” between any specific components. We further note that the
`cited portions of the Specification disclose that the examples provided are
`“representative configuration[s] only and is not intended to be limiting.”
`See, e.g., id. at 31:66–67. Thus, even assuming that the Specification
`discloses that a VPN must contain a “direct communication” (Patent Owner
`does not demonstrate persuasively that the Specification provides this
`disclosure, however), Patent Owner does not explain sufficiently why this
`feature alleged to be disclosed in selected examples in the Specification, that
`is “not intended to be limiting,” should be imported into the claim.
`Patent Owner argues that “[i]n litigation, Patent [O]wner’s adversaries
`have repeatedly recognized that [a link that traverses various network
`devices such as Internet Service Providers, firewalls, and routers] is a
`‘direct’ communication.” PO Resp. 8 (citing Ex. 2035, 42:16–21, 44:13–
`45:12). Patent Owner does not assert or demonstrate sufficiently, however,
`that “Patent Owner’s adversaries,” during litigation (or at any other time),
`have “repeatedly recognized” that one of skill in the art would have
`understood a VPN to require a “direct communication” between two specific
`devices within the network under a broadest reasonable interpretation in
`light of the Specification. Indeed, Patent Owner does not assert or
`demonstrate adequately that “Patent Owner’s adversaries” made any
`statement regarding the broadest reasonable interpretation of the term
`“VPN” with respect to a “direct communication” at all.
`Patent Owner argues that “Patent Owner . . . disclaimed any virtual
`private networks and virtual private network communication links that are
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`not direct” and that “Patent Owner’s adversaries acknowledged that
`disclaimer is clear and unambiguous.” PO Resp. 8 (citing Ex. 2036, 7; Ex.
`2045, 6–9); PO Resp. 9 (citing Ex. 2030, 5). Patent Owner asserts that a
`“disclaimer . . . informs the patent’s scope and should be given effect” even
`though, under Tempo Lighting,5 such a disclaimer “generally only binds the
`patent owner.” PO Resp. 10, 11. Hence, the evidence of record indicates (1)
`the lack of a requirement of a “direct communication” in a VPN as recited in
`the claims, (2) the lack of the requirement of a “direct communication” in a
`VPN as disclosed in the Specification, (3) the lack of disclosure of what a
`“direct communication” would entail even if disclosed in the Specification,
`(4) the explicit disclosure in the Specification that examples provided in the
`disclosure are non-limiting, and (5) the fact that any Patent Owner
`disclaimers (assuming there are any) are binding on the patent owner only.
`We weigh all of the evidence of record collectively and, as previously
`indicated, we determine that Petitioner met its burden of demonstrating, by a
`preponderance of the evidence, unpatentability of claim 1 with respect to
`this issue. We also determine that Patent Owner’s generalized argument that
`an alleged disclaimer by Patent Owner somehow “informs the patent’s
`scope” in some way is not sufficiently persuasive in refuting Petitioner’s
`showing. In other words, we find that the collective evidence outweighs
`Patent Owner’s argument.
`Patent Owner argues that “the Federal Circuit noted that a virtual
`private network requires direct communication” and that “the Federal Circuit
`explained that a VPN, as claimed, [must] include[] direct communication
`[between a client computer and a target computer].” PO Resp. 12, 31. We
`
`
`5 Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed. Cir. 2014).
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`note, however, that the Federal Circuit does not appear to have held that a
`VPN must include a “direct communication,” much less that such a
`construction would apply under a broadest reasonable standard. Rather, the
`Federal Circuit merely stated that “the jury heard evidence that Kiuchi’s
`proxy servers at least do not teach ‘direct communication’” in the context of
`finding that “the district court did not err in denying [Defendant’s] JMOL
`motion with respect to invalidity.” Cisco, 767 F.3d at 1323–24. In addition,
`as the Federal Circuit indicates, the parties during litigation “must establish
`invalidity by clear and convincing evidence,” which differs from the
`standard applied at the PTO (i.e., preponderance of the evidence). Id. at
`1323.
`Hence, the issue discussed by the Federal Circuit was not whether or
`not a VPN must include a “direct communication” between a client
`computer and target computer under a broadest reasonable standard or
`whether or not Kiuchi discloses such a feature under a preponderance of the
`evidence standard. Cisco does not involve an appeal about the claim
`construction of VPN––no party disputed whether or not a VPN required a
`direct connection, so that this agreed-upon feature reasonably could have
`amounted to a litigation tactic by the parties for different reasons. Rather,
`the issue discussed by the Federal Circuit was whether or not there was
`sufficient evidence justifying the district court’s denial of Defendant’s
`motion for judgment as a matter of law with respect to invalidity using the
`clear and convincing standard (the Federal Circuit held that sufficient
`evidence was, in fact, presented justifying a holding that the district court
`did not err in denying Defendant’s JMOL motion). Id. at 1323-24.
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`Furthermore, Patent Owner’s briefs do not explain clearly how to interpret
`“direct.”
`As such, we do not see, and Patent Owner does not point out, the
`relevance of the cited matter to the issue before us, that is: (1) whether or not
`one of skill in the art would have understood, under the broadest reasonable
`interpretation standard in light of the specification, that a VPN must include
`a “direct communication”; (2) what such a “direct communication” would
`(and would not) encompass; and (3) whether or not Kiuchi discloses such a
`“direct communication” under a preponderance of the evidence standard.
`We are not persuaded by Patent Owner’s arguments. On this record,
`Petitioner has met its burden of demonstrating by at least a preponderance of
`the evidence that claim 1 is unpatentable.
`
`Claim 4
`Patent Owner argues that Kiuchi only discloses “checking whether” a
`client computer “is registered in the network” but fails to disclose
`determining whether a client computer is “authorized” to establish a VPN
`with the target computer, as recited in claim 4, because “whether the server-
`side proxy [of Kiuchi] is permitted to connect says nothing as to the client
`computer’s authorization.” PO Resp. 35. However, as previously indicated,
`based on our review of Petitioner’s arguments, we determine that Petitioner
`met its burden of demonstrating, by a preponderance of the evidence,
`unpatentability of claim 4 with respect to this issue and Patent Owner’s
`arguments are not persuasive in refuting Petitioner’s showing by
`demonstrating sufficiently a difference between determining if a user or
`device is “permitted” to connect (as disclosed by Kiuchi) and determining if
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`the user or device is “authorized” to connect. One of skill in the art would
`have understood that a user or device that is determined to be “permitted to
`connect” also would be determined to be “authorized” to do so. Otherwise,
`the user or device would not be permitted to connect (not being “authorized”
`to do so), which would be contrary to the determination that the user or
`device is “permitted to connect.” See, e.g., Pet 30–31 (citing Ex. 1003, 22–
`25; Ex. 1002, 64–65). Petitioner has met its burden of demonstrating by at
`least a preponderance of the evidence that claim 4 is unpatentable.
`
`Claim 7
`Claim 7 recites a gatekeeper computer that allocates VPN resources.
`Patent Owner argues that Kiuchi discloses a “server-side proxy” th