`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-MOBILE US, INC. And T-MOBILE USA, INC.,
`Petitioner,
`
`v.
`
`BARKAN WIRELESS ACCESS TECHNOLOGIES, L.P.,
`Patent Owner.
`____________
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`____________
`
`Held: July 10, 2018
`____________
`
`
`
`
`Before: MEREDITH C. PETRAVICK, JOHN A. HUDALLA, and
`SHARON FENICK, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`MATTHEW C. BERNSTEIN, ESQUIRE
`MIGUEL BOMBACH, ESQUIRE
`Perkins Coie
`11988 El Camino Real
`Suite 350
`San Diego, California 92130-2594
`
`ON BEHALF OF PATENT OWNER:
`ROBERT KATZ, ESQUIRE
`Katz PLLC
`6060 North Central Expressway
`Suite 560
`Dallas, Texas 75206
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, July
`
`
`10, 2018, commencing at 10:00 a.m., at the U.S. Patent and Trademark
`Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 2
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE FENICK: Good morning. I'm Judge Fenick. This is
`Judge Petravick and Judge Hudalla. We'll hear argument now in case
`number IPR2017-01099, T-Mobile US, Inc., and T-Mobile USA, Inc.,
`versus Barkan Wireless Access Technologies concerning U.S. patent
`number 9,042,306 B2. Will counsel for the parties please introduce
`yourselves, starting with petitioner.
`MR. BERNSTEIN: Your Honor, Matthew Bernstein from Perkins
`Coie. And with me is Miguel Bombach, also from Perkins Coie, for
`T-Mobile.
`MR. KATZ: Your Honors, Robert Katz for patent owner, Barkan
`Wireless Access Technologies.
`MR. BERNSTEIN: Your Honor, I forgot to mention that Steve
`McGrath from T-Mobile is also here.
`JUDGE FENICK: Thank you. Welcome to the Board. Per our
`order dated June 15, 2018, each side has 30 minutes to argue. The petitioner
`will argue first and may reserve rebuttal time. The patent owner may not
`reserve rebuttal time.
`I'll remind the parties that the petitioner bears the burden of
`proving any proposition of unpatentability by a preponderance of the
`evidence. I also remind the parties that the hearing is open to the public. A
`full transcript will become part of the record.
`With that, I invite Mr. Bernstein to begin. Would you like to
`reserve time for rebuttal?
`
`
`
`
` 3
`
`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
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`
`MR. BERNSTEIN: Yes, Your Honor, I'm planning on reserving
`15 minutes.
`JUDGE FENICK: Thank you.
`MR. BERNSTEIN: Thank you, Your Honor. Good morning,
`Your Honors. I would like to make first a few preliminary points, the first
`one being to follow-up on your last point, Your Honor, is that T-Mobile has
`shown by a preponderance of the evidence that all of the challenged claims
`are invalid. There's no disputes in this matter that the references are prior
`art. There's no evidence of any secondary consideration of nonobviousness
`in this trial. And petitioners and only petitioners have submitted expert
`testimony. Barkan did not submit any expert declarations. Barkan did not
`take the expert deposition of Dr. Lavian. Dr. Lavian's testimony is
`unrebutted.
`Finally, with respect to these preliminary points, the Board's
`institution decision, while preliminary, contained many factual and legal
`findings, and by and large Barkan, in its patent owner responses and
`supplemental patent owner responses, has not addressed any of the
`arguments in the actual preliminary response, in the actual institution
`decision.
`I would like to now turn to communication module which is found
`in independent claim 1 and its dependents. The discussion of
`communication module needs to start with what has happened in the District
`Court. Barkan has worked it so that we are in a situation right now where
`there's a District Court case with a claim construction for communication
`module that includes one or two network cards. That matter, that case is up
`
`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
`
`
`
`
`
` 4
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`at the Federal Circuit right now but that Barkan chose, I assume
`intentionally, not to appeal that claim construction for communication
`module even though it knows that that District Court claim construction is
`broader than the claim construction that the Board reached in its preliminary
`claim construction.
`So what we have right now is a situation where Barkan, when the
`case goes back down to the District Court, is going to be arguing
`infringement that T-Mobile's, Verizon's phones are phones that they sell
`contain or infringe because they contain two network cards, while at the
`same time in front of the three of you is going to be arguing that Buddhikot's
`two-card architecture does not meet the communication module claim
`construction.
`T-Mobile thinks that that is legally incorrect. We also think it's
`unfair, and that is one of the reasons why we think that the Board's
`preliminary claim construction is not supported.
`JUDGE HUDALLA: Let me ask you a question about that,
`counsel. Our preliminary construction said a single network card or
`equivalents, right? Should the equivalents include more than one network
`card? I mean, that's something we struggled with.
`MR. BERNSTEIN: So I think that the specification actually
`supports an actual claim construction of one or two network cards or
`equivalents. But if the Board were to maintain its only one network card and
`not two, I think certainly under the doctrine of -- under the equivalents
`prong, Buddhikot would teach that.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 5
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`
`I mean, what's a card? We can start there. I mean, in the District
`Court, Barkan intentionally again specifically said that a card is just
`circuitry. And if you look at Buddhikot, you have circuitry that includes,
`you know, a Wi-Fi chip, and that includes a 3G chip. I mean, under that
`analysis, under positions that Barkan has clearly taken, even under the
`one-card construction or equivalents, we would absolutely meet that.
`And to a person of ordinary skill in the art, I mean, whether it's one
`card or two cards, that's not -- it doesn't matter. That's a design choice.
`That's not the central point of this invention. It's not like the specification
`discloses a specific way and specific technology in how you implement a
`single-card network card. I mean, there's nothing in the specification saying
`that that is preferred to two. I mean, a person of ordinary skill in the art,
`again, it's just a simple design choice and wouldn't care.
`You know, another point on this, Your Honor, is if you look at the
`actual claim language, I mean, there is no question that Mr. Barkan, the
`inventor, never intended this -- I mean, never intended this to just be limited
`to a single card. I mean, the construction is on communication module.
`That's what everyone is focused on. But if you look at the actual claim
`language, it's at least one communication module. So the claim language
`itself is saying that this is not a single-chip invention, a single-card
`invention. Multiple cards can be used to implement this invention.
`Turning back to the -- looking at the actual '306 patent to
`determine what the appropriate claim construction is for communication
`module, reading the Board's claim construction order in the institution
`decision, that preliminary claim construction, it seemed like the Board's
`
`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
`
`
`
`
`
` 6
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`decision was based on two things, one that a one-card solution was the only
`alleged novel embodiment, and two, that there was -- and this is related,
`there was no two-card embodiment that performed both steps of the
`function. T-Mobile respectfully disagrees with both of those points.
`First, the specification repeatedly and expressly states that
`connecting through two access points or through two channels is novel and
`provides specific advantages such as better or increased bandwidth. That's
`at column 6, lines 14 through 21, column 9, lines 28 through 36, column 12,
`lines 56 through column 13, line 4. That's at paper 29 at pages 4 to 5.
`And the specification specifically and, I think, unequivocally states
`that one of the ways to connect in such a manner is using two network cards.
`And that's at column 31, lines 20 to 34 where it says, quote, for example, by
`using two network cards.
`So let's actually walk through this. And I want to turn to
`demonstrative 13. I apologize for making us jump around. So what we see
`here is that laptop 11 is connected to the internet through access point 10 and
`that STAs 12 through 15 are connected to laptop 11. Laptop 11 is also
`acting as an access point. I don't think anyone -- I hope no one here disputes
`that that's what Figure 3 shows.
`But in the column describing Figure 3 at column 13, lines 38 to 44,
`the specification says that laptop 11 can also connect to the internet through
`laptop 21. And so laptop 11 -- and that's why we drew the red line. Laptop
`11 is now connecting to the internet through access point 10 and through
`laptop 21 through access point 20. So it's performing -- it has two network
`cards and it's performing both functions by connecting to access point 10
`
`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
`
`
`
`
`
` 7
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`and laptop 21, the first part of the function, and also having STAs 12
`through 15 attached to laptop 11.
`So I think that reading of the specification, a person of ordinary
`skill in the art could very easily -- would reach that conclusion especially
`under a BRI interpretation. Again, there are advantages to laptop 11 with
`this model where bandwidth is increased. It has a faster connection to the
`internet. Likewise, for STAs 12 to 15, they are connecting to the internet
`with a better connection.
`There is also, Your Honors, claims 4 to 7. Regarding claim 7, it
`claims that two access points are used -- use different wireless
`communication protocols. And the Board's rebuttal of the presumption was
`based on there only being a novel single-card solution. And as I just
`discussed, that reasoning for rebutting the presumption does not stand
`because there is a novel two-card approach.
`And for all of those reasons, Your Honor, what's happening in the
`District Court -- Your Honors, excuse me, what's happening in the District
`Court, what's happening, you know, Barkan not appealing this two-card
`construction at the District Court and arguing one card here, what the actual
`claim language states and claims 4 to 7, we think that BRI construction of
`communication module has to include two cards -- one or two cards. It
`doesn't have to be two cards, but it's one or two cards.
`And there's no dispute that Buddhikot meets a two-card
`construction. Barkan has never argued otherwise. The evidence that
`T-Mobile has been using is the same evidence from the beginning. In our
`petition on page 25 we even highlighted Buddhikot's two cards in Figure 14,
`
`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
`
`
`
`
`
` 8
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`highlighted 1445 and 1435. So T-Mobile has shown by a preponderance of
`the evidence that Buddhikot meets a two-card construction.
`And as I mentioned before in response to Your Honor's question,
`even under a one-card or one-card and equivalents construction, T-Mobile
`has shown that Buddhikot meets that construction, again, because a person
`of ordinary skill in the art would not -- it's simply a design choice. The
`language used by Barkan itself saying what a card was, it's merely circuitry
`and, you know, that's clearly what Buddhikot shows, the "at least one"
`language in the claim.
`And just very quickly, the Board cited to the Polaroid decision in
`its institution decision. That case is distinguishable. In Polaroid there were
`specific statements during the prosecution history where the applicant
`narrowed the scope of the claim term.
`That's not what happened here. In our case, what we have, and this
`is discussed at paper 2 at pages 16 to 17, you actually have the examiner
`taking a very broad, a broader view of what communication module covers
`and Barkan agreeing to that broader view of the construction.
`So Your Honors, for all of these reasons, T-Mobile has shown by a
`preponderance of the evidence that the communication module limitation of
`claim 1 and its dependents is met by Buddhikot.
`So very briefly, I would like to turn to the originally instituted
`claims. And I would like to briefly address proxy server because I think we
`are going to hear quite a bit about proxy server from Mr. Katz. I think we
`are going to probably hear quite a bit of new argument, actually.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 9
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`
`But I just want to make the point that this issue of the proxy server,
`it's actually incredibly simple. This is a very straightforward issue. Proxy
`server, VPNs, tunnels, this stuff is really well known, and it certainly was
`well known to a person of ordinary skill in the art how these things work.
`And the only person, the only evidence that we have, the actual evidence we
`have as to how a VPN or a tunnel or proxies work comes from Dr. Lavian.
`He talked about this at length, pages after pages as to how this stuff works.
`As opposed to what Barkan has is has is attorney argument saying how this
`stuff might work, might not work.
`When you look at the '306 patent and you look at Buddhikot, what
`you see is almost an identical identification of a problem -- of the problem,
`which is making sure that the hot spot or nothing else is snooping on
`communications from the client to the internet. That's the stated -- one of
`the stated goals of both Buddhikot and the '306 patent. The language is
`almost identical.
`Then if you look at the language in Buddhikot and the '306 patent
`as to how that's actually solved, again, the language is almost identical. It's
`tunneling. It's VPN. You know, based on those disclosures alone, it's
`T-Mobile -- we have much more evidence, but based just on how these
`things are described in the '306 and how they are disclosed in Buddhikot, we
`think that is sufficient for us to meet our burden.
`But there's more. I mean, it's undisputed that Buddhikot's tunnel
`starts in the client device. It's also undisputed that Buddhikot and the '306
`patent disclose virtual private networks, VPNs, and that these work by
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 10
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`tunneling a VPN gateway on the internet so you can access the private
`network as if the client computer was physically located there.
`It's undisputed that the end point of a tunnel in Buddhikot -- at the
`end point of a tunnel in Buddhikot there is decryption and decapsulation
`being done on behalf of the client. Barkan admitted this. All of this is
`actually supported, clearly set forth in Buddhikot, in the '306 patent and in
`T-Mobile's expert testimony. And so again, we have more evidence in our
`papers, but I just wanted to raise that briefly.
`And I want to end at least this part of my argument by saying that
`T-Mobile has shown by a preponderance of the evidence that all of the proxy
`limitations are met.
`JUDGE HUDALLA: Counsel, I do want to ask you a question
`about that. Patent owner has brought up some points about how petitioner's
`arguments are really grounded in the beginning of the tunnel, as in the VPN
`aspects are shown at the beginning. They are not shown at the end of the
`tunnel, and I think they use the word "notional," there's a notional end point
`somewhere out there that you are pointing to as the proxy server. To be
`honest, I go back and I look at your petition, I don't see you explaining that
`aspect. It might be well known in the art, but it's not something I saw
`brought out in great detail. And I think they actually mention you kind of
`have moved different terminology over time. How would you respond to
`patent owner's arguments?
`MR. BERNSTEIN: So for the change in terminology, so first of
`all, that's an argument, I think, actually, in their slides. It's not one they
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 11
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`actually made in their papers, but let me address it. And I'll return to kind of
`where the location of the VPN.
`But you saying VPN server versus VPN gateway, it's a red herring,
`Your Honor. First of all, we do actually use the language server and
`gateway in our paper 12 at page 22 -- or actually, excuse me, page 12 of
`paper 22 we are using kind of the terminology the same. But so a VPN
`gateway in quotes or a VPN server, that's not the actual claim language. It's
`proxy server.
`What we point to in Buddhikot as meeting the proxy claim
`limitation does the same thing regardless of whether we call it a VPN
`gateway, a VPN server, a proxy server, a proxy, it's the exact same -- we
`never switched evidence. We never said that anything -- we never, you
`know, added anything to what's actually in our petition. It's the same exact
`evidence, and that evidence has not changed as to how we say Buddhikot
`meets the proxy server limitation.
`JUDGE HUDALLA: I guess my problem is I look at your
`evidence and it's actually focusing on the beginning of the tunnel. And it's
`your burden to tell us, hey, there's stuff at the end of the tunnel that meets
`our claim limitation. And petitioner is not exactly clear on that point. Could
`you respond to that?
`MR. BERNSTEIN: I apologize. I thought there were two parts of
`your question. Let me go back to that. So it is undisputed that Buddhikot
`shows that VPN and IP tunneling software is put on a client. I mean, of
`course it is. If you want to have a tunnel, if you want to have a VPN
`network, it has to start at the client. That's where it actually starts.
`
`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
`
`
`
`
`
` 12
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`
`And you tunnel out to -- based on what Dr. Lavian testified to,
`what is well known in the art, you tunnel out to the internet. That's the entire
`purpose of VPN. You wouldn't put VPN software -- in an internet protocol
`software, you wouldn't put that stuff on a client device if you weren't
`communicating to the internet.
`JUDGE HUDALLA: Is it fair to say you are relying on Buddhikot
`for the -- the beginning of the tunnel comes from Buddhikot, and then you
`are relying on expert testimony to get you to the end of the tunnel?
`MR. BERNSTEIN: Well, you can say it's expert testimony. It's,
`frankly, common sense as to how a VPN or an IP tunnel actually works. It's
`based on, you know, there's no detail in the '306 patent as to how these
`things work. There's as much detail in Buddhikot. I mean, it's actually not
`just expert testimony because you have these client devices that have IP
`addresses. These client devices are meant to connect to the internet. And so
`it is the only reasonable conclusion that could be reached based on the
`evidence, especially with Dr. Lavian, is that these tunnel end points and
`these gateways, VPN gateways, are on the actual internet.
`I mean, these tunnels are end-to-end. And the other -- so a tunnel
`is disclosed. That means that there's an end point. I mean, why would you
`have a VPN client or a tunnel just on your client device? You would stop
`yourself from snooping like about what you yourself are doing? That
`doesn't make any sense. There's an end point. That end point is well known
`to be on the internet.
`JUDGE HUDALLA: I understand your position. Thank you.
`MR. BERNSTEIN: With that, I'll hand it off to you, Mr. Katz.
`
`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
`
`
`
`
`
` 13
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`
`JUDGE FENICK: Thank you, Mr. Bernstein.
`MR. KATZ: Thank you, Your Honor. So we've organized our
`presentation here to talk about the proxy server items first. Effectively, we
`are going to talk about -- to address two different arguments that we believe
`the petitioners are making here.
`And before I go on, let me just say that my primary goal is to
`answer any questions that the panel has. So slide 1, again, is a summary of
`what's going to come up in slides 2 through 11. If you look at Buddhikot's
`Figure 13, it will effectively show a client device, more or less a mobile hot
`spot gateway, and then it will show an IP network followed by some other
`material. The petitioners have variously alleged that this VPN gateway
`exists on the Buddhikot client itself. And in other parts of their argument,
`they seem to imply that this Buddhikot VPN gateway is on the other side of
`the IP network.
`So I would point out, and I think it was raised earlier, the
`petitioners rely exclusively on Buddhikot for their assertions regarding the
`claim limitations involving a proxy server. And as I mentioned, they have
`attempted to make this argument two different ways, first of all, by pointing
`to this VPN component that's on the Buddhikot mobile client, and then
`second of all, suggesting that because there is this mobile client with the
`VPN component, there must be a VPN component elsewhere.
`JUDGE FENICK: Can I ask you to focus on the second part?
`MR. KATZ: Yes. So the second part, we are going to start on
`slide 12. As I have mentioned in the earlier slides, the petitioners have used
`a number of phrases to refer to VPN components. They call them VPN
`
`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
`
`
`
`
`
` 14
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`gateways, tunnel end points, VPN servers, and they all point to the same
`section of Buddhikot. Even if there is a VPN gateway on the other side of
`the network, on the other side of the IP network, it doesn't constitute a proxy
`server. And we are referring to this as a notional VPN gateway because this
`is not something that's disclosed by Buddhikot. This is something that the
`petitioners argue has to exist because there's a VPN gateway on the client.
`JUDGE HUDALLA: Do you dispute that?
`MR. KATZ: It actually is possible for other -- for a client to talk
`directly through a VPN to an end point on the other side of the IP network.
`And I do have one or two slides on that as well. So there is going to be
`some sort of a VPN device. In our paper 28 we talk about a VPN
`concentrator. It's also possible to have other types of software out there.
`But in any case, they are not a proxy server.
`JUDGE HUDALLA: But you would admit that at least a person of
`ordinary skill in the art would see some sort of a device at the other end of
`that VPN tunnel based on the Buddhikot teaching?
`MR. KATZ: It doesn't necessarily need to be a device.
`JUDGE HUDALLA: I should say a gateway of some sort.
`MR. KATZ: It could be any sort of encryption or decryption
`mechanism?
`JUDGE HUDALLA: So you would agree with that?
`MR. KATZ: Not necessarily with the device, but some sort of a
`decryption mechanism, yes.
`JUDGE PETRAVICK: I'm sorry, counsel. So if you are at the end
`of the tunnel and there's just a decryption mechanism, does that mean that
`
`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
`
`
`
`
`
` 15
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`the information just gets decrypted and stays there or doesn't it have to go
`somewhere else if you are at the end of the VPN tunnel?
`MR. KATZ: If there is responsive information going the other
`way and you are using a tunnel, then, yes, there would be another encryption
`and decryption mechanism. So typically the VPN is used in a place where
`you are going over an unsecured network like the internet. So yeah, when
`information comes back, if it does come back, it would be presumably
`encrypted and decrypted.
`JUDGE PETRAVICK: So if I sent information from one part --
`from the laptop down the VPN tunnel to somewhere else, I mean,
`something -- I'm not just sending it there for no reason. Something at the
`other end of the tunnel has to do something with it for some reason. So if
`you encrypt it or decrypt it, aren't you decrypting it for a certain reason or a
`reason that it's either going to some other computer or it's going to have
`some other function done with it? We are not just sending it for no reason.
`MR. KATZ: I'm not sure I entirely follow the question. By way
`of example, if you were communicating through a VPN with a secure
`website and there was a web server responding to your request, then
`potentially your request would be encrypted and the web server would do its
`processing, would render some sort of a web page and then would encrypt
`that web page before sending it back to you.
`JUDGE PETRAVICK: So the web page would send -- you would
`get your request and it would do something with it?
`MR. KATZ: The web server would receive your request and
`would service your request.
`
`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
`
`
`
`
`
` 16
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`
`JUDGE PETRAVICK: So there's some sort of service going on at
`the other end of the tunnel?
`MR. KATZ: In that example, right, that was a web server
`providing a request, servicing your web page request.
`JUDGE FENICK: Would that web server be a proxy?
`MR. KATZ: No. The proxy -- a proxy server is a completely
`separate device. It will accept requests on behalf of the client and then
`establish a connection to some other service -- server and will issue requests
`to the server. In some cases, the proxy server may even, if it already has the
`information from a previous request, it could service the request itself and
`send the information back. We provided some examples of this and the
`interaction between the VPN and a proxy server in our response on pages 25
`and 26, I believe. And that was with respect to another court case that
`analyzed both proxy servers and an optional VPN component.
`JUDGE HUDALLA: You say in your papers that there has to be
`some sort of proxy function performed at the end point. Could you describe
`what a proxy function is?
`MR. KATZ: Be careful about that part of the question when you
`say at the end point. So the proxy function is accepting a request on behalf
`of, for example, the -- well, accepting a request from the client. And then if
`the proxy server is unable to service the request on its own, it issues a
`connection to the server and obtains something back from the server and
`then sends the information on. It prevents a direct connection between the
`client and the ultimate server. So there's two aspects here. It accepts
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 17
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`requests and then it will reissue requests. And it prevents this idea of the
`client connecting directly to a server.
`As in the example we just talked about, the web server, where in a
`VPN environment, that client will speak directly to the web server. Even
`though it's an encrypted path, it's still the client speaking directly to the web
`server.
`
`JUDGE HUDALLA: I guess I have a bit of a problem with that,
`because that seems to be narrower than your construction. Your proposed
`construction accepts requests from the device and acts on behalf of the
`device.
`
`MR. KATZ: It's this part about accepts requests from the device.
`That's the part that was primarily ignored by the petitioners in their
`arguments. They went back to the idea of, well, it acts on behalf of the
`device. Well, you can point to almost anything in a network along a path
`and say it acts on behalf of the device. A network switch, a network router,
`any of those things acts on behalf of the device. But a proxy server has a
`well known function in the art. It accepts requests and then it will establish
`a connection with the server, get the information back and then talk back to
`the client.
`JUDGE HUDALLA: Let's talk about what you call the notional
`VPN gateway. You would admit that it acts on behalf of a device, right?
`MR. KATZ: Many network components act on behalf of the
`device. So in that loose terminology, it would, but no more so than any
`other generic network switch or network router that passes packets through.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 18
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`
`JUDGE HUDALLA: And then let's move on to the accepts
`requests from the device. Isn't that notional piece of the network accepting
`requests from the VPN server at the beginning of the tunnel?
`MR. KATZ: At the beginning of the tunnel, well, it passes the
`request through. It does not accept the request to service the requests. And
`we seem to be playing a little bit with terminology here, but --
`JUDGE HUDALLA: Well, I'm trying to apply your proposed
`construction here. I guess you are trying to draw a distinction between
`accepting a request and acting upon it? Is that where you are going with
`this?
`
`MR. KATZ: Certainly, from a -- a proxy server would need to
`accept the request and then establish a connection to the remote -- to the
`other server and then service -- effectively service the request back to the
`client. So there are a number of aspects: Accepting the request, establishing
`the connection to the ultimate server. But the part of our construction that is
`crucial here is the accepting the request.
`And there's -- keep in mind, too, that this is not a nonce word.
`This is a component that was known in the art as of 2005. We've got
`dictionary definitions that explain what it is. So a person of ordinary skill in
`the art would understand that what this component does, and it's a
`completely different function than a gateway. It's a completely different
`function than a VPN. That's why we submitted those dictionary definitions,
`so that one could easily distinguish the functions between a proxy server
`versus a VPN or a proxy server versus a gateway.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 19
`
`
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`
`
`JUDGE HUDALLA: I guess that's where I have a bit of a
`problem. I mean, I understand you've put in some extrinsic evidence. But if
`we are looking directly at your construction, it's pretty broad, and it could
`potentially cover this VPN connection that petitioner is pointing to.
`MR. KATZ: Again, the important part is that it accepts requests.
`It needs to accept a request. So going back to the example of web server,
`there is, for example, an HTTP request that goes out to a web server. If it
`goes through a proxy server, the proxy server accepts that request, and then
`it may try to serve that request on its own or it may go out to an ultimate
`web server and reissue, reconnect to that web server. That is accepting the
`request.
`The VPN components are a pass-through. The gateways are a
`pass-through. So there's still a connection, right, between the client and the
`ultimate server. When you put the proxy server in the middle, it's the proxy
`server that accepts that request. It accepts the request. It doesn't just
`forward the package through after encapsulating or decapsulating the
`packets. There's a big difference.
`JUDGE HUDALLA: I think I understand your position.
`JUDGE FENICK: Can I ask about the specification of the '306
`patent. I
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
