UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TESO LT, UAB; CODE200, UAB; METACLUSTER LT, UAB; AND
`OXYSALES, UAB, Petitioners,
`
`v.
`
`LUMINATI NETWORKS LTD.,
`Patent Owner.
`____________
`
`Case IPR2020-00249
`Patent No. 10,637,968
`____________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,637,968
`
`
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

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`TABLE OF CONTENTS
`
`I.
`II.
`
`
`INTRODUCTION ........................................................................................... 1
`STATUTORY PREDICATES ........................................................................ 1
`A. Mandatory Notices (37 CFR § 42.8) ..................................................... 1
`1. Real Parties-In-Interest ..................................................................... 1
`2. Related Matters ................................................................................ 1
`3. Lead and Back-Up Counsel ............................................................. 3
`4. Service Information .......................................................................... 4
`Payment of Fees (37 CFR § 42.103) ..................................................... 4
`B.
`Certification of Standing (37 CFR § 42.104(a)) ................................... 4
`C.
`Identification of Challenges (37 CFR § 42.104(b)(1)-(2)) ................... 5
`D.
`III. INSTITUTION SHOULD BE GRANTED (35 U.S.C. § 314(a)) ................... 5
`A.
`Factor 1 .................................................................................................. 6
`B.
`Factor 2 .................................................................................................. 6
`C.
`Factor 3 .................................................................................................. 7
`D.
`Factor 4 .................................................................................................. 8
`E.
`Factor 5 .................................................................................................. 8
`F.
`Factor 6 .................................................................................................. 8
`IV. OVERVIEW OF THE PATENT ..................................................................... 9
`A.
`Claims .................................................................................................... 9
`B.
`Specification .......................................................................................... 9
`C.
`Priority Date ........................................................................................ 10
`LEVEL OF SKILL IN THE ART ................................................................. 10
`V.
`VI. CLAIM CONSTRUCTION (37 CFR § 42.104(b)(3)) .................................. 11
`VII. OVERVIEW OF PRIOR ART REFERENCES ............................................ 11
`A. MorphMix ........................................................................................... 11
`B.
`Cottrell ................................................................................................. 12
`C.
`RFC 2616 ............................................................................................ 12
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`VIII. GROUNDS FOR INVALIDITY (37 CFR § 42.104(b)(4)-(5)) .................... 13
`A. GROUND 1: ANTICIPATION OF CLAIMS 1-2, 13-17,
`26-28 BY MORPHMIX ...................................................................... 13
`1. Claim 1 ........................................................................................... 15
`a) Preamble ................................................................................... 15
`b) Claim Step (a) (“identifying, by the requesting client device,
` an HTTP or HTTPS request for the first content”) .................. 16
`c) Claim Step (b) (“selecting, by the requesting client device,
` an IP address from the list”) ..................................................... 19
`d) Claim Step (c) (“sending, by the requesting client device,
` to the second server using the second IP address over the
`
` Internet in response to the identifying and the selecting,
` the first content identifier and the selected IP address”) .......... 20
`e) Claim Step (d) (“receiving, by the requesting client device,
` over the Internet in response to the sending, from the second
`
` server using the selected IP address, the first content”) ........... 22
`2. Claim 2 ........................................................................................... 24
`3. Claim 13 ......................................................................................... 26
`4. Claim 14 ......................................................................................... 26
`5. Claim 15 ......................................................................................... 27
`6. Claim 16 ......................................................................................... 29
`7. Claim 17 ......................................................................................... 30
`8. Claim 26 ......................................................................................... 31
`9. Claim 27 ......................................................................................... 32
`10. Claim 28 ......................................................................................... 33
`B. GROUND 2: OBVIOUSNESS OF CLAIMS 1-2, 8-9, 11-18, 26-28
`BY MORPHMIX + RFC 2616 + GENERAL KNOWLEDGE .......... 34
`1. Claim 1 ........................................................................................... 36
`2. Claim 2 ........................................................................................... 38
`3. Claims 8-9 ...................................................................................... 39
`4. Claims 11-12 .................................................................................. 40
`5. Claim 15-16 .................................................................................... 41
`6. Claim 18 ......................................................................................... 43
`iii
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`
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`7. Claims 13-14, 17, 26-28 ................................................................. 44
`C. GROUND 3: OBVIOUSNESS OF CLAIMS 1-2, 8-9, 11-12,
`15-18, 24, 26-28 BY COTTRELL + RFC 2616 + GENERAL
`KNOWLEDGE ................................................................................... 44
`1. Claim 1 ........................................................................................... 49
`a) Preamble .................................................................................... 49
`b) Claim Step (a) (“identifying, by the requesting client device,
` an HTTP or HTTPS request for the first content”) ................... 49
`c) Claim Step (b) (“selecting, by the requesting client device,
` an IP address from the list”) ...................................................... 52
`d) Claim Step (c) (“sending, by the requesting client device, to
` the second server using the second IP address over the
` Internet in response to the identifying and the selecting, the
` first content identifier and the selected IP address”) ................ 54
`e) Claim Step (d) (“receiving, by the requesting client device,
` over the Internet in response to the sending, from the second
` server using the selected IP address, the first content”) ........... 59
`2. Claim 2 ........................................................................................... 62
`3. Claims 8-9 ...................................................................................... 63
`4. Claims 11-12 .................................................................................. 63
`5. Claims 15-16 .................................................................................. 65
`6. Claims 17-18 .................................................................................. 66
`7. Claim 24 ......................................................................................... 67
`8. Claim 26 ......................................................................................... 67
`9. Claim 27 ......................................................................................... 68
`10. Claim 28 ......................................................................................... 68
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`iv
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`EXHIBIT LIST
`
`Description
`United States Patent No. 10,637,968 to Shribman, et al.
`File History for United States Patent No. 10,637,968
`Amended Complaint for Patent Infringement, Luminati Networks
`Ltd. v. Code200, UAB, et al., 2:19-cv-00396-JRG (E.D. Tex.)
`Minute Entry: Scheduling Conference, Luminati Networks Ltd. v.
`Code200, UAB, et al., 2:19-cv-00396-JRG (E.D. Tex.)
`Docket Control Order, Luminati Networks Ltd. v. Code200, UAB,
`et al., 2:19-cv-00396-JRG (E.D. Tex.)
`Luminati Mtn. to Consolidate and Reset Trial, Luminati Networks
`Ltd. v. UAB Tesonet, et al., 2:18-cv-00299-JRG (E.D. Tex.)
`Order: Pretrial Conference, Luminati Networks Ltd. v. UAB
`Tesonet, et al., 2:18-cv-00299-JRG (E.D. Tex.)
`Order, Infernal Tech., LLC v. Sony Interactive Ent. LLC, 2:19-cv-
`00248-JRG (E.D. Tex.)
`Complaint for Patent Infringement, Luminati Networks Ltd. v. Teso
`LT, UAB, et al., 2:19-cv-00395-JRG (E.D. Tex.)
`Petitioner’s Chart of Challenged Claims
`Declaration of Michael Freedman, Ph. D. with curriculum vitae and
`testifying list
`Network Working Group, RFC 2616
`Rennhard, Marc, MorphMix – A Peer-to-Peer-based System for
`Anonymous Internet Access (2004) (Doctoral Thesis)
`Declaration of Marc Rennhard (regarding MorphMix)
`Declaration of Bernhard Plattner (regarding MorphMix)
`Declaration of Andreas Berz (regarding MorphMix)
`United States Patent App. Pub. No. 2008/0196098 to Cottrell
`Network Working Group, RFC 1122
`United States Patent App. Pub. No. 2006/0059091 to Wang
`United States Patent No. 7,007,228 to Carro
`ACM Award Winners, Michael J. Freedman
`Luminati’s Opposition to Defendants’ Rule 12(b)(6) Motion to
`Dismiss, Luminati Networks Ltd. v. Code200, UAB, et al., 2:19-cv-
`00396-JRG (E.D. Tex.)
`Network Working Group, RFC 791
`Network Working Group, RFC 2460
`
`v
`
`Exhibit No.
`1001
`1002
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`1011
`
`1012
`1013
`
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`
`1023
`1024
`
`
`
`

`

`Network Working Group, RFC 793
`Network Working Group, RFC 959
`Network Working Group, RFC 821
`Network Working Group, RFC 918
`Network Working Group, RFC 937
`Network Working Group, RFC 1939
`Network Working Group, RFC 1034
`Network Working Group, RFC 1035
`Network Working Group, RFC 1945
`to Dismiss,
`Luminait’s Opposition
`to Defendants’ Motion
`Luminati Networks Ltd. v. Teso LT, UAB, et al., 2:19-cv-00395-
`JRG (E.D. Tex.)
`Luminati’s Opening Claim Construction Brief, Luminati Networks
`Ltd. v. UAB Tesonet, et al., 2:18-cv-00299-JRG (E.D. Tex.)
`Google Scholar: MorphMix Citations
`
`1025
`1026
`1027
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`
`1035
`
`1036
`
`
`
`
`
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`vi
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`

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`I.
`
`INTRODUCTION
`
`U.S. Patent No. 10,637,968 (“Patent”), with a priority date of 2009, claims the
`
`sending of basic Internet information through a proxy device that retrieves content
`
`from the target web server and returns the content to the requesting device. Not
`
`surprisingly, the alleged invention was well known to a person of ordinary skill in
`
`the art as of 2009 (“POSA”) and is invalidated by the MorphMix and Cottrell
`
`references discussed herein. Neither of these references were before the examiner
`
`during prosecution. In short, Luminati did not come close to being the first to invent
`
`a web proxy, and its Patent should be invalidated.
`
`II.
`
`STATUTORY PREDICATES
`
`A. Mandatory Notices (37 CFR § 42.8)
`1.
`Real Parties-In-Interest
`The real parties-in-interest are the Petitioners Teso LT, UAB, Code200, UAB,
`
`Metacluster LT, UAB, and Oxysales, UAB (collectively, “Petitioners”); as well as
`
`coretech lt, UAB.
`
`2.
`Related Matters
`The Patent claims the benefit of provision application 61/249,624, and is a
`
`continuation of (among other applications) U.S. Application No. 14/025,109.
`
`IPR2020-01266 asserts challenges to U.S. Patent No. 10,257,319, which claims the
`
`benefit of the same provisional, and is a continuation of the same application.
`
`Similarly, IPR2020-01358 asserts challenges to U.S. Patent No. 10,484,510, which
`1
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`

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`claims the benefit of the same provisional, and is a continuation of the same
`
`application. Similarly, IPR2021-00122 asserts challenges to U.S. Patent No.
`
`10,484,511, which claims the benefit of the same provisional, and is a continuation
`
`of the same application.
`
`The Patent is currently the subject of the litigation styled Luminati Networks
`
`Ltd. v. Code200, UAB, et al., 2:19-cv-00396-JRG (E.D. Tex.) (with U.S. Pat. No.
`
`10,484,511 also being asserted in that litigation). The Patent is also currently the
`
`subject of the litigation styled Luminati Networks, Ltd. v. NetNut, Ltd., 2:20-cv-
`
`00188-JRG (E.D. Tex.) and Luminati Networks Ltd. v. Tefincom S.A. D/B/A
`
`NordVPN, 2:19-cv-00414-JRG (E.D. Tex.). Further, U.S. Pat. Nos. 10,257,319 and
`
`10,484,510 (both claiming the benefit of the Patent’s provisional application) are
`
`currently the subject of the litigation styled Luminati Networks Ltd. v. Teso LT, UAB,
`
`et al., 2:19-cv-00395-JRG (E.D. Tex.).
`
`The Patent Application Information Retrieval (PAIR) system indicates that
`
`U.S. Application No. 16/807,661 (pending) claims the benefit of 16/396,696 (the
`
`Patent’s application number). Further, the following patent applications and patents
`
`claim the benefit of 61/249,624 (the Patent’s provisional application number):
`
`12/836,059 (issued as U.S. Pat. 8,560,604), 14/025,109 (issued as U.S. Pat.
`
`10,069,936), 15/957,942 (issued as U.S. Pat. 10,313,484), 15/957,945 (issued as
`
`U.S. Pat. 10,257,319), 15/957,950 (issued as U.S. Pat. 10,225,374), 16/031,636
`
`
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`2
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`(issued as U.S. Pat. 10,616,375), 16/278,106 (issued as U.S. Pat. 10,491,712),
`
`16/278,107 (issued as U.S. Pat. 10,484,510), 16/278,109 (issued as U.S. Pat.
`
`10,484,511), 16/278,104 (issued as U.S. Pat. 10,523,788), 16/278,105 (issued as
`
`U.S. Pat. 10,469,628), 16/368,002 (issued as U.S. Pat. 10,582,013), 16/368,041
`
`(issued as U.S. Pat. 10,582,014), 16/396,695 (issued as U.S. Pat. 10,491,713),
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`16/396,696 (issued as U.S. Pat. 10,637,968), 16/600,504 (pending), 16/600,505
`
`(pending), 16/600,506 (pending), 16/600,507 (pending), 16/662,800 (pending),
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`16/693,306 (pending), 16/782,073 (pending), 16/782,076 (pending), 16/807,661
`
`(pending), 16/807,691 (pending), 16/910,724 (issued as U.S. Pat. 10,785,347),
`
`16/910,863 (issued as U.S. Pat. 10,805,429), 17/019,267 (pending), 17/019,268
`
`(pending), 17/098,392 (pending), and PCT/US10/51881 (published as WO
`
`2011/044402).
`
`3.
`Lead and Back-Up Counsel
`Lead Counsel
`Craig Tolliver
`Registration No. 45,975
`ctolliver@ccrglaw.com
`469-587-7263
`
`Postal and Hand-Delivery Address
`Charhon Callahan Robson & Garza,
`PLLC
`3333 Lee Parkway
`Suite 460
`Dallas, TX 75219
`
`
`Back-Up Counsel
`George “Jorde” Scott
`Registration No. 62,859
`jscott@ccrglaw.com
`469-587-7264
`
`Postal and Hand-Delivery Address
`Charhon Callahan Robson & Garza,
`PLLC
`3333 Lee Parkway
`Suite 460
`Dallas, TX 75219
`
`
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`4.
`
`Service Information
`
`Electronic mail
`
`1. ctolliver@ccrglaw.com
`2. jscott@ccrglaw.com
`
`(and hand-delivery) mailing
`
`Postal
`address
`
`Charhon Callahan Robson & Garza
`3333 Lee Parkway, Suite 460
`Dallas, Texas 75219
`
`Telephone
`
`Facsimile
`
`(214) 521-6400
`
`(214) 764-8392
`
`
`
`Additionally, Petitioners consent to electronic service via e-mail at the e-mail
`
`addresses noted above.
`
`B.
`Payment of Fees (37 CFR § 42.103)
`The required fee is paid through Deposit Acct. No. 603576 (Customer ID No.
`
`172361), and the office is authorized to charge any fee deficiencies and credit any
`
`overpayments to that same account.
`
`C. Certification of Standing (37 CFR § 42.104(a))
`Petitioners certify that the Patent is available for IPR and that Petitioners are
`
`not barred or estopped from requesting IPR of the Challenged Claims on the grounds
`
`alleged herein. Luminati filed an amended complaint in Luminati Networks Ltd. v.
`
`Code200, UAB, et al., 2:19-cv-00396-JRG (E.D. Tex.) alleging infringement by
`
`Code200, UAB; Metacluster LT, UAB; and Oxysales, UAB of the Patent on June 9,
`
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`2020. Ex. 1003. This date is less than twelve months prior to filing of this Petition.
`
`Petitioners have not filed a civil action challenging the validity of any claim of the
`
`Patent within the meaning of 35 U.S.C. 315(a).
`
`D.
`Identification of Challenges (37 CFR § 42.104(b)(1)-(2))
`Petitioners request cancellation of the challenged claims on the following
`
`grounds:
`
`Ground
`
`Claims
`
`Challenge
`
`1-2, 13-17, 26-
`28
`
`1-2, 8-9, 11-18,
`26-28
`
`Anticipated by MorphMix (§102)
`
`Obvious in view of MorphMix + Knowledge of
`POSA + Request for Comments (“RFC”) 2616
`(§103)
`
`1-2, 8-9, 11-12,
`15-18, 24, 26-28
`
`Obvious in view of Cottrell + Knowledge of
`POSA + RFC 2616 (§103)
`
`1
`
`2
`
`3
`
`
`
`III.
`
`INSTITUTION SHOULD BE GRANTED (35 U.S.C. § 314(A))
`
`Petitioner Teso LT has been sued by Luminati for alleged patent infringement,
`
`but Luminati (as of yet) has not filed any lawsuit alleging infringement of the Patent
`
`by Teso LT. This weighs in favor of institution with respect to Teso LT.
`
`Teso LT’s co-petitioners, which are sister entities of Teso LT, were sued by
`
`Luminati for alleged infringement of the Patent, as noted above. As to the co-
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`

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`petitioners, however, the Fintiv1 factors show that the Board should not exercise its
`
`discretion to deny institution in view of Luminati Networks Ltd. v. Code200, UAB,
`
`et al., 2:19-cv-00396-JRG (E.D. Tex.) (“Lawsuit”).
`
`A.
`Factor 1
`District Court Stay. The Scheduling Conference did not occur until July 20,
`
`2020. Ex. 1004. The Docket Control Order issued August 5, 2020, and claim
`
`construction is set for January 29, 2021. Ex. 1005.
`
`No party has requested a stay of the Lawsuit pending the IPR, and the Board
`
`has previously “decline[d] to infer” how a District Court would decide a stay motion.
`
`Fintiv, Paper 15 at 12. Factor 1 is neutral.
`
`B.
`Factor 2
`Proximity of Trial. While jury selection is currently set for July 12, 2021
`
`(Ex. 1005), Luminati has previously sought to abandon its trial dates as the “day of
`
`reckoning” approaches. In Luminati Networks Ltd. v. UAB Tesonet and Metacluster
`
`UAB, No. 2:18-cv-00299-JRG (E.D.Tex.) (“Prior Lawsuit”), Luminati, on
`
`December 23, 2019, filed an opposed motion to reset the trial date just over one week
`
`before the January 3, 2020 pretrial hearing. Ex. 1006 at 2. Luminati sought to delay
`
`
`1 Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB March 20, 2020)
`(precedential, designated May 5, 2020)
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`the February 3, 2020 trial date for at least five months until “after July 2020.” Id. at
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`1.
`
`The parties settled the Prior Lawsuit at the pretrial conference, prior to
`
`resolution of dispositive motions. Ex. 1007.
`
`On November 20, 2020 in the Infernal Technology, LLC v. Sony Interactive
`
`case, Chief Judge Gilstrap continued jury trials scheduled from December 2020
`
`through February of 2021, and sua sponte issued the Order in cases where motions
`
`for continuance had not been filed. Ex. 1008 at 1. Petitioners do not yet know
`
`whether or how this Order will affect the July 12, 2021 trial date, but common sense
`
`counsels that a continuance of three months of jury trials in one of this country’s
`
`busiest patent dockets may impact trial dates in 2021.
`
`In view of Luminati’s history, the busy Eastern District of Texas docket, and
`
`the potential for COVID-related delays (which are more likely to affect a jury trial),
`
`Factor 2 is neutral.
`
`C.
`Factor 3
`Investment in the Parallel Proceedings. The Lawsuit is at an early stage,
`
`with the Docket Control Order issuing August 5, 2020. Ex. 1005. Luminati did not
`
`provide its infringement contentions identifying its asserted claims until July 6,
`
`2020. Id. This Petition was filed only five months after the asserted claims were
`
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`disclosed, and nearly six months before co-petitioners’ statutory deadline for filing
`
`an IPR. Id. Expert discovery does not close until March 29, 2021. Id.
`
`Given the early stages of the case, and prompt filing of this Petition, Factor 3
`
`weighs strongly in favor of institution.
`
`D.
`Factor 4
`Overlap of Claims. Luminati asserts claims 1-2, 8-9, 11-12, 15, 17-18, 26-28
`
`in the Lawsuit. In addition to these claims, this Petition also challenges claims 13-
`
`14, 16, and 24. Factor 4 weighs in favor of institution.
`
`E.
`Factor 5
`Overlap of Parties. Petitioner Teso LT is not a defendant in the Lawsuit,
`
`although it has been sued by Luminati as to alleged infringement of other patents
`
`addressing related subject matter. Ex. 1009. Factor 5 weighs in favor of institution.
`
`F.
`Factor 6
`Other Circumstances. The challenged Patent is extraordinarily weak.
`
`Luminati has essentially claimed the exchange of standard Internet information via
`
`a typical intermediary computer device to perform web requests for a client—a basic
`
`concept well known for decades. Policy favors the Board instituting review to stop
`
`Luminati from pursuing infringement claims based on an invalid alleged invention
`
`known well before the 2009 priority date.
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`IV. OVERVIEW OF THE PATENT
`
`A. Claims
`Claim 1, the only independent claim of the Patent, is included in the attached
`
`Exhibit 1010, which lists the Challenged Claims.
`
`The Patent claims ordinary devices that exchange standard Internet requests
`
`or content in a routine way. Claim 1 recites the standard use of an intermediary,
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`where a “requesting client device”—which stores a group of IP addresses—sends a
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`request for web server content to an intermediary “second server” and thereafter
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`receives, from that intermediary, the requested content.
`
`The dependent Challenged Claims merely recite additional steps known to a
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`POSA, including that “TCP/IP” is used or that the client device executes a web
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`browser.
`
`B.
`Specification
`The Patent’s specification confirms that claim terms used in the Patent have
`
`broad and generic meanings and may be satisfied by standard computers. Figure 3
`
`depicts “peer[s],” a “client,” and an “agent” communicating, with the “agent”
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`forming a connection to the web server. Ex. 1001, Fig. 3. The Patent specification
`
`states that “[t]he network 100 of FIG. 3 contains multiple communication devices,”
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`and that “each communication device may serve as a client, peer, or agent.” Id. at
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`4:44-50 (emphasis added).
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`A “communication device 200” contains “general components of a computer”
`
`and “may serve as a client, agent, or peer.” Id. at 5:52-57. For example, “[t]he
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`communication device 200 includes a processor 202, memory 210, [and] at least one
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`storage device 208[.]” Id. at 5:58-60. Other off-the-shelf features of the
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`“communication device” include “RAM” and a “hard drive,” an “operating system,”
`
`and a “keyboard” and “mouse.” Id. at 6:6-19, 25-37, 61-63.
`
`C.
`Priority Date
`Petitioners do not contest (for purposes of this Petition only) the Patent’s
`
`asserted October 8, 2009 priority date (“Priority Date”).
`
`V. LEVEL OF SKILL IN THE ART
`
`Dr. Michael Freedman opines that a POSA to which the Patent pertains would
`
`have at least a bachelor’s degree in Computer Science or related field (or equivalent
`
`experience), as well as two or more years’ experience working with and
`
`programming networked computer systems as of the Priority Date. Such a person
`
`would be familiar with the underlying principles of Web, Internet, or network
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`communication, data transfer, and content sharing across networks, including the
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`HTTP and TCP/IP protocols. Ex. 1011, ¶¶ 27-29. Dr. Freedman also opines as to the
`
`relevant knowledge a POSA would possess as of the Priority Date. Id. at ¶¶ 30-55.
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`10
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`VI. CLAIM CONSTRUCTION (37 CFR § 42.104(B)(3))
`
`The claim terms at issue in the Challenged Claims require no express claim
`
`construction, as the plain and ordinary meanings apply. Petitioners understand that
`
`issues of indefiniteness are not resolved in an IPR, but Petitioners do not waive any
`
`applicable indefiniteness challenges.
`
`As discussed above in Section IV.B, general purpose computers serve as the
`
`devices cited in the Patent, and the terms “device” and “server” are used
`
`interchangeably and refer to the role of a device at a given time. This understanding
`
`that “client” and “server” refer to roles is confirmed by pertinent Internet standards,
`
`including RFC 2616, the standard for HTTP/1.1. RFC 2616 confirms that “client”
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`and “server” refer “only to the role being performed by the program for a particular
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`connection.” Ex. 1012 at §1.3.
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`VII. OVERVIEW OF PRIOR ART REFERENCES
`
`A. MorphMix
`MorphMix - A Peer-to-Peer-based System for Anonymous Internet Access
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`(“MorphMix” (Ex. 1013)) is a doctoral thesis authored by Marc Rennhard, of the
`
`Swiss Federal Institute of Technology, Computer Engineering and Networks
`
`Laboratory; Zurich, Switzerland. MorphMix states it was published in 2004. Dr.
`
`Rennhard, his supervisor Dr. Plattner, and the Swiss National Library, each
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`confirmed the 2004 publication date. Exs. 1014-16; Ex. 1011, ¶¶ 56-58. MorphMix
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`is accordingly prior art. 35 U.S.C. § 102(b). MorphMix was not before the Patent
`
`Office during prosecution of the Patent. See Ex. 1002.
`
`B. Cottrell
`U.S. Patent Publication 2008/0196098 (“Cottrell” (Ex. 1017)) published
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`August 14, 2008. Cottrell is accordingly prior art under 35 U.S.C. § 102(b). Cottrell
`
`was not before the Patent Office during prosecution of the Patent. See Ex. 1002.
`
`C. RFC 2616
`Request for Comments (“RFC”) 2616 was a definitive specification for the
`
`HTTP/1.1 protocol. RFC 2616 was published by the HTTP Working Group of the
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`Internet Engineering Task Force (IETF) in June 1999. RFC 2616 is discussed in the
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`Patent specification and was submitted during prosecution. Ex. 1001, 4:63-5:7,
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`16:21-28; Ex. 1002, p. 405 (IDS listing RFC 2616 as prior art). RFCs (and like
`
`standards documents) posted on the Internet are published in the ordinary course by
`
`standards organizations, and are intended to be viewed by the interested engineering
`
`audience as of their dates of publication as stated on the cover of each. Ex. 1011, ¶¶
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`60-61.
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`VIII. GROUNDS FOR INVALIDITY (37 CFR § 42.104(B)(4)-(5))
`
`A. GROUND 1: ANTICIPATION OF CLAIMS 1-2, 13-17, 26-28 BY
`MORPHMIX
`MorphMix focuses on “achieving anonymous Internet access for low-latency
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`applications such as web browsing.” Ex. 1013 at 14.2 All an individual needs to join
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`MorphMix is a computer “connected to the Internet” that has an IP address and is
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`capable of running applications “such as web browsers.” Id. at 234. A computer
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`participating in MorphMix is called a “node,” and “[e]very node joining the system
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`can itself establish circuits via other nodes to access a server anonymously, but can
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`also be part of circuits established by other nodes….” Id. at 98.
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`Nodes are identified by their IP addresses and connect to other nodes with a
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`TCP connection. Id. at 98-99. Node paths are built first using a node’s “neighbours”
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`for the initial node in the tunnel, which are nodes with which a pre-established TCP
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`connection (“virtual link”) has already been made, id. at 99, and then non-
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`neighbours, id. at 116-18. MorphMix Figure 5.1 shows one example path of nodes
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`(anonymous tunnel): initiator node (a), to its “neighbour” intermediate node (b), to
`
`a final node (c), to server (s):
`
`
`2 Citations use MorphMix’s pagination: page 1 (page 21 of Ex. 1013) is the first page
`of the thesis.
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`
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`MorphMix “focus[es] on web browsing” and “supports HTTP (both versions
`
`1.0 and 1.1) and HTTPS.” Id. at 103. “[T]he basic functionality of MorphMix” is
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`shown by “illustrating how a client application can communicate anonymously with
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`a server application.” Id. at 95. Client applications, such as web browsers, “access
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`MorphMix through an access program that acts as a proxy.” Id. at 103. MorphMix
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`Figure 5.4 shows how a web browser (on initiator node (a)) sends a web request
`
`using anonymous connections within the anonymous tunnel of node (a), to node (b),
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`to node (c), to server:
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`To access an Internet web server, “the client application can send the
`
`information about the server to contact and the application data together to the access
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`program, as is done by web browsers when they use a web proxy.” Id. at 105. The
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`target server information and application data (discussed in more detail below) are
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`forwarded through the anonymous tunnel to the final node (node (c)), which itself
`
`then connects to the target server. Id. at 103-05. “Sending data back from the server
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`to the client works exactly in the opposite way.” Id. at 105.
`
`1.
`
`Claim 1
`a)
`Preamble
`Each preamble element is satisfied for the reasons provided in the discussion
`
`of claim steps (a)-(d), mapping onto MorphMix (in the discussed example path) as
`
`follows:
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`Requesting client device: node (a)
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`First web server: server (s)
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`Second server: node (b)
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`First content identifier: URL
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`First content: web page at the requested URL
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`MorphMix discloses the preamble. Ex. 1011, ¶¶ 62-71.
`
`b) Claim Step (a) (“identifying, by the requesting client
`device, an HTTP or HTTPS request for the first
`content”)
`MorphMix describes the process by which node (a) (“requesting client
`
`device”) identifies an HTTP web request for content received from a client
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`application, such as a web browser. Ex. 1013 at 103-04. “[A] MorphMix node listens
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`for anonymous communication requests by client applications on TCP port pappl….”
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`Id. “[T]he connection from the client application to a is identified with the socket
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`pair ipa:pclient-ipa:pappl….” Id. Annotated MorphMix figure 5.4 shows the first step of
`
`the web request: “[t]he client application sends [application data] AD to a”:
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`“[I]n the case of web browsing, embedded objects in a web page are
`
`automatically requested by the browser.” Id. at 107. The “application data” includes
`
`the data identifying the requested web page. MorphMix focuses on “web browsing,”
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`which involves the sending of HTTP requests. Id. at 103. Indeed, MorphMix’s
`
`performance was analyzed by considering “download times for HTTP” when
`
`“accessing the web server through MorphMix.” Id. at 207.
`
`MorphMix further discloses that HTTP referrers, part of HTTP requests,
`
`include “the URL of the page the user is downloading.” Id. at 3-4. MorphMix
`
`supports and uses HTTP. Id. at 103. Analyzing web browsing, MorphMix discloses
`
`that “web requests sent and replies received by initiators” corresponds to the
`
`“application data sent and received if the web server is contacted directly.” Id. at
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`214. Further, the Patent acknowledges that HTTP utilizes content identifiers,
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`including URLs. Ex. 1001 at 8:24-31. A POSA would understand that the
`
`“application data” in MorphMix includes an HTTP request that includes a content
`
`identifier identifying the target web page and related content. Ex. 1011, ¶ 74.
`
`Furthermore, MorphMix also discloses that “the client application can send
`
`the information about the server to contact and the application data together to the
`
`access program, as is done by web browsers when they use a web proxy.” Ex. 1013
`
`at 105. When the client application only knows the “host name of the server,” id.,
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`“the initiator must not perform the address resolution using the domain name system
`
`(DNS).” Id. at 204. “Instead, the host name is sent…to the final node…. [O]nly the
`
`final node resolves the host name.” Id. at 105. A POSA would understand the “host
`
`name of the server” to be a content identifier identifying the target web page and
`
`related content. Ex. 1011, ¶ 75.
`
`Figure 5.4 above shows a user’s computer running both the client application
`
`(e.g., web browser), as well as the MorphMix access program (initiator node (a)).
`
`“[A]nyone owning a state-of-the-art compute