Notice 49

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL
Paper No.
Filed: March 21, 2016
Filed on behalf of: VirnetX Inc.
By:
Joseph E. Palys
Paul Hastings LLP
875 15th Street NW
Washington, DC 20005
Telephone: (202) 551-1996
Facsimile: (202) 551-0496
E-mail: josephpalys@paulhastings.com
Naveen Modi
Paul Hastings LLP
875 15th Street NW
Telephone: (202) 551-1990
Facsimile: (202) 551-0490
E-mail: naveenmodi@paulhastings.com
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 IPR2015-01046 1
Patent 6,502,135
Patent Owners Response
Apple Inc., who filed a petition in IPR2016-00062, has been joined as a Petitioner
in the instant proceeding.

Case No. IPR2015-01046
TABLE OF CONTENTS
I.
Introduction......................................................................................................1
II.
Claim Construction ..........................................................................................2
III.
A.
Virtual Private Network (VPN) (Claims 1, 4, 7, 10, and 12) ............4
B.
Domain Name Service (DNS) Request (Claims 1, 3, 4, 8, 10,

12) ........................................................................................................13
C.
Client Computer (Claims 1, 3, 4, 7, 10, 12) ....................................15
D.
Other Terms .........................................................................................17
Kiuchi Does Not Anticipate Claims 1, 3, 4, 7, 8, 10, and 12 ........................18

A.
Kiuchis Disclosure .............................................................................18
B.
Kiuchi Does Not Anticipate Independent Claim 1 .............................20
C.
1.
Kiuchi Does Not Disclose the Recited DNS Features ..............20
2.
The Alleged Request in Kiuchi Does Not Request an IP

Address Corresponding to a Domain Name Associated
with the Target Computer .......................................................22
3.
Kiuchis Client-Side Proxy and Server-Side Proxy Do

Not Disclose the Claimed Client and Target Computers..........24
4.
Kiuchi Does Not Disclose the Claimed VPN ...........................29

a)
Network ..........................................................................29
b)
Direct Communication ...................................................31
Kiuchi Does Not Anticipate Independent Claim 10 ...........................32

1.
Kiuchi Does Not Disclose the Recited DNS Features ..............32
2.
Kiuchi Does Not Disclose a DNS Proxy Server that

Generates a Request to Create a VPN ......................................32
3.

Returns an IP Address ...............................................................33
i

D.
Kiuchi Does Not Anticipate Dependent Claims 3, 4, 7, 8, and

12 .........................................................................................................34
1.
Kiuchi Does Not Disclose the Features of Claim 4 ..................35
2.
Kiuchi Does Not Disclose the Features of Claim 7 ..................36
IV.
Kiuchi and RFC 1034 Do Not Render Obvious Claim 8 ..............................37
V.
Dr. Guerins Testimony Should be Accorded Little, If Any, Weight ...........38

A.
Dr. Guerin Did Not Properly Analyze the Claims ..............................38

..............................................................39
VI.
Petitioners Have Failed to Prove All References Are Prior Art ....................41
A.
Petitioners Do Not Establish by a Preponderance of the

Evidence that RFC 1034 Was Publicly Accessible ............................42
B.
The Additional Evidence Presented by Petitioner Apple Is

Insufficient to Establish by a Preponderance of the Evidence
that RFC 1034 Was Publicly Accessible ............................................43
VII. Review is Barred by 35 U.S.C. 312(a)(2) and 315(b)-(c) ........................45

A.
The Petition Filed by Mangrove Fails to Name All of the Real

Parties-in-Interest ................................................................................46
1.
2.
The Complex Web of Mangrove Entities .................................46

a)
The Mangrove Entities ...................................................47
b)
The Unnamed Investors ..................................................51
c)
Recent Representations to the United States

Securities and Exchange Commission............................51
RPX Corporation.......................................................................52
..................................................................54
ii

4.
B.
Failure to Identify All RPIs Prohibits Review ..........................56
Review is Barred by 35 U.S.C. 315(b)-(c) .......................................57
VIII. Conclusion .....................................................................................................60
iii

TABLE OF AUTHORITIES
Page(s)
Cases
Aceto Agricultural Chems. Corp. v. Gowan Co.,
IPR2015-01016, Paper No. 15 (Oct. 2, 2015) ..............................................56, 57
Apple Inc. v. DSS Technology Management, Inc.,
IPR2015-00369, Paper No. 9 (June 25, 2015);...................................................42
Apple Inc. v. VirnetX Inc.,
IPR2014-00237, Paper No. 15 (May 14, 2014).................................................... 5
IPR2014-00404, Paper No. 42 (July 29, 2015) ............................................22, 24
IPR2015-00871, Paper No. 8 (Oct. 1, 2015) ......................................................10
Aspex Eyewear, Inc. v. Concepts In Optics, Inc.,
111 F. Appx 582 (Fed. Cir. 2004) ...............................................................38, 39
Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
IPR2013-00453, Paper No. 88 (Jan. 6, 2015) .....................................................56
Becton, Dickenson & Co. v. Tyco Healthcare Group, LP,
616 F.3d 1249 (Fed. Cir. 2010) ..........................................................................36
In re Bigio,
381 F.3d 1320 (Fed. Cir. 2004) ............................................................................9
Biogen Idec, Inc. v. GlaxoSmithKline LLC,
713 F.3d 1090 (Fed. Cir. 2013) ............................................................................9
Brand v. Miller,
487 F.3d 862 (Fed. Cir. 2007) ............................................................................38
Bruckelmyer v. Ground Heaters, Inc.,
445 F.3d 1374 (Fed. Cir. 2006) ..........................................................................41
Centricut, LLC v. Esab Group, Inc.,
390 F.3d 1361 (Fed. Cir. 2004) ..........................................................................38
iv

In re Cuozzo,
793 F.3d 1297 (Fed. Cir. 2015) ............................................................................4
Cuozzo Speed Techs., LLC v. Lee,
No. 15-446, 2016 WL 205946 (U.S. Jan. 15, 2016)............................................. 3
Cyber Corp. v. FAS Techs., Inc.,
138 F.3d 1448 (Fed. Cir. 1998) ............................................................................9
Dish Network L.L.C. v. Dragon Intellectual Property, LLC,
IPR2015-00499, Paper No. 7 (July 17, 2015) ....................................................42
Elec. Frontier Found. v. Pers. Audio, LLC,
IPR2014-00070, Paper No. 21 (Apr. 18, 2014) ..................................................43
EonNet LP v. Flagstar Bancorp.,
653 F.3d 1314 (Fed. Cir. 2011) ............................................................................6
Finnigan Corp. v. ITC,
180 F.3d 1354 (Fed. Cir. 1999) ..........................................................................45
Galderma S.A. v. Allergan Industrie, SAS,
IPR2014-01422, Paper No. 14 (Mar. 5, 2015) ...................................................50
Garmin Intl, Inc. v. Cuozzo Speed Techs. LLC,
IPR2012-00001, Paper No. 15 (Jan. 9, 2013) .....................................................10
GEA Process Eng., Inc. v. Steuben Foods, Inc.,
IPR2014-00041, Paper No. 15 (Dec. 23, 2014)..................................................56
Google Inc. v. Art+Com Innovationpool GMBH,
IPR2015-00788, Paper No. 7 (September 2, 2015); ...........................................42
Idle Free Sys., Inc. v. Bergstrom, Inc.,
IPR2012-00027, Paper No. 26 (June 11, 2013).................................................... 3
Kinetic Technologies, Inc. v. Skyworks Solutions, Inc.,
IPR2014-00690, Paper No. 43 (October 19, 2015) ............................................41
In re Klopfenstein,
380 F.3d 1345 (Fed. Cir. 2004) ..........................................................................41

Koito Mfg. Co. v. Turn-Key-Tech LLC,

381 F.3d 1142 (Fed. Cir. 2004) ..........................................................................38
Lantech Inc. v. Keip Machine Co.,
32 F.3d 542 (Fed. Cir. 1994) ..............................................................................36
Loughrin v. United States,
134 S. Ct. 2384 (2014) ........................................................................................59
Microsoft Corp. v. Proxyconn, Inc.,
789 F.3d 1292 (Fed. Cir. 2015) ..............................................................10, 11, 12
Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
IPR2013-00093, Paper No. 28 (Apr. 29, 2013) ..................................................10
Oshkosh Truck Corp. v. United States,
123 F.3d 1477 (Fed. Cir. 1997) ..........................................................................60
Power Integrations, Inc. v. Lee,
797 F.3d 1318 (Fed. Cir. 2015) ..........................................................................27
Proveris Scientific Corp. v. Innovasystems, Inc.,
536 F.3d 1256 (Fed. Cir. 2008) ....................................................................38, 39
Richardson v. Suzuki Motor Co.,
868 F.2d 1226 (Fed. Cir. 1989) ..........................................................................21
In re Robertson,
169 F.3d 743 (Fed. Cir. 1999) ............................................................................36
RPX Corp. v. VirnetX, Inc.,
IPR2014-00171, Paper No. 52 (June 23, 2014)..................................................51
Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP,
IPR2014-00514, Paper No. 18 (Sep. 9, 2014) ....................................................43
Schumer v. Lab. Computer Sys., Inc.,
308 F.3d 1304 (Fed. Cir. 2002) ....................................................................38, 39
In re Skvorecz,
580 F.3d 1262 (Fed. Cir. 2009) ............................................................................3
vi

Square Inc. v. Unwired Planet, LLC,

CBM2014-00156, Paper No. 22 (Feb. 26, 2015) ...............................................42
Straight Path IP Grp., Inc. v. Sipnet EU S.R.O.,
806 F.3d 1356 (Fed. Cir. 2015) ..............................................................10, 11, 12
Symantec Corp. v. Trustees of Columbia Univ. in the City of N.Y.,
IPR2015-00371, Paper No. 13 (July 17, 2015). .................................................42
Taylor v. Sturgell,
553 U.S. 880 (2008) ............................................................................................51
Tempo Lighting, Inc. v. Tivoli, LLC,
742 F.3d 973 (Fed. Cir. 2014) ......................................................................10, 11
Titanium Metals Corp. v. Banner,
778 F.2d 775 (Fed. Cir. 1985) ............................................................................21
In re Translogic Tech., Inc.,
504 F.3d 1249 (Fed. Cir. 2007) ............................................................................2
Typeright Keyboard Corp. v. Microsoft Corp.,
374 F.3d 1151 (Fed. Cir. 2004) ..........................................................................45
In re VirnetX Inc.,
No. 2016-119, slip op. (Fed. Cir. Mar. 18, 2016) ...............................................58
VirnetX Inc. v. Cisco Systems, Inc.,
767 F.3d 1308 (Fed. Cir. 2014) ...................................................................passim
Ex Parte Weideman,
Appeal No. 2008-3454, Decision on Appeal (BPAI Jan. 27, 2009) .................. 36
Xilinx, Inc. v. Intellectual Ventures I LLC,
IPR2013-00112, Paper No. 14 (June 27, 2013)..................................................10
In re Yamamoto,
740 F.2d 1569 (Fed. Cir. 1984) ............................................................................3
ZTE Corp. & ZTE (USA) Inc. v. ContentGuard Holdings Inc.,
IPR2013-00134, Paper No. 12 (June 19, 2013)..................................................10
vii

Statutes
28 U.S.C. 1746 ......................................................................................................39
35 U.S.C. 311(b) .............................................................................................41, 43
35 U.S.C. 311(c) ...................................................................................................60
35 U.S.C. 312(a)(2) ........................................................................................passim
35 U.S.C. 314(b) ...................................................................................................60
35 U.S.C. 315(b) ............................................................................................passim
35 U.S.C. 315(c) ............................................................................................passim
35 U.S.C. 316(e) .....................................................................................................1
Other Authorities
37 C.F.R. 11.18(b) ................................................................................................41
37 C.F.R. 42.2 .......................................................................................................39
37 C.F.R. 42.6(a)(4) ..............................................................................................41
37 C.F.R. 42.65(a)...........................................................................................42, 44
37 C.F.R. 42.100(b) ................................................................................................2
37 C.F.R. 42.122(b) ..............................................................................................60
154 Cong. Rec. S9988 (daily ed. Sept. 27, 2008) ....................................................59
77 Fed. Reg. 157 (Aug. 14, 2012)......................................................................50, 51
viii

LIST OF EXHIBITS
Exhibit
No.
2001
2002
2003
2004
2005
2006
2007
2008
2009
2010
2011
2012
2013
2014
2015
Description
Mangrove Partners Brochure, filed with the Securities and
Exchange Commission, March 27, 2015
Mangrove Partners Schedule A, filed with the Securities
and Exchange Commission,
Cayman Islands Search Report of Mangrove Partners
Form 13-F for Mangrove Partners, filed with the
Securities and Exchange Commission, February 17, 2015
Excerpt of Dictionary of Finance and Investment Terms,
Fifth Edition
Securities and Exchange Commission, May 15, 2015
Schedule 13G filed with the Securities and Exchange
Commission, for issuer Asta Funding, Inc., June 10, 2013
Commission, for issuer JGWPT Holdings, Inc.,
November 8, 2013
Commission, for issuer JGWPT Holdings, Inc., December
31, 2013
Commission, for issuer Asta Funding, Inc., December 31,
2013
Commission, for issuer The First Marblehead
Corporation, December 31, 2013
Commission, for issuer Asta Funding, Inc., December 31,
2014
Schedule 14A filed with the Securities and Exchange
Commission, reporting Mangrove Partners Press Release,
February 9, 2015
Schedule 14A filed with the Securities and Exchange
Commission, reporting Mangrove Partners Press Release,
February 12, 2015
Hedge Fund Regulation (2nd Edition), Scott J Lederman,
ix
Previously
Submitted
X
X
X
X
X
X
X
X
X
X

Exhibit
No.
2016
2017
2018
2019
2020
2021
2022
2023
2024
2025
2026
2027
2028
2029
2030
2031
Description
Chapter 2, Form Over Substance: Hedge Fund Structures
EDGAR Search Results, Mangrove Partners Fund
(Cayman), Ltd.
EDGAR Search Results, Mangrove Partners Master Fund,
Ltd.
Cayman Islands Search Report of The Mangrove Partners
Fund (Cayman), Ltd.
Cayman Islands Search Report of The Mangrove Partners
Master Fund, Ltd.
Form D for Mangrove Partners Fund, L.P., filed with the
Securities and Exchange Commission
Complaint For Civil Extortion, Malicious Prosecution,
and Unfair Business Practices Arising From U.S. Patent
Laws, Allergan, Inc. v. Ferrum Ferro, Capital, LLC, case
no. 8:15-cv-00992 (C.D. Cal. June 19, 2015)
New Hedge Fund Strategy: Dispute the Patent, Short the
Stock, The Wall Street Journal, April 7, 2015
Cayman Islands Search Report of Hayman Credes Master
Fund L.P.
Website of Maples and Calder, available at
http://www.maplesandcalder.com/officescontacts/cayman-islands/
Memorandum Opinion and Order in VirnetX Inc. v. Mitel
Networks Corp. et al., Case No. 6:11-CV-00018 (E.D.
Tex. Aug. 1, 2012)
Declaration of Dr. Fabian Monrose in IPR2014-00237
Glossary for the Linux FreeS/WAN Project
Excerpts from McGraw-Hill Computer Desktop
Encyclopedia (9th ed. 2001)
Microsofts Responsive Claim Construction Brief in
VirnetX, Inc. v. Microsoft Corp., Case No. 6:07-CV-80
(E.D. Tex. Jan. 20, 2009)
Defendants Responsive Claim Construction Brief in
VirnetX Inc. v. Cisco Systems, Inc., et al., Case No. 6:10CV-417 (E.D. Tex. Dec. 7, 2011)
Defendants Responsive Claim Construction Brief in
VirnetX Inc. v. Mitel Networks Corp. et al., Case No.
x
Previously
Submitted
X
X
X
X
X
X
X
X
X
X
X
X
X
X
X

Exhibit
No.
2032
2033
2034
2035
2036
2037
2038
2039
2040
2041
2042
2043
2044
2045
2046
2047
2048
2049
2050
Description
6:11-CV-00018 (E.D. Tex. June 11, 2012)
Plaintiff VirnetX Inc.s Opening Brief in Support of Its
Construction of Claims in VirnetX, Inc. v. Microsoft
Corp., Case No. 6:07-CV-80 (E.D. Tex. Dec. 30, 2008)
Memorandum Opinion and Order in VirnetX, Inc. v.
Microsoft Corp., Case No. 6:07-CV-80 (E.D. Tex. July
30, 2009)
Memorandum Opinion and Order in VirnetX Inc. v. Mitel
Networks Corp. et al., Case No. 6:11-CV-00018 (E.D.
Tex. Aug. 1, 2012)
Excerpts from Markman Hearing Transcript in Case No.
6:10-CV-417 (E.D. Tex. Jan. 5, 2012)
Response of Office Action in Reexamination, Control No.
95/001,269, April 15, 2010
Transcript of Teleconference of November 10, 2015
Patent Owners Requests for Production
Patent Owners Interrogatories
Schedule D filed with the Securities and Exchange
Commission
Declaration of Dr. Fabian Monrose
Memorandum Opinion and Order in VirnetX Inc. v. Cisco
Systems, Inc. et al., Case No. 6:10-CV-417 (E.D. Tex.
Apr. 25, 2012)
Office Action Response filed January 10, 2011, in
application no. 11/839,987
Transcript of Deposition of Dr. Roberto Tamassia in
IPR2015-00810, IPR2015-00812
Transcript of Deposition of Dr. Roch Guerin
Transcript of Trial, Morning Session, VirnetX, Inc. v.
Apple, Inc., Case No. 6:10-CV-417 (E.D. Tex. Nov. 5,
2012)
CONFIDENTIAL Mangrove Production Bates Numbered
000001-000011
Securities and Exchange Commission, August 14, 2015
xi
Previously
Submitted
X
X
X
X
X
X
X
X
X

Exhibit
No.
2051
2052
2053
2054
2055
2056
2057
2058
2059
2060
2061
2062
Description
Securities and Exchange Commission, November 16,
2015
Securities and Exchange Commission, February 16, 2016
RPX Client Relations, http://www.rpxcorp.com/rpxclient-relations (last visited Jan. 23, 2014)
RPX Corp., Annual Report (Form 10-K) (Mar. 11, 2013)
RPX Why Join, http://www.rpxcorp.com/why-join-rpx
(last visited Jan. 24, 2014)
Transcript filed in IPR2014-00946, IPR2014-00947,
IPR2014-00948
Schedule 13D, filed with the Securities and Exchange
Commission on March 17, 2016, available at:
http://www.sec.gov/Archives/edgar/data/1509432/000101
359416000896/rpx13d-031716.htm
Letter to RPX Corporation, filed with the Securities and
Exchange Commission on March 17, 2016, available at:
http://www.sec.gov/Archives/edgar/data/1509432/000101
359416000896/rpxex991-031716.pdf
Office Action dated February 15, 2012 in inter partes
reexamination control no. 95/001,679
Right of Appeal Notice dated September 15, 2015 in inter
partes reexamination control no. 95/001,679
CONFIDENTIAL Mangrove Production Bates Numbered
000012-000063
CONFIDENTIAL Petitioner Mangrove Partners Master
Fund Ltd.s Objections and Responses to VirnetX
Interrogatory No. 1
xii
Previously
Submitted

I.
Introduction
Patent Owner VirnetX Inc. respectfully submits this Response to the Boards
decisions to institute inter partes review (IPR) in IPR2015-01046 (Paper No. 11,
the Decision) and in IPR2016-00062 (Paper No. 28, the 00062 Decision); and
the petitions for IPR filed by The Mangrove Partners Master Fund, Ltd. in
IPR2015-01046 (the Petition), and by Apple Inc. in IPR2016-00062 (the Apple
Petition).
The Board should enter judgment against Petitioners for several
reasons.
For one, each of the claims-at-issue of U.S. Patent No. 6,502,135 (the 135
patent) should be confirmed because Petitioners have not carried their burden of
proving . . . unpatentability by a preponderance of the evidence under 35 U.S.C.
316(e). The asserted references fail to disclose each of the claimed features.
Petitioners makes vague assertions of unpatentability that, when unobscured,
reveal inaccuracies, inconsistencies, and contradictions with past holdings from the
Board and the Federal Circuit. Petitioners positions are also based on expert
testimony that should be given little to no weight because it fails to describe how
any of the claim features are allegedly taught or suggested in the asserted
references.
In addition, Petitioners have not established at least one of the
references, RFC 1034, as a prior art printed publication. As such, Petitioners have
not established by a preponderance of the evidence that any claim is anticipated or

rendered obvious by Kiuchi and/or RFC 1034.

In addition, review of the Petitions is barred by statute. Petitioner Mangrove
Partners Master Fund, Ltd. failed to name all of the real-parties-in-interest
associated with its Petition, in violation of 35 U.S.C. 312(a)(2). Moreover,
review is time-barred under 35 U.S.C. 315(b)-(c).
II.
Claim Construction
Petitioners identified six terms for construction. The Decision found that
no claim terms require express construction. (Decision at 5.) Patent Owner

respectfully disagrees and addresses construction of the terms below.
In IPR, claims are given their broadest reasonable construction in light of
the specification.
37 C.F.R. 42.100(b).
Under this standard, terms are
generally given their ordinary and customary meaning, which is the meaning that
the term would have to a person of ordinary skill 2 at the time of the invention. See
In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (quoting
Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1313 (Fed. Cir. 2005) (en banc)).
VirnetX acknowledges that this Board applies the broadest reasonable
interpretation (BRI) standard, and VirnetXs constructions represent the BRI of the
2
A person of ordinary skill in the art would have had a masters degree in
computer science or computer engineering and approximately two years of

experience in computer networking and computer security. (Ex. 2043 at 13.)

claims in light of the specification and prosecution history. Nevertheless, VirnetX

submits that the Board should apply the claim construction standard applied by the
courts, especially given the litigations and prosecution histories of the 135 patent
and patents in the same family as the 135 patent. The BRI standard is solely an
examination expedient, not a rule of claim construction. In re Skvorecz, 580 F.3d
1262, 1267-68 (Fed. Cir. 2009). It is justified in examination because applicant
has the opportunity to amend the claims during prosecution. In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984).
But IPR is more adjudicatory than
examinational, in nature. Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027,

Paper No. 26 at 6 (June 11, 2013).
The ability to amend claims during IPR is so severely restricted that the
rationale underpinning the BRIthe ability to freely amend claimsdoes not
apply especially given the litigations and prosecution histories of the 135 patent
and patents in the same family as the 135 patent. As a result, to the extent the
Board would have adopted a narrower construction under the courts claim
construction standard than it has adopted here, it should adopt the narrower
construction because the BRI standard should not apply to this proceeding.
The Supreme Court recently granted certiorari to consider the application of
the BRI standard in Board proceedings. Cuozzo Speed Techs., LLC v. Lee, No. 15446, 2016 WL 205946, at *1 (U.S. Jan. 15, 2016). VirnetX respectfully submits

that, given the adjudicative nature and the limited amendment process of IPRs,
claims in IPR proceedings should be given their actual meaning. In re Cuozzo,
793 F.3d 1297, 1299, 1301-02 (Fed. Cir. 2015) (Prost, C.J., dissenting from denial
of en banc rehearing). Should the Supreme Court hold that the Board must apply
the standard applied by the courts (i.e., the Phillips standard), the challenged
claims of the 135 patent must be confirmed, since the Federal Circuit has
confirmed the validity of the subject claims over Kiuchi based on such claim
constructions. VirnetX Inc. v. Cisco Systems, Inc., 767 F.3d 1308, 1313-14, 132324 (Fed. Cir. 2014); see also Ex. 2044 at 5-8, 14-17, 31.
A.
Virtual Private Network (VPN) (Claims 1, 4, 7, 10, and 12)3
Patent Owners Proposed

Construction
A network of computers
which privately and
directly communicate
with each other by
encrypting traffic over
insecure communication
paths between the
computers
Petitioners Proposed
Construction
A secure network that
includes portions of a
public network
Decisions Construction
No construction proposed
The term virtual private network (VPN), as used in the 135 patent claims,
refers to a network of computers which privately and directly communicate with
Patent Owner identifies only challenged claims that expressly recite the terms at
issue. Claims that depend from these claims may also implicitly contain the terms.

each other by encrypting traffic over insecure communication paths between the
computers. Petitioners incorrectly allege that their construction was previously
adopted by the PTAB in IPR2014-00237 (the 237 proceeding). (Pet. at 7.)
There, the Board preliminarily construed VPN as part of the claim term VPN
communication link to have a different construction than Petitioners proposed
construction here. Apple Inc. v. VirnetX Inc., IPR2014-00237, Paper No. 15 at 1112 (May 14, 2014).4 Moreover, Petitioners point to nothing in the 135 patent
specification or elsewhere that supports their overly vague and ambiguous
construction.
Petitioners proposed construction and their application of that construction
raises at least three additional issues: (1) whether a VPN requires encryption, (2)
whether a VPN requires that the computers within the VPN have the capability to
directly communicate with each other, and (3) whether a VPN requires a network.
For the reasons discussed below, encryption, direct communication capability, and
a network, are required.
Encryption: The specification repeatedly and consistently explains that a
4
In IPR2014-00237, the Board preliminarily construed a VPN . . . to mean a
secure communication link with the additional requirement that the link includes
a portion of a public network. Apple, IPR2014-00237, Paper No. 15 at 11-12. In
addition, the Boards constructions are currently subject to appeal.

virtual private network requires encryption. See EonNet LP v. Flagstar Bancorp.,

653 F.3d 1314, 132123 (Fed. Cir. 2011).
For instance, the 135 patent
specification teaches that data security is usually tackled using some form of data
encryption, and it repeatedly discusses using encryption. (Ex. 1001 at 1:37-38;
see also id. at 2:66-3:2, 3:18-19, 3:57-59, 7:59-60, 9:11-19, 32:29-31; Ex. 2043 at
15-17.)
Petitioners agree that the specification discloses techniques for
implementing a VPN using encryption. (Pet. at 8; Ex. 1001 at 2:66-3:67.) The

specification also discloses that its later discussed embodiments can use the earlierdiscussed principles of encryption, identifying different embodiments or modes
that can be employed using the aforementioned principles. (Id. at 22:61-62; see
also id. at 32:29-31.)
The specification also refers to the FreeS/WAN project as a conventional
scheme of creating a VPN. (Ex. 1001 at 37:50-62; Ex. 2043 at 18.) Petitioners
assert that Patent Owners reference to RFC 2535 (the FreeS/WAN protocol)
does not define a VPN. (Pet. at 9.) However, the FreeS/WAN glossary of terms in
the 135 patents prosecution history does define VPN, and the definition requires
encryption. It explains that a VPN is a network which can safely be used as if it
were private, even though some of its communication uses insecure connections.
All traffic on those connections is encrypted. (Ex. 2027 at 24, Glossary for the
Linux FreeS/WAN Project.) A contemporaneous dictionary similarly explains that

VPNs enjoy the security of a private network via access control and encryption .
. . . (Ex. 2028 at 8 (emphasis added).) Thus, both intrinsic and extrinsic evidence
demonstrate that VPNs require encryption.
Patent Owners construction is also consistent with the constructions
presented and adopted in other USPTO proceedings and three district court
litigations involving the 135 patent. For example, in IPR2014-00481, Petitioner
Apple agreed that a virtual private network requires encryption. (IPR2014-00481,
Paper No. 1 at 6 (Mar. 7, 2014).) In the three district court cases, Patent Owner
and the defendants proposed several different claim constructions, all of which
included encryption. (See, e.g., Ex. 2029 at 9-14; Ex. 2030 at 2-3; Ex. 2031 at 8;
Ex. 2032 at 9-13.) In all three instances, the court construed VPN to require
encryption. (See Ex. 2033 at 4-10; Ex. 2034 at 4-6; Ex. 1019 at 5-8.) While the
Office construes the claims under a different standard than the district court, this
consistent understanding by all parties and the district court is additional evidence
that the BRI of VPN requires encryption.
Direct Communication: Petitioners construction incorrectly encompasses
links that are not direct. The 135 patent specification describes a virtual private
network that is direct between a client computer and target computer, and the
prosecution history of the 135 patent supports this understanding. (Ex. 2043 at
19-21.)

For instance, the 135 patent describes a virtual private network as being
direct between a users computer and target. (See, e.g., Ex. 1001 at 38:30-33,
39:22-25; see also id. at 40:30-35, 41:23-27 (describing a load balancing example
in which a virtual private network is direct between a first host and a second host),
Figs. 24, 26, 28, 29, 33.)
Similarly, in an embodiment describing the
aforementioned TARP, the 135 patent describes the link between an originating
TARP terminal and a destination TARP terminal as direct. (See, e.g., Ex. 1001,
7:40-49, Fig. 2; see also id. at 31:62-32:3; 36:25-28.)
In describing this direct communication, the 135 patent specification
discloses that the link traverses a network (or networks) through which it is simply
passed or routed via various network devices such as Internet Service Providers,
firewalls, and routers. (See, e.g., id. at Figs. 2, 24, 28, 29.) In litigation, Patent
Owners adversaries have repeatedly recognized that this type of network traversal
is a direct communication. (See Ex. 2035 at 42:16-21, 44:13-45:12.)
In addition, during the now-completed reexamination of the 135 patent and
during the prosecution history of related VirnetX patents, Patent Owner clearly and
unambiguously disclaimed any virtual private networks and virtual private network
communication links that are not direct. (See, e.g., Ex. 2036 at 7; Ex. 2045 at 6-9.)
Referring to Aventail, a reference that is currently asserted against related VirnetX
patents in other proceedings before the Board, Patent Owner explained that the

reference did not disclose a VPN because, among other things, computers
connected according to Aventail do not communicate directly with each other.
(See Ex. 2036 at 7; Ex. 2045 at 8.)
In district court proceedings, Patent Owners adversaries acknowledged that
disclaimer is clear and unambiguous, describing Patent Owners statements as a
clear mandate to the Patent Office that computers in a virtual private network
communicate directly with each other, and that absent direct communication
between the computers, there is no virtual private network. (Ex. 2030 at 5.) A
disclaiming statement is unambiguous when a competitor would reasonably
believe that the applicant had surrendered the relevant subject matter. Cyber
Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1457 (Fed. Cir. 1998). Here, Patent
Owners disclaimer show[s] reasonable clarity and deliberateness. Biogen Idec,
Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1096 (Fed. Cir. 2013) (citation
omitted). Given the specification and Patent Owners statements, the district court
found disclaimer and required the claimed VPN to include direct communication.
(Ex. 1019 at 6-8.)
Petitioners assert that the Board should not give this prosecution history any
weight. (Pet. at 12.) This view is inconsistent with the law, which not only allows,
but requires the Office to consider the prosecution history when reviewing claims
under the BRI standard. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).

The Federal Circuit has further stated that when a patent has been brought back to
the agency for a second review, [t]he PTO should also consult the patents
prosecution history. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
(Fed. Cir. 2015); see also Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d
1356, 1362 (Fed. Cir. 2015). Consistent with the Federal Circuits case law, in
numerous IPR proceedings, the Board has consistently considered the prosecution
history when construing the claims. See Garmin Intl, Inc. v. Cuozzo Speed Techs.
LLC, IPR2012-00001, Paper No. 15 at 8 (Jan. 9, 2013); see also Motorola
Solutions, Inc. v. Mobile Scanning Techs., LLC, IPR2013-00093, Paper No. 28 at
10 (Apr. 29, 2013); ZTE Corp. & ZTE (USA) Inc. v. ContentGuard Holdings Inc.,
IPR2013-00134, Paper No. 12 at 16 (June 19, 2013); Xilinx, Inc. v. Intellectual
Ventures I LLC, IPR2013-00112, Paper No. 14 at 6 (June 27, 2013).
In an IPR proceeding for a related patent, the Board relied on Tempo
Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed. Cir. 2014), to discount Patent
Owners prosecution history arguments. Apple Inc. v. VirnetX Inc., IPR201500871, Paper No. 8 at 19, n. 6 (Oct. 1, 2015). The Board took out of context the
Federal Circuits observation in Tempo Lighting that the PTO is not automatically
required to accept a claim construction proffered as a prosecution history
disclaimer, since the disclaimer generally only binds the patent owner. 742
F.3d at 978. But while a patent examiner is not bound by a patent owners
10

disclaimer when construing claim terms, an unambiguous disclaimer nevertheless

informs the patents scope and should be given effect in subsequent IPR
proceedings. Microsoft Corp., 789 F.3d at 1298; Straight Path IP Grp., Inc., 806
F.3d at 1362.
Consistent with this principle, the Federal Circuit in Tempo Lighting applied
prosecution history disclaimer where an examiner requested the patent applicant to
rewrite its claims to clarify a specific claim term, resulting in an applicants
disclaiming remarks. 742 F.3d at 977-78. Here too, in the related reexamination
proceeding, the examiner construed virtual private network more broadly than
the specification, and VirnetX disclaimed embodiments that did not involve direct
communication in response to the examiners broadening of the claim. (See Ex.
2036 at 7; see also Ex. 2045 at 8.) Just as in Tempo Lighting, this disclaimer was a
clear and unambiguous clarification of the meaning of the term virtual private
network, and must be given effect. 742 F.3d at 978.
Petitioners further contend, somewhat confusingly, that while they agree that
Patent Owner disclaimed a portion of the literal scope of the 135 Patent claims
(i.e., that covering VPNs in which computers do not directly communicate), the
claims must still encompass this subject matter. (Pet. at 12.) Petitioners are
wrong and the Federal Circuit has instructed to consider a patents prosecution
history, even under a BRI standard, to avoid just such a convoluted and illogical
11

result. Microsoft Corp., 789 F.3d at 1298; Straight Path IP Grp., Inc., 806 F.3d at
1362.
Patent Owners construction is further supported by the construction
confirmed by the Federal Circuit in the related litigation. The Federal Circuit
noted that a virtual private network requires direct communication. It stated that
the district courts construction of VPN is a network of computers which privately
and directly communicate with each other by encrypting traffic on insecure paths
between the computers where the communication is both secure and anonymous.
VirnetX Inc., 767 F.3d at 1317 n.1. As noted above, while the Office construes the
claims under a different standard than the district court, this consistent
understanding by the Federal Circuit is additional evidence that the BRI of VPN
requires links that are direct.
Network: Although Petitioners proposed construction explicitly requires a
network, Petitioners application of their construction seems to ignore this
requirement. (See infra Section III.B.4.) Consistent with the plain meaning of a
VPN, a VPN requires a network. (Ex. 2043 at 22.) In describing a VPN, the
135 patent refers to the FreeS/WAN project, which has a glossary of terms.
(Ex. 1001 at 37:57 and bibliographic data showing references cited.)
The
FreeS/WAN glossary defines a VPN as a network which can safely be used as if it

were private, even though some of its communication uses insecure connections.
12

All traffic on those connections is encrypted. (Ex. 2027 at 24, Glossary for the
Linux FreeS/WAN Project.) According to this glossary, a VPN includes at least
the requirement of a network of computers. (Ex. 2043 at 22.)
The specification further describes a VPN as including multiple nodes.
(See, e.g., Ex. 1001 at 15:12-16, 19:58; see also id. 17:43-45, 22:44-52, 23:14-20.)
More specifically, the network allows [e]ach node . . . to communicate with other
nodes in the network. (Ex. 1001 at 15:16-19.) So a device within a VPN is able
to communicate with the other devices within that same VPN. (Ex. 2043 at 23.)
In view of the foregoing, Patent Owners construction, unlike Petitioners, is
supported by both intrinsic and extrinsic evidence, and so virtual private network
should be construed to mean a network of computers which privately and directly
communicate with each other by encrypting traffic over insecure communication
paths between the computers.
B.
Domain Name Service (DNS) Request (Claims 1, 3, 4, 8, 10, 12)
Patent Owners Proposed

Construction
A request for a resource
corresponding to a
domain name
Petitioners Proposed
Construction
A request for a resource
corresponding to a
network address
Patent Owner proposes that the BRI of domain name service (DNS)
request is a request for a resource corresponding to a domain name.
Petitioners construction is not the BRI of the term, is inconsistent with the
13

specification, and should be rejected. The patent specification discloses that a

DNS request may request an IP address or other non-IP address resources, such
as public keys for encryption. (See Ex. 1001 at 37:50-62, citing Ex. 1016, RFC
2535.) In particular, the RFC cited by the specification explains that a computer or
resolver may make [a]n explicit request for KEY RRs [public key resource
records]. (Ex. 1016 at 17; see also Ex. 2043 at 24-26.) The 135 patent
specification further explains that a DNS request involves the sending of a domain
name. (See Ex. 1001 at 37:63-38:2, 38:6-10, 38:23-27; see also id. at 37:33-35,
37:43-47; Ex. 2043 at 26.) As discussed below (infra Section II.D), the parties
agree that a domain name is a name corresponding to a network address and,
depending on the embodiment, the name may encompass, inter alia, an email
address or telephone number.
Petitioners allege that they simply substitute the agreed-upon construction of
domain name into DNS request.
(Pet. at 13.)
However, Petitioners
construction reads in only a portion of the construction of domain name. (Id.)

Petitioners abridged construction is ambiguous and either (1) fails to take into
consideration that a DNS request plainly must involve a DN, i.e., domain
name, or (2) contradicts its own construction of a domain name and restricts the
domain name to being a network address.
Neither interpretation of
Petitioners construction is supported by the specification.
14

C.
Client Computer (Claims 1, 3, 4, 7, 10, 12)
Patent Owners Proposed Petitioners Proposed

Construction
Construction
Users computer
A computer from which a
data request to a server is
generated
In the context of the 135 patent claims, the BRI of client computer is a
users computer. The specification of the 135 patent supports this construction
by explaining that a VPN is initiated between the users computer 2601 and the
target. (See, e.g., Ex. 1001 at 38:30-33; Ex. 2043 at 27-28.) This parallels the
claims language, which recites creating a VPN between a client computer and a
target computer (see, e.g., Ex. 1001 at claim 1). The 135 patent also explains that
[a] users computer 2501 includes a client application. (See id. at 37:30-32; see
also id. at 38:15-16 (A users computer 2601 includes a conventional client (e.g.,
a web browser) . . . .).) Thus, the 135 patent equates the users computer 2601
with the client computer in the claims. Similarly, in other embodiments, the
135 patent discloses that a determination is made as to whether client 3103 is a
validly registered user (id. at 45:8-9), and client computer 801 is depicted as a
users computer, namely a laptop device (id. at 16:16-17; Fig. 8).
The 135 specification provides further guidance as to the client computer
being a users computer by explaining that its inventions allow for secure
communications between a users computer and a target computer. (Ex. 2043 at
15

29.)
For instance, in the Background of the Invention, the specification
explains the importance of securing communications between an originating

terminal 100 at which a user is located and a destination terminal 110 that hosts a
web site. (Ex. 1001 at 1:15-31.) The Summary of the Invention likewise
explains that an originating terminal in a TARP VPN embodiment is a notebook
computer used by an executive and that a destination terminal is a server. (See id.
at 4:59-5:12.) The Detailed Description of the Invention also explains that a
VPN is created between a users computer at which a web browser is located and a
secure target site.
(See id. at 38:13-33.)
Consistent with the specifications
disclosure of secure communications between a users computer and a target

computer, the claims recite initiating the VPN between the client computer and
the target computer. (See, e.g., id. at claim 1.)
The ordinary meaning is further confirmed by a dictionary that an IPR
petitioner cited against other VirnetX patents. (Ex. 2043 at 30-31.) It defines
client machine as [a] users workstation that is attached to a network. (Ex.
2028 at 3.)
The relevant definitions for the other client-related terms also
unanimously require a user, either expressly or implicitly, by identifying a client

as a workstation, personal computer, users machine, or users PC in those
definitions:
16

Term
Dictionary
Client
A workstation or personal computer in a client/server

environment
Client application
An application running in a workstation or personal

computer on a network
Client based
Refers to hardware or software that runs in the users

machine (client)
Client program
Software that runs in the users PC or workstation
Client/server
An architecture in which the users PC (the client) is the

requesting machine and the server is the supplying
machine[.]
(Id.) In the same dictionary, workstation is just a generic term for a users
computer. (Id. at 9.) Likewise, personal computer or PC is a computer that
serves one user in the office or home. (Id. at 5.) Each of the client-related
definitions incorporates the view that a client computer is a users computer.
For at least these reasons, the client computer should be construed as a
users computer.
D.
Other Terms
The BRI of domain name (claims 1, 3, 10) is a name corresponding to a

network address. This construction is consistent with the specification, which
17

explains that Internet Protocol or IP is but one type of network. (See, e.g., Ex.
1001 at 4:3, 4:65-66, 9:22-23; see also id. at 14:44-48, 19:42-44; Ex. 2043 at 32.)
The BRI of DNS proxy server (claims 8, 10) is a computer or program
that responds to a domain name inquiry in place of a DNS. This shared view is
consistent with embodiments disclosed in the specification. (See, e.g., Ex. 1001 at
38:23-47; see also Ex. 2033 at 11-12; Ex. 2034 at 8; Ex. 1019 at 16-17; Ex. 2028 at
6; Ex. 2043 at 33.)
The BRI of automatically initiating the VPN (claims 1, 4, 5) is
initiating the VPN without involvement of a user. This construction is supported
by the 135 specification, which describes various embodiments for automatically
set[ting] up a virtual private network between the target node and the user. (See,
e.g., Ex. 1001 at 37:63-40:13; see also id. at 38:28-33, 39:22-29; Ex. 2033 at 2122; Ex. 2043 at 34.)
III.
Kiuchi Does Not Anticipate Claims 1, 3, 4, 7, 8, 10, and 12

Kiuchi does not disclose each and every feature of claims 1, 3, 4, 7, 8, 10,
and 12, so it does not anticipate these claims.

A.
Kiuchis Disclosure
Kiuchi describes communication in a closed HTTP-based network (CHTTP). (Ex. 1002 at 7, Abstract; Ex. 2043 at 35.) C-HTTP communication is a
multi-step process and requires three components between the client, also referred
18

to as a user agent, and the origin server where the patient information resides: (1) a
client-side proxy, (2) a server-side proxy, and (3) a C-HTTP name server. (Ex.
1002 at 7-9; Ex. 2043 at 36.) C-HTTP-based communication is performed only
between two types of C-HTTP proxies and between a C-HTTP proxy and C-HTTP
name server. (Ex. 1002 at 11, 4.2(2); Ex. 2043 at 36.) Unlike other protocols
that assure end-to-end security protection in which security protection is
dependent on the end user, C-HTTP communication involves proxy-proxy
security and there is no direct communication between user agents and origin
servers. (Ex. 1002 at 10-11; Ex. 2043 at 36.)
As disclosed in Kiuchi, an end user at a user agent may select or request a
resource
name[]
with
connection
ID,
for
example,
http://server.in.current.connection/sample.html=@=6zdDfldfcZLj8V!i
that
identifies resources at an origin server. (Ex. 1002 at 8, 2.3(1); Ex. 2043 at 37.)
The
resource
name
in
Kiuchi
corresponds
to
http://server.in.current.connection/sample.html and identifies both the origin

server at which the requested resources are located, also referred to as the host in
Kiuchi, and the resources requested. (Ex. 1002 at 8, 2.3(1); Ex. 2043 at 37.)
The connection ID corresponds to 6zdDfldfcZLj8V!i. (Ex. 1002 at 8, 2.3(1);
Ex. 2043 at 37; see also Ex. 2043 at 38-42 (describing the nine steps of
Kiuchis C-HTTP-based communications.)
19

B.
Kiuchi Does Not Anticipate Independent Claim 1
Independent claim 1 recites combinations of features.
Kiuchi does not
disclose these recited features for at least the reasons below.

1.
Kiuchi Does Not Disclose the Recited DNS Features
Independent claim 1 recites generating from the client computer a Domain

Name Service (DNS) request. (Ex. 1001 at claim 1.) Petitioners never explain
what exactly in Kiuchi they are relying on, but appear to advance two alternative
theories, pointing to: (1) a request sent by the user agent to the client-side proxy,
and (2) a C-HTTP request to be sent by the client-side proxy to the C-HTTP name
server. (Pet. at 27.) To address the claimed DNS features, the Decision relies on
Kiuchis request sent by the client-side proxy. (See Decision at 6.) In any event,
neither request discloses the claimed DNS features.
Kiuchi repeatedly differentiates its C-HTTP features from DNS. (Ex. 2043
at 43-44.) For example, Kiuchi explains that the C-HTTP name service is used
instead of DNS, the DNS name service is not used for hostname resolution,
and a DNS lookup is only performed after a permission request to the C-HTTP
name server fails. (Ex. 1002 at 7; see also id. at 11 (explaining that a different
naming scheme is used in a C-HTTP based system and that the system only
functions with C-HTTP proxies and name servers).) In other words, Kiuchi makes
clear that the disclosed DNS lookup is generated only if an error condition occurs
20

in which C-HTTP connectivity fails. (Id. at 8 (If [a C-HTTP connection] is not

permitted, [the C-HTTP name server] sends a status code which indicates an error.
If a client-side proxy receives an error status, then it performs DNS lookup,
behaving like an ordinary HTTP/1.0 proxy.); Ex. 2043 at 44.) Petitioners own
expert agrees that the requests pointed to by Petitioners (i.e., the request sent by the
user agent to the client-side proxy, and the C-HTTP request to be sent by the
client-side proxy to the C-HTTP name server), which are different than the errorcondition request, are not DNS requests. (Ex. 2047 at 22:22-23:16.) Indeed,
Apples expert in related proceedings has similarly explained that a DNS request to
look up a network address must follow[] the DNS protocol for such requests.
(Ex. 2046 at 102:9-13.)
The Office previously recognized in a co-pending inter partes reexamination
that Kiuchi fails to disclose the claimed DNS features because it expressly teaches
that C-HTTP does not involve DNS. See, e.g., Ex. 2059 at 7-8. The Office later
contended in that reexamination that Kiuchi discloses the same functionality
because a URL is sent to the C-HTTP name server and an IP address may
eventually be returned. See Ex. 2060 at 8-9. But an anticipation rejection cannot
stand when a reference does not disclose claim limitations. See Richardson v.
Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989); see also Titanium Metals
Corp. v. Banner, 778 F.2d 775, 780 (Fed. Cir. 1985).
21

Moreover, Kiuchi does not disclose the same functionality. (Ex. 2043 at
45.)
For example, as discussed below, unlike conventional DNSs, which
provide a look-up function that returns the IP address of a requested computer or

host (Ex. 1001 at 37:22-24), Kiuchis C-HTTP name server does not return the IP
address of the URL in the request, which identifies Kiuchis origin server, but
instead returns a server-side proxys IP address. (See infra Section III.A.) 5
For at least these reasons, Kiuchi does not anticipate claim 1.
2.
The Alleged Request in Kiuchi Does Not Request an IP

Address Corresponding to a Domain Name Associated with
the Target Computer
Independent claim 1 recites a DNS request that requests an IP address

corresponding to a domain name associated with the target computer. (Ex. 1001
at claim 1.) The claim thus requires that the IP address correspond[] to the
domain name. Because Kiuchis URL belongs to the resource on the origin server,
and because the IP address returned is for the server-side proxy, the IP address
5
In a final written decision in IPR2014-00404, the Board found that Kiuchis
system requests the address of the server-side proxy, not the origin server. Apple
Inc. v. VirnetX Inc., IPR2014-00404, Paper No. 42 at 10-11 (July 29, 2015). But,
as discussed in Section III.A, Kiuchis URL is that of the resource on the origin
server, not the server-side proxy, and so Kiuchis system is requesting the address
of the origin server.
22

does not correspond to, and is not for, the domain name. (Ex. 2043 at 47-48.)
For
example,
Kiuchi
explains
that
the
URL
http://server.in.current.connection!sample.html=@=6zdDfldfcZLj8V!i
represents a resource name, and that when the URL is clicked, the client-side
proxy takes off the connection ID (i.e., 6zdDfldfcZLj8V) and forwards, the
stripped, original resource name to the server . . . . (Ex. 1002 at 8-9.)
In fact, in cross-examination, Petitioners expert conceded that Kiuchis CHTTP name server does not return the IP address of the URL in the request, which
identifies Kiuchis origin server, but instead returns a server-side proxys IP
address. (See Ex. 2047 at 95:9-14 (explaining that the URL in the request in
Kiuchi identifies a resource stored at the origin server), 99:21-100:11 (same); see
also id. at 25:5-13 (explaining that the C-HTTP name server returns the IP address
of the server-side proxy), 93:20-94:10 (same).)
Indeed, as Petitioner Apples
expert admitted in district court litigation, the IP address of the server-side proxy
does not correspond to the origin server. (Ex. 2048 at 41:12-42:6.)
As such, Kiuchis request does not and cannot disclose the claimed request
because the returned IP address does not correspond to the domain name
associated with Kiuchis origin server, but instead corresponds to the server-side
proxy. For at least these additional reasons, Kiuchi does not anticipate claim 1.
23

3.
Kiuchis Client-Side Proxy and Server-Side Proxy Do Not

Disclose the Claimed Client and Target Computers
Petitioners obfuscate their positions by relying in some instances on

Kiuchis user agent and origin server for the claimed client computer and target
computer, respectively, and in other instances on Kiuchis client-side proxy and
server-side proxy. (See, e.g., Pet. at 26.) However, similarly to the Boards
analysis in prior related cases, 6 the Institution Decision relies on Kiuchis clientside proxy and server-side proxy as corresponding to the claimed client and target
computers. (See Decision at 6 (As Petitioner explains, Kiuchi discloses a clientside proxy that . . . sends a request to a C-HTTP name server.).) This contention
contradicts the disclosure of Kiuchi and the 135 patent, as well as what one of
ordinary skill would have understood at the time of the invention.
In the context of the 135 patent claims, the BRI of the claimed client
computer is a users computer. (See supra Section II.E.) There is no question
that Kiuchis client-side proxy is not a users computer. Kiuchi does not disclose
For instance, in Apple Inc. v. VirnetX Inc., IPR2014-00404, Paper No. 42 at 15
n.4 (July 29, 2015), the Board incorrectly attempted to distinguish the Federal
Circuits decision in VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1324 (Fed.
Cir. 2014), based on its erroneous assessment of Kiuchis client-side proxy and
server-side proxy.
24

any user associated with the client-side proxy, and in fact Petitioner Apples own
expert admitted so in district court litigation. (See, e.g., Ex. 2048 at 37:9-18,
43:10-13, 46:16-19, 53:18-23.) In Kiuchi, the users computer is the user agent,
not the client-side proxy. (See, e.g., Ex. 1002 at 8; Ex. 2043 at 49; see also Ex.
2048 at 50:7-14 (the user agent would be read naturally as a client computer).)
In addition, assuming arguendo that a client computer is not necessarily a
users computer, Kiuchis client-side proxy would still not have been understood
to be a client computer by one of ordinary skill in the art. (Ex. 2043 at 50.)
Kiuchi discloses a communication system in which a client, also referred to as a
user agent, at one institution is able to securely access its targetresources on an
origin server at another institutionthrough the use of proxies and a name server.
(Ex. 1002 at 7-9.) Specifically, [a] client-side proxy . . . should be specified as a
proxy server for external (outside the firewall) access in each user agent within the
firewall. (Id. at 8.) As Kiuchi explains, a user may attempt to access resources on
the origin server by entering the URL of the resource into the client. (Id. at 8-9.)
The client then connects to a client-side proxy at its same institution, described in
Kiuchi as the [c]onnection of a client to a client-side proxy. (Id. at 8.)
Kiuchis separate references to the client and client-side proxy, and
marked differentiation between the two, demonstrates that the client-side proxy is
not the client itself. (See, e.g., id. at 8 (The session is finished when the client
25

accesses another C-HTTP server . . . or when the client-side . . . proxy times out.);
see also Ex. 2043 at 51.) In fact, Kiuchi explains that one of its advantages is
that no end-user has any chance to obtain keys for encryption or decryption.
(Ex. 1002 at 11.) It also states that, in its disclosed system, [e]nd-users do not
have to employ security protection procedures. They do not even have to be
conscious of using C-HTTP based communications. (Id.) Thus, Kiuchi not only
distinguishes between a client, where an end-user sits, and a client-side proxy,
which has no end-user, it touts the separation as a necessary feature of its system.
As a result, one of ordinary skill in the art would have read Kiuchis user agent as
the natural client computer in Kiuchi. (Id.; Ex. 2043 at 51.) Indeed, in litigation,
Petitioner Apples expert testified that the user agent of Kiuchi would be read
naturally as a client computer. Ex. 2048 at 50:7-14; see also id. at 50:20-24.)
The Federal Circuit has agreed with Patent Owners understanding of
Kiuchi. In particular, it found evidence that the client of Kiuchi is actually a
web browser, a component that is distinguishable from the client-side proxy.
VirnetX, Inc., 767 F.3d at 1324. Patent Owner expects Petitioners to argue that the
Federal Circuits findings are inapplicable because the Federal Circuit employed
the Phillips claim construction standard (but see supra Section II). But the Federal
Circuit has emphasized that the Board nevertheless has an obligation to
acknowledge that interpretation and to assess whether it is consistent with the
26

broadest reasonable construction of the term. Power Integrations, Inc. v. Lee, 797
F.3d 1318, 1326 (Fed. Cir. 2015). Here, consistent with the Federal Circuits
finding, the 135 patent discloses that a client and proxy server are distinct. For
example, the 135 patent explains that [p]roxy servers prevent destination servers
from determining the identities of the originating clients. (Ex. 1001 at 1:49-51.)
The 135 patent also contrasts the claimed client computer from a proxy by
referring to it as a users computer. (See, e.g., id. at 37:30-39, 38:13-17, Fig. 26
(2601).)
Thus, treating Kiuchis client-side proxy as the claimed client
computer is inconsistent with Kiuchis teachings and with the teachings of the
135 patent. (Ex. 2043 at 52.)
Treating the client-side proxy as the claimed client computer is also
inconsistent with evidence relied upon by Petitioners expert to understand the
scope of the claims. In particular, Petitioners expert cites RFC 1945 to argue that
a proxy is described as an intermediary program which acts as both a server and
a client for the purpose of making requests on behalf of other clients. (Ex. 1003
at 19 (citing Ex. 1014 at 5).) However, while a proxy may make requests on
behalf of other clients, RFC 1945 explains that a user agent is [t]he client
which initiates a request. (Ex. 1014 at 5.) Kiuchis client side proxy is at best a
client proxy, not a client computer that generates requests, as claimed. (See Ex.
2043 at 53; see also Ex. 2048 at 52:7-8 (Petitioner Apples expert admitting that
27

the client-side proxy is a client proxy, I will give you that).)

Similarly, Kiuchis server-side proxy fails to disclose the target computer
recited in claim 1. Rather, in Kiuchi, a user agent seeks resources that are located
at the origin server, and not the server-side proxy, as admitted by Petitioner
Apples expert in litigation as well as Petitioners expert in this proceeding. (See
Ex. 2048 at 38:11-17; Ex. 2043 at 54; see also Ex. 2048 at 64:18-65:3; Ex. 2047
at 95:9-14, 99:21-100:11.) As explained in more detail above (see supra Section
III.B.1), the client-side proxy receives a URL associated with the origin server
from the client and subsequently asks the C-HTTP name server whether it can
communicate with the origin server, not the server-side proxy. (Ex. 1002 at 8.)
Kiuchi discloses that a user does not even need to know the institution is using CHTTP, and thus likely has no knowledge about the existence of server-side proxy.
(Id. at 11, End-users . . . do not even have to be conscious of using C-HTTP based
communications.) Thus, the users requests are not provided for direction to the
server-side proxy, but to the origin server. In discussing the prior art, the 135
patent discloses a system like Kiuchis in which a proxy server is distinct from the
target computer.
According to the 135 patent, the proxies are intermediate
server[s] interposed between client and destination server[s] and this target
server only sees the address of the outside proxy. (Ex. 1001 at 1:51-55.)
For at least these additional reasons, Kiuchi does not anticipate claim 1.
28

4.
Kiuchi Does Not Disclose the Claimed VPN
Claim 1 recites, among other things, automatically initiating a VPN

between the client computer and the target computer. (Ex. 1001 at claim 1.) As
discussed above, a VPN necessarily requires a network and direct
communication. (See supra Section II.A.)
In addressing the VPN limitation, Petitioners point to a connection that
allegedly enables data to be securely transmitted between the user agent and
origin servers because the proxy servers automatically encrypt any traffic sent
between them. (Pet. at 29.) Thus, Petitioners appear to rely on Kiuchis C-HTTP
connection. This C-HTTP connection allows the client-side proxy [to] forward[]
HTTP/1.0 requests from the user agent in encrypted form using C-HTTP format,
(Ex. 1002 at 9, 2.3(6); Ex. 2043 at 56), the server-side proxy to forward the
requests to the origin server after converting them to HTTP/1.0 requests, (Ex. 1002
at 9, 2.3(7); Ex. 2043 at 56), the origin server to send HTTP/1.0 responses,
which are encrypted in C-HTTP format by the server-side proxy, forwarded to the
client-side proxy (which decrypts the C-HTTP response and extracts the HTTP/1.0
response), and sent to the client (Ex. 1002 at 9, 2.3(8); Ex. 2043 at 56). In this
arrangement, there is neither a network nor direct communication.
a)
Network
Unlike the VPN disclosed in the 135 patent, Kiuchis proxy-to-proxy C-
29

HTTP connection does not provide access to a network of computers. Rather,

Kiuchi teaches a specialized, point-to-point connection that exists only between the
two proxies, and thus is not a network. (See Ex. 1002 at 8-9, explaining that the
proxies implement all C-HTTP functions on behalf of the user agent and origin
server, 10-11, 4.2, C-HTTP-based communication is performed only between
two types of C-HTTP proxies and between a C-HTTP proxy and C-HTTP name
server. They do not communicate directly with various types of user agents and
servers using C-HTTP.; Ex. 2043 at 57.) For example, each time a new CHTTP connection is established, any previous C-HTTP connection is first
disconnected. As Kiuchi explains, [t]he [C-HTTP] session is finished when the
client accesses another C-HTTP server meaning the current connection is
disconnected, and a new connection is established . . . . (Ex. 1002 at 8; see also
id. at 9, disclosing separate connection IDs for each C-HTTP connection, 10,
discussing the closure of the connection after each transaction; Ex. 2043 at 57.)
Thus, a C-HTTP connection exists only between two specific proxies and is unable
to expand to include more, limiting scalability and preventing network
communication. (See Ex. 2043 at 57; see also Ex. 1001 at 23:14-20.) This
stands in contrast to the 135 patents disclosure of a scalable virtual private
network of computers on the same network able to communicate with one
another. (See id.) While a C-HTTP system may accommodate up to a few
30

hundred [sic] proxies, these proxies are not interconnected and do not form a
network. (Ex. 1002 at 11, 4.3; Ex. 2043 at 57.)
b)
Direct Communication
C-HTTP has additional characteristics that do not comport with a VPN. For
example, the C-HTTP proxy servers preclude the user agent and origin server (the
true client and target) from directly communicating with one another as in a VPN
by stopping communication at the proxies, wrapping/unwrapping messages,
encrypting/decrypting their contents, re-formatting, and ultimately re-sending
messages. (See Ex. 1002 at 8, [i]n the client-side proxy, the HTML document is
rewritten, 9, explaining that a client-side proxy encrypts and re-formats HTTP/1.0
requests to C-HTTP format and that the client-side proxy decrypts and re-formats
C-HTTP responses to HTTP/1.0 format, 10-11, 4.2, C-HTTP-based
communication is performed only between two types of C-HTTP proxies and
between a C-HTTP proxy and C-HTTP name server. They do not communicate
directly with various types of user agents and servers using C-HTTP; Ex. 2043 at
58.) In fact, in related litigation, the Federal Circuit explained that a VPN, as
claimed, includes direct communication and that substantial evidence confirmed
that Kiuchis proxy servers at least do not teach direct communication between
a client and target computer because Kiuchis client-side and server-side proxies
terminate the connection, process information, and create a new connection. . . .
31

VirnetX, 767 F.3d at 1324. (See also Ex. 2047 at 19:7-18 (Petitioners expert
admitting that the client-side proxy and the server-side proxy are communicating
using C-HTTP, and you have user agent and origin servers that are only running
HTTP/1.0), id. at 21:3-7 (Petitioners expert agreeing that the encrypted
communications in the C-HTTP connection between the proxies . . . doesnt extend
past [the] proxies to the origin server or the user agent).)
For at least these additional reasons, Kiuchi does not anticipate claim 1.
C.
Kiuchi Does Not Anticipate Independent Claim 10
Independent claim 10 recites combinations of features. Kiuchi does not

disclose these recited features for at least the reasons below.
1.
Kiuchi Does Not Disclose the Recited DNS Features
Independent claim 10 recites a DNS proxy server that receives a request

from the client computer to look up an IP address for a domain name. (Ex. 1001
at claim 10.) For the reasons discussed above for claim 1, Kiuchi does not disclose
the claimed DNS features. (See supra Section III.B.1; see also Ex. 2043 at 59.)
2.

Generates a Request to Create a VPN
Claim 10 recites a DNS proxy server [that] generates a request to create the
VPN. (Ex. 1001 at claim 10.) Petitioners contend that Kiuchis client-side proxy
and C-HTTP name server correspond to the claimed DNS proxy server. (Pet. at
34; see also id. (relying of Kiuchis server-side proxy for the claimed gatekeeper
32

computer.) 7 However, Kiuchi explains that the client-side proxy sends a request
for connection to the server-side proxy, (Ex. 1002 at 8), but this request for
connection cannot correspond to the claimed request to create the VPN.
Rather, Kiuchi explains that it is the server-side proxy (not the client-side proxy)
that requests creation of a C-HTTP connection when it sends a connection ID and a
symmetric data exchange key to the client-side proxy. (Id. at 9.) When the
client-side proxy accepts . . . the connection is established. (Id.; see also Ex. 2043
at 60-61.)
Moreover, as discussed above in connection with claim 1, Kiuchis C-HTTP
connection is not a VPN. (See supra Section III.B.3; Ex. 2043 at 62.)
3.
Kiuchi Does Not Disclose a DNS Proxy Server that Returns

an IP Address
Kiuchi further fails to disclose a DNS proxy server [that] returns the IP
address for the requested domain name if it is determined that access to a nonsecure web site has been requested, as recited in claim 10. Kiuchi fails to disclose
this feature because Kiuchi explains that when permission for a C-HTTP
connection is not granted, the client-side proxy performs DNS lookup, behaving
For claim 1, Petitioners fail to explain what components are being mapped to the
claimed client computer and target computer. Here, however, Petitioners rely
on Kiuchis user agent for the clamed client computer. (Pet. at 34.)
33

like an ordinary HTTP/1.0 proxy. (Ex. 1002 at 8.) One of ordinary skill in the art
would understand this to mean that the client-side proxy forwards the request to a
DNS server for resolution and the DNS server returns an IP address. (Ex. 2043 at
63.) Petitioners in fact appear to agree, only alleging that where the user agent
requests to connect to a non-secure server, the hostname in the connection request
will be resolved by a conventional DNS server. (Pet. at 34.) Petitioners contrast
such a conventional DNS server from both of the alleged proxy servers. (Id.
(where a user agent requests to connect to a destination in the closed network, the
C-HTTP name server and client-side proxy act as proxy servers, acting in place of
a conventional DNS server); see also id. at 30 (If the client-side proxy receives
an error code, it determines the URL specifies a non-secure destination and it sends
the hostname in the URL to a conventional DNS server.).) While a DNS server
(not a DNS proxy server) may return an IP address to the client-side proxy (part of
the alleged DNS proxy server), Kiuchi does not disclose that the client-side proxy
returns the IP address to the user agent. Therefore, Kiuchi does not disclose and
Petitioners do not even allege that Kiuchi discloses a DNS proxy server [that]
returns the IP address for the requested domain name if it is determined that access
to a non-secure web site has been requested, as claimed.
D.
Kiuchi Does Not Anticipate Dependent Claims 3, 4, 7, 8, and 12
Kiuchi does not anticipate claims 3, 4, 7, 8, and 12, for at least the reasons
34

discussed above for independent claims 1 and 10, from which they depend. See
Sections III.B-C.
Therefore, Petitioners challenge to these claims should be
rejected and the claims confirmed. (Ex. 2043 at 65.) In addition, dependent
claims 4 and 7 should also be confirmed for the following additional reasons.
1.
Kiuchi Does Not Disclose the Features of Claim 4
Claim 4 recites determining whether the client computer is authorized to

establish a VPN with the target computer. (Ex. 1001 at claim 4.) Kiuchi fails to
disclose this feature. Kiuchi teaches checking whether the server-side proxy is
registered in the network, not whether a purported client computer is authorized
to establish a VPN. (See Ex. 1002 at 8 (examin[ing] whether the requested
server-side proxy . . . is permitted to accept the connection from the client-side
proxy).) But whether the server-side proxy is permitted to connect says nothing
as to the client computers authorization. (Ex. 2043 at 64.) Indeed, it makes
little sense to conclude that simply because a client-side proxy at a first institution
may generally communicate with a server-side proxy at a second institution,
therefore every user at the first institution is authorized to communicate with the
second institution. (Ex. 1002 at 7.) This understanding is consistent with Kiuchis
disclosure, which stresses the importance of keeping patient information and
records confidential. (Id.; see also id. at 11.)
While the firewalls or proxies
between the two institutions may be authorized to communicate, individual clients
35

and users within each institution may or may not be authorized to do so. Indeed,
authorizing every user at a first institution to access confidential materials at
another simply because the institutions firewalls are allowed to communicate
defeats the very purpose of Kiuchi.
2.
Kiuchi Does Not Disclose the Features of Claim 7
Claim 7 recites that step (3) comprises the step of using a gatekeeper
computer that allocates VPN resources for communicating between the client
computer and the target computer. (Ex. 1001 at claim 7.) Petitioners allege that
Kiuchis server-side proxy acts as a gatekeeper. (Pet. at 32.) For claim 1,
however, the Institution Decision relies on Kiuchis server-side proxy as mapping
to the claimed target computer. (Decision at 6.) This is improper.
In In re Robertson, 169 F.3d 743 (Fed. Cir. 1999), the Federal Circuit held
that where a claim recites separate elements that perform different functions, a
single disclosed element in a prior art reference is insufficient to teach each and
every element as set forth in the claims. In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999); see also Becton, Dickenson & Co. v. Tyco Healthcare Group, LP, 616
F.3d 1249, 1254 (Fed. Cir. 2010); Lantech Inc. v. Keip Machine Co., 32 F.3d 542,
547 (Fed. Cir. 1994). Likewise, in Ex Parte Weideman, the Board held that
[c]onsistent with the principle that all limitations in a claim must be considered
meaningful, it is improper to rely on the same structure in the [prior art] reference
36

as being responsive to two different [claimed] elements. Appeal No. 2008-3454,

Decision on Appeal at 7 (BPAI Jan. 27, 2009). Here, Petitioners attempt to do just
that, relying on the same server-side proxy for both the claimed target computer
and the claimed gatekeeper computer. This attempt should be rejected.
Moreover, even if Petitioners attempt to rely on their nebulous mapping of
claim 1 (see supra Section III.B) to allege that Kiuchis origin server corresponds
to the claimed target computer, this mapping would also be improper. As the
Board has previously recognized, the Federal Circuit determined that a client-side
proxy did not form a direct communication with an origin server. Apple Inc.,
IPR2014-00404, Paper No. 42 at 15 n.4. Petitioners mapping would also mean
that Kiuchi would not meet other limitations of the claims as noted above. (See
e.g., Sections III.B.2, B.3.)
IV.
Kiuchi and RFC 1034 Do Not Render Obvious Claim 8

Claim 8 depends from and includes all of the features of independent claim
1. Petitioners rely on RFC 1034 to allegedly make up for certain deficiencies of

Kiuchi with respect to the additional limitations recited in claim 8. However,
Petitioners do not allege that RFC 1034 makes up for any of the deficiencies of
Kiuchi with respect to the limitations recited in claim 1. As such, for at least those
reasons discussed above in connection with claim 1, Petitioners have failed to
establish by a preponderance of the evidence that this claim is unpatentable, and
37

thus claim 8 should be confirmed.

V.
Dr. Guerins Testimony Should be Accorded Little, If Any, Weight

A.
Dr. Guerin Did Not Properly Analyze the Claims
Mangroves expert, Dr. Guerin, submitted a declaration in this proceeding.

(Ex. 1003.)
Apple submitted a copy of this declaration.
(Ex. 1003 in
IPR2016-00062.) Nevertheless, Dr. Guerin failed to consider, let alone opine on,
how any of the claim features are disclosed in asserted references. Dr. Guerins
testimony should thus be given little, if any, weight.
Where the involved subject matter is sufficiently complex to fall beyond
the grasp of an ordinary layperson, expert testimony is required to establish
invalidity. Proveris Scientific Corp. v. Innovasystems, Inc., 536 F.3d 1256, 1267
(Fed. Cir. 2008); see also Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361 (Fed.
Cir. 2004); Aspex Eyewear, Inc. v. Concepts In Optics, Inc., 111 F. Appx 582, 588
(Fed. Cir. 2004).
This requirement for expert testimony applies to contested
proceedings before an expert administrative agency like the PTAB. See, e.g.,
Brand v. Miller, 487 F.3d 862, 868-871 (Fed. Cir. 2007). Moreover, the expert
testimony must identify each claim element, state the witnesses interpretation of
the claim element, and explain in detail how each claim element is disclosed in the
prior art reference. Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1315
(Fed. Cir. 2002); see also Koito Mfg. Co. v. Turn-Key-Tech LLC, 381 F.3d 1142
38

(Fed. Cir. 2004).
It is insufficient for an expert to simply describe (1) his
understanding of a prior art reference and (2) what he considered known to one of
skill prior to the challenged invention, without also clearly describing how each
claim element is disclosed by the reference. See Schumer, 308 F.3d at 1316.
Here, Dr. Guerin never explains how each claim element is disclosed,
taught, or suggested by the references. (See Ex. 2047 at 15:1-21; see also Ex.
1003.) Petitioners lack of supporting expert testimony cannot simply be excused.
The technology involved is undisputedly complex, as reflected, for example, by the
qualifications of one of ordinary skill in the art. (See, e.g., Ex. 2043 at 13; Ex.
2044 at 5; see also Ex. 1003 at 7.) Indeed, the transparent creation of a VPN
between a client device and a target device requires testimony and analysis from
one of ordinary skill in the art. See Proveris Scientific, 536 F.3d at 1267; Aspex
Eyewear, 111 F. Appx at 588. The expert testimony relied upon by Petitioners is
insufficient to support the unpatentability analysis.
39

40

VI.
Petitioners Have Failed to Prove All References Are Prior Art

Prior art relied on in an IPR petition may only consist of patents or printed
publications.
35 U.S.C. 311(b).
RFC 1034 is not a patent.
However,
Petitioners have not established by a preponderance of the evidence that RFC 1034
qualifies as a printed publication. See In re Klopfenstein, 380 F.3d 1345, 1348
(Fed. Cir. 2004); Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., IPR201400690, Paper No. 43 at 16-20 (October 19, 2015); see also Bruckelmyer v. Ground
Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006).
41

A.
Petitioners Do Not Establish by a Preponderance of the Evidence

that RFC 1034 Was Publicly Accessible
Petitioners contend RFC 1034 (Ex. 1005) was published in November

1987. (Pet. at 5.) However, Petitioners provided no explanation regarding how
RFC 1034 was publicly accessible as of its alleged publication date. (Id.) The
Board has routinely found such naked assertions insufficient to establish that a
reference qualifies as a printed publication.
See, e.g., Apple Inc. v. DSS
Technology Management, Inc., IPR2015-00369, Paper No. 9 at 12 (June 25, 2015);

Square Inc. v. Unwired Planet, LLC, CBM2014-00156, Paper No. 22 at 6-7 (Feb.
26, 2015); Google Inc. v. Art+Com Innovationpool GMBH, IPR2015-00788, Paper
No. 7 at 6-11 (September 2, 2015); Symantec Corp. v. Trustees of Columbia Univ.
in the City of N.Y., IPR2015-00371, Paper No. 13 at 5-9 (July 17, 2015).
Dr. Guerin refers to RFC 2026 in his discussion of how RFCs are released.
(Ex. 1003 at 42.) However, RFC 2026 has a date on its face nine years after the
alleged publication date of RFC 1034, making it irrelevant in determining whether
RFC 1034 qualifies as a printed publication. Dr. Guerin nonetheless makes an
uncorroborated statement that [t]he publication date of each RFC is . . . typically
in the top right corner of the first page of the document, without discussing the
basis for this statement, so his testimony should be accorded no weight (Ex. 1003
at 44). See 37 C.F.R. 42.65(a); see also Dish Network L.L.C. v. Dragon
Intellectual Property, LLC, IPR2015-00499, Paper No. 7 at 11 (July 17, 2015).
42

Even assuming that RFC 1034 was released via, for example, FTP (see Ex.
1003 at 42), Petitioners have still not established that RFC 1034 qualifies as a
printed publication under 35 U.S.C. 311(b). For example, Petitioners have not
established how the public interested in the art would become aware of the location
of a theoretical FTP server storing RFC 1034. In the past, the Board has found that
references similar to RFC 1034 and Rescorla are not statutory prior artit should
do the same here. See Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP,
IPR2014-00514, Paper No. 18 at 5, 7 (Sep. 9, 2014); Elec. Frontier Found. v. Pers.
Audio, LLC, IPR2014-00070, Paper No. 21 at 22-24 (Apr. 18, 2014).
B.
The Additional Evidence Presented by Petitioner Apple Is

Insufficient to Establish by a Preponderance of the Evidence that
RFC 1034 Was Publicly Accessible
Apple (but not Mangrove) submitted evidence (Exs. 1029-1033) in support

of its contentions that RFC 1034 was publicly accessible by its alleged publication
date. (Apple Pet. at 39-42.) Exhibit 1029 is a declaration from Sandy Ginoza, a
representative of the IETF, submitted in litigation before the International Trade
Commission and Exhibit 1031 is a transcript of Ms. Ginozas February 8, 2013
deposition that was taken as part of the ITC action. (Apple Pet. at 40-41; Paper
No. 34 at 3.) Exhibit 1032 is allegedly an article from InfoWorld magazine
(dated August 16, 1999) and Exhibit 1033 is allegedly an article from
NetworkWorld magazine (dated March 15, 1999). (Apple Pet. at 41-42; Paper
43

No. 34 at 3.) As a preliminary matter, this evidence should not be considered as

Apple was improperly joined to this proceeding. See Section VII.B. To the extent
the testimony in Exhibits 1029-1033 is admitted and considered by the Board,
there is still insufficient evidence in the record to establish that RFC 1034 qualifies
as a printed publication for purposes of this proceeding.
For instance, there is no evidence Ms. Ginoza has any personal knowledge
that RFC 1034 became publicly available in November 1987 because she was not
even involved with the RFC editors publication process until June of 1999. (Ex.
1031 at 14 (page 50, lines 17-25).) Furthermore, her blanket assertion that RFC
1034 has been publicly available through the RFC editors web site or through
other means since its publication in November 1998 (Ex. 1029 at 11) does not
provide the underlying facts or data on which her opinion is based. As a result
of which her testimony is entitled to little or no weight. 37 C.F.R. 42.65(a). Her
testimony regarding her search of RFC Editor records relates only to providing a
true copy of RFC 1034 as maintained by the RFC Editor, and not to her testimony
that RFC 1034 was publicly available. (Ex. 1029 at 11; Ex. 1031 at 6 (p. 21, ll.
8-11).) Ms. Ginoza did not produce those records or explain what existed in the
records that allowed her to form her stated opinion. As a result, no weight should
be accorded to her testimony regarding the publication date of RFC 1034. 37
C.F.R. 42.65(a); see also Kinetic Technologies, Inc., Paper No. 43 at 19-20;
44

Typeright Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1158-1160 (Fed.
Cir. 2004); Finnigan Corp. v. ITC, 180 F.3d 1354, 1366 (Fed. Cir. 1999).
VII. Review is Barred by 35 U.S.C. 312(a)(2) and 315(b)-(c)
The 135 patent has been challenged eleven times in inter partes
proceedings before the Office. (See, e.g., Paper No. 35 at 2-5.) The present
challenge to the 135 patent is the latest in a long string of attempts that have
ignored or tried to side-step the statutory requirements for IPRs.
For instance, Apples first two challenges to the 135 patent were denied
because Apple was time-barred under 35 U.S.C. 315(b) as it had been served
with a complaint alleging infringement in August 2010, more than a year before it
filed its IPR petitions. IPR2013-00348, Paper No. 14 at 5 (Dec. 13, 2013), rehg
denied Paper No. 18 (Feb. 12, 2014); IPR2013-00349, Paper No. 14 at 5 (Dec. 13,
2013), rehg denied Paper No. 18 (Feb. 12, 2014). Apple also tried to have its
proxy, RPX Corporation, challenge the 135 patent in IPR2014-00171 and
IPR2014-00172. Apple tried to hide its involvement in the RPX proceedings in
several ways, giving the false impression that Apple and RPX were unconnected
entities without a privity or real party-in-interest relationship. IPR2014-00171,
Paper No. 55 at 5-7 (redacted) (Mar. 6, 2014); IPR2014-00172, Paper No. 55 at 5-7
(redacted) (Mar. 6, 2014). Despite these efforts, the Board found that Apple was a
real party-in-interest for both of RPXs petitions, and accordingly denied
45

institution given Apples time-barred status. IPR2014-00171, Paper No. 57 at 3

(redacted) (June 5, 2014); IPR2014-00172, Paper No. 57 at 3, 10 (redacted)
(June 5, 2014). Petitioners challenge in this proceeding is barred by 35 U.S.C.
312(a)(2) and 315(b)-(c).
A.
The Petition Filed by Mangrove Fails to Name All of the Real

Parties-in-Interest
A petition may only be considered if it identifies all real parties in interest.

35 U.S.C. 312(a)(2). The Petition names The Mangrove Partners Master Fund,
Ltd. (Petitioner Mangrove, a.k.a. Cayman Master) as the only RPI. Petitioner
Mangroves contention that this was accurate is contradicted by the evidence, and
is not credible. Tellingly, when Petitioner Mangroves expert was asked whether
he even recognized the name of Petitioner Mangrove, he answered with an
unqualified No. (Ex. 2047 at 120:20-22.)
1.
The Complex Web of Mangrove Entities
Petitioner Mangrove is part of a complex web of entities linked to a hedge

fund registered in the Cayman Islands that goes by a similar name, Mangrove
Partners (the Mangrove Partners Hedge Fund). (Ex. 2001, Mangrove Partners
Brochure at 3-4; Ex. 2002, Schedule A at 1-2; Ex. 2003, Cayman Islands Search
Report at 1.) Mangroves Petition failed to name a number of RPIs in this web of
entities, including (1) the Mangrove Partners Hedge Fund; (2) Nathaniel August
(President and majority owner of the Mangrove Partners Hedge Fund, see Ex. 2002
46

at 1-2); (3) The Mangrove Partners Fund, L.P. (the US Feeder); (4) The
Mangrove Partners Fund (Cayman), Ltd. (the Cayman Feeder); (5) Mangrove
Capital (the General Partner of the US Feeder); and (6) the unnamed investors that
provided funding for the Petition.
a)
The Mangrove Entities
The Mangrove Partners Hedge Fund is the investment manager for the US
Feeder, the Cayman Feeder, and Petitioner Mangrove. (Ex. 2001 at 3; see also Ex.
2041 at 6-7 (listing Petitioner Mangrove as a master fund in a master-feeder
arrangement controlled by the Mangrove Partners Hedge Fund); Ex. 2015 at 34
(describing the structure of a master-feeder arrangement).) All of the funds have a
shared investment objective . . . [to] compound their net worth while minimizing
the chances of a permanent loss of capital. (Ex. 2001 at 4.) In order to achieve
this objective, the Mangrove Partners Hedge Fund has complete discretion
regarding the investment of [the US Feeders, the Cayman Feeders, and Petitioner
Mangroves] assets in accordance with the investment objectives, policies and
parameters set forth in the applicable offering documents of each Fund. (Ex.
2001 at 3, 17 (emphasis added).) The Petition is necessarily an investment given
that Petitioner Mangrove exists for the purpose of receiving funding from investors
via the US Feeder and Cayman Feeder, making investments directed by the
Mangrove Partners Hedge Fund, and paying out profits to investors via the US
47

Feeder and Cayman Feeder. (See Ex. 2041 at 6-11; see also Ex. 2004 (showing the
Mangrove entities pursuing short positions in the publicly traded stock of Patent
Owners parent company, VirnetX Holding Corporation (VHC), via put options;
Ex. 2005 at 3 (a put option buyer hopes the stock will drop in price, increasing
the value of the put option).)
The Mangrove Partners Hedge Funds complete discretionary control over
Petitioner Mangrove is not merely theoretical. The Mangrove Partners Hedge
Fund has repeatedly demonstrated that, in practice, it exercises total control over
Petitioner Mangrove. For example, Ward Dietrich, Chief Operating Officer of the
Mangrove Partners Hedge Fund (See Ex. 2002 at 2), held himself out as an
authorized person to sign the Power of Attorney on behalf of Petitioner
Mangrove. See Paper No. 2 at 2. However, he has no public role in Petitioner
Mangrove, with only Nathaniel August, Kevin Phillip, and David Bree listed as
Petitioner Mangroves Directors in SEC filings. (Ex. 2041 at 6; see also Exs.
2007, 2008, 2009, 2010, 2011, 2012, 2013 (the Mangrove Partners Hedge Fund
and Nathaniel August signing documents on behalf of Petitioner Mangrove and the
other RPIs, including the US Feeder, the Cayman Feeder, and Mangrove Capital).)
The Mangrove Partners Hedge Fund also controls how Petitioner Mangrove
receives its funding and, thus, the funding for Mangroves Petition. In particular,
as noted above, like with Petitioner Mangrove, the Mangrove Partners Hedge Fund
48

has complete control over the US Feeder and Cayman Feeder. (Ex. 2001 at 3, 17.)
The US Feeder and the Cayman Feeder fund all of the activities of Petitioner
Mangrove (e.g., funding the investment in the filing of the Mangrove Petition in
this proceeding), receive management and investment fees from investors, and are
co-owners of Petitioner Mangrove. (See id. at 15.)
Further blurring the lines between the various entities is Mangrove Capital, a
Cayman Islands exempted company that is an affiliate of the Mangrove Partners
Hedge Fund and serves as the general partner of the US Feeder. (Id. at 3.)
Mangrove Capital is allocated 20% of the annual increase in the net worth of an
Investors interest in a Fund. (Id. at 4.) Moreover, [a]ny persons acting on
behalf of Mangrove Capital are subject to the supervision and control of [the
Mangrove Partners Hedge Fund] in connection with any investment advisory
activities. (Id. at 13.)
The Mangrove Partners Hedge Fund thus pulls the strings of all of the
different entities in the web, moving funds from one entity to another and causing
funds, including Petitioner Mangrove, to act in the way it wants. 9 The Mangrove
9
Unsurprisingly, the entities share common mailing addresses. (See, e.g., Ex.
2016 at 1, Ex. 2017 at 1, Ex. 2018 at 1, Ex. 2019 at 1 (the Cayman Feeder sharing
a common mailing address with Petitioner Mangrove), Ex. 2020 at 1-2 (the US
Feeder and Mangrove Capital sharing a common mailing address with the
49

Partners Hedge Fund, Nathaniel August, the US Feeder, the Cayman Feeder, and
Mangrove Capital are thus all RPIs.
In Galderma S.A. v. Allergan Industrie, SAS, the Board found that where a
President of a parent entity was also at the helm of the parent entitys subsidiary,
this strongly implies an involved and controlling parent corporation representing
the unified interests of itself and Petitioner. IPR2014-01422, Paper No. 14 at 12
(Mar. 5, 2015) (citing Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., IPR201300606, Paper No. 13 at 10 (Mar. 20, 2015)). The same is true for the relationship
between Petitioner Mangrove and the Mangrove Partners Hedge Fund, with
Nathaniel August at the helm of both entities. The Board has acknowledged that it
need not consider whether [a party] did or did not, directly or indirectly, exercise
[its] control. Galderma S.A., IPR2014-01422, Paper No. 14 at 12. Rather, for
purposes of finding that a party is an RPI, it is sufficient that the party had the
power to call the shots. Id. (citing Gonzalez, 27 F.3d at 758); see also Office
Patent Trial Practice Guide, 77 Fed. Reg. 157 at 48759 (Aug. 14, 2012) (The
concept of control generally means that it should be enough that the nonparty has
the . . . opportunity to control . . . .) (emphasis added). Thus, at a minimum, the
Mangrove Partners Hedge Fund has the power to call the shots in this
proceeding, and is an improperly omitted RPI.
Mangrove Partners Hedge Fund).)
50

b)
The Unnamed Investors
The funding of an IPR is an important factor that the Board must consider in
determining whether a party is an RPI. Office Patent Trial Practice Guide, 77 Fed.
Reg. at 48760.
Petitioner does not name the investors funding the Petition.
However, the investors would have each provided substantial funding for the
Petition since the Mangrove Partners Hedge Fund requires investors to provide a
minimum initial investment of $1,000,000. (Ex. 2001 at 6.) The undisclosed
investors that provided substantial funding for the Petition are the parties that stand
to gain or lose, and, therefore, are RPIs. See RPX Corp. v. VirnetX, Inc., IPR201400171, Paper No. 52 at 9 (June 23, 2014).
In addition, the fiduciary relationship between the unnamed investors and
the Mangrove Partners Hedge Fund (see Ex. 2001 at 5, 13) further compels a
finding that the investors are RPIs. See Taylor v. Sturgell, 553 U.S. 880, 894
(2008) (finding fiduciaries to be part of the third of six categories that create an
exception to the common law rule that normally forbids nonparty preclusion in
litigation); see also RPX Corp., IPR2014-00171, Paper No. 52 at 6.
c)
Recent Representations to the United States Securities

and Exchange Commission
The Mangrove Petitioners representation to the Board that the other

Mangrove entities are not RPIs is contradicted by its recent statements to the
United States Securities and Exchange Commission (SEC). In a form filed with
51

the SEC on March 17, 2016, Mangrove admitted that the US Feeder and the
Cayman Feeder are controlling shareholders of the Mangrove Petitioner and,
because of this relationship, shares of RPX Corporation (itself an RPI, see infra
Section VII.A.2) owned by the Mangrove Petitioner may be deemed to be
beneficially owned by the US Feeder and the Cayman Feeder. (Ex. 2057 at 14.)
Likewise, the SEC filing explained that by virtue of the relationship between
Nathaniel August, Mangrove Partners, Mangrove Capital, and the Mangrove
Petitioner, each of Mangrove Partners, Mangrove Capital, and Mr. August may be
deemed to beneficially own the Shares owned by the [Mangrove Petitioner]. (Id.)
By the same logic, the IPR Petition was filed for the benefit of Nathaniel August,
Mangrove Partners, Mangrove Capital, and the Mangrove Petitioners controlling
shareholders, the US Feeder and the Cayman Feeder.
2.
RPX Corporation
Evidence also demonstrates that RPX Corporation, which was involved in

the previous challenges to the 135 patent filed on Apples behalf, is an RPI to the
Petition filed by Mangrove.
The Mangrove entities are RPXs fifth largest
shareholder. (Ex. 2058 at 2.) Indeed, on March 17, 2016, the Mangrove entities
nominated three directors to RPXs Board of Directors, and disclosed they owned
approximately 5.0% of the Shares outstanding for RPX costing approximately
$27,385,283.
(Ex. 2057 at 15; see also id. at 14 (As the two controlling
52

shareholders of the Master Fund, each of the US Feeder and the Cayman Feeder
may be deemed to beneficially own the Shares owned by the Master Fund. . . .
[E]ach of Mangrove Partners, Mangrove Capital and Mr. August may be deemed
to beneficially own the Shares owned by the Master Fund.).) Mangrove also
acknowledged having recently met with management for RPX. (Ex. 2058 at 2.)
This development came after Mangrove gradually gained equity in RPX as
this proceeding went forward. Sometime between April 1, 2015 and June 30,
2015, the Mangrove Partners Hedge Fund received 211,736 shares of RPX stock,
then valued at over $3.5 million. (Compare Ex. 2006 with Ex. 2050.) Then,
sometime between July 1, 2015 and September 30, 2015, the Mangrove Partners
Hedge Fund received more shares, with its ownership increasing to 415,899 shares
of RPX stock. (Ex. 2051.) And sometime between October 1, 2015 and December
31, 2015, the Mangrove Partners Hedge Fund received still more shares, with its
ownership increasing to 513,137 shares of RPX stock. (Ex. 2052.) This sequence
of events is consistent, for example, with the Mangrove Partners Hedge Fund
receiving the first set of shares before the Petition was filed, the second set of
shares after the Petition was filed, and the third set of shares after the Board
decided to institute the proceeding.
Further suggesting RPXs involvement, Petitioner Mangroves counsel,
James Bailey, represents RPX in IPR2014-00946, IPR2014-00947, IPR2014-
53

00948, and IPR2014-01107. Other than the present proceeding, and co-pending
IPR2015-01047, Mr. Bailey is not counsel in any other PTAB proceedings. 10 This
is telling given that RPXs business model is to serve as an extension of a clients
in-house legal team, and to represent clients who are accused of patent
infringement, acting as their proxy to selectively clear liability for infringement
as part of RPXs patent risk management solutions. (See Ex. 2053; Ex. 2055;
Ex. 2054 at 3, 9.) With RPXs past efforts to work on Apples behalf to challenge
the 135 patent and the Mangrove entities current involvement with RPX, the
evidence strongly suggests that RPXand by virtue of their past joint conduct as
to the 135 patent, Appleis behind the Petition filed by Petitioner Mangrove.
54

55

4.
Failure to Identify All RPIs Prohibits Review
The requirement to identify all RPIs is a statutory prerequisite for

considering an IPR petition. See 35 U.S.C. 312(a)(2). Failure to disclose all
RPIs is a substantive defect. See, e.g., GEA Process Eng., Inc. v. Steuben Foods,
Inc., IPR2014-00041, Paper No. 15 at 10-13 (Dec. 23, 2014). Because the Petition
failed to name all RPIs, it may not be considered by the Board. See Atlanta Gas
Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, Paper No. 88 at 13
(Jan. 6, 2015); see also Aceto Agricultural Chems. Corp. v. Gowan Co., IPR201501016, Paper No. 15 at 11 (Oct. 2, 2015) (Based on the evidence presented, we
conclude that Petitioner has not met its burden of establishing compliance with the
56

statutory requirement to identify all RPIs. In view of our conclusion, we cannot

consider the merits of the patentability challenges presented in the Petition.). This
is so even assuming arguendo that there is not . . . a statutory bar under 35 U.S.C.
315(b) that would preclude Petitioner from refiling the Petition with all RPIs
properly named. Aceto, IPR2015-01016, Paper No. 15 at 11.
Petitioner Mangroves incorrect identification of the RPI is not a close
question or the result of inadvertent neglectit was intentional.
As such, like in Aceto, the Board should terminate this proceeding.11

Joining Apple does not save this proceeding because it was improperly joined to
this proceeding. (See infra Section VII.B.) Moreover, joining Apple does not save
this proceeding because it was void ab initio given Mangroves failure to name all
of the RPIs.
B.
Review is Barred by 35 U.S.C. 315(b)-(c)
Just like the first two IPRs filed by Apple, and the two IPRs filed by RPX on
Apples behalf, review in this case is barred under 315(b). First, since RPX is an
RPI to the Petition filed by Mangrove, and since RPX has previously been found
11
While the evidence discussed is sufficient to show Petitioner Mangroves
incorrect RPI identification, additional evidence could have been shown if the
Board had granted additional discovery. (See Paper Nos. 18, 39.)
57

by the Board to be acting as a proxy in Apples attempts to challenge the validity

of the 135 patent, the Petition filed by Mangrove is deficient under 315(b), and
so the proceeding should be terminated. See 35 U.S.C. 315(b).
Apple itself is also time-barred from this proceeding and its joinder was an
ultra vires action.12 See 35 U.S.C. 315(b)-(c). While section 315(b) provides an
exception from the time bar, this exception is only for a request for joinder. The
joinder provision, section 315(c), grants the Board discretion to join a party to an
existing inter partes review, provided certain criteria are met. For example, if a
party properly files a petition within the one-year deadline specified in section
315(b), and then files a request for joinder under subsection (c) after the oneyear deadline, section 315(b) would permit the Board to grant the joinder request.
35 U.S.C. 315(b)-(c) (emphasis added). The requirement that the petition be
properly filed is the predicate for the consideration of both the petition and the
joinder request, and it encompasses the requirement that the petition would have
been filed within the one-year period authorized under section 315(b).
The
legislative history of section 315(c) demonstrates both that the term properly
12
VirnetX filed a Petition for Writ of Mandamus in the United States Court of
Appeals for the Federal Circuit on March 4, 2016 regarding this issue. (Paper No.
40.) The petition was denied without prejudice to VirnetX raising the argument on
appeal. In re VirnetX Inc., No. 2016-119, slip op. at 2 (Fed. Cir. Mar. 18, 2016).
58

filed was meant to encompass the timing requirement of section 315(b), and that
section 315(b)s timing exemption was not intended to alter that requirement. 154
Cong. Rec. S9988 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl).
The Board acknowledged that Apples petition in IPR2016-00062 was timebarred under section 315(b) because it was filed long after the one-year period
from the service of VirnetXs complaint alleging infringement. (Paper No. 28 at
4.)
In fact, the Board has previously denied institution of Apples petitions
challenging claims of the same patents as time-barred. (See supra Section VII.)
The Board, however, interpreted the last sentence of section 315(b), which states
that [t]he time limit shall not apply to a request for joinder, 35 U.S.C.
315(b), to mean that if a party filing a time-barred petition requests joinder, the
one-year time bar shall not apply. (Paper No. 28 at 4.)
In doing so, the Board treated the terms petition and request for joinder
as interchangeable. But there is no basis for such a reading. Section 315(b), as
well as the overall statute, carefully distinguishes between the terms petition and
request for joinder. When Congress uses a particular statutory term, it does so
advisedly, and an agency impermissibly departs from the statute when it disregards
Congress intentional use of different statutory terms. See Loughrin v. United
States, 134 S. Ct. 2384, 2390 (2014). Section 315(b) imposes a mandatory oneyear time bar on any petition requesting the [inter partes] proceeding. 35 U.S.C.
59

315(b). It then exempts a request for joinder made under section 315(c)and
only such a requestfrom that timing prohibition. Id. But section 315(b) does not
extend that exemption to a petition, even though Congress clearly knew how to
apply such an exemption to a petition, as demonstrated elsewhere in the statute.
See, e.g., 35 U.S.C. 311(c), 314(b). The Boards interpretation of section
315(b) effectively re-writes the statute by expanding the statutory exemption for
joinder requests from a mandatory time bar to petitions.
In extending section 315(b)s exemption beyond the statutory mandate, the
Board also relied on its regulation, 37 C.F.R. 42.122(b), which provides that the
one-year time bar shall not apply when the petition is accompanied by a request
for joinder. (Paper No. 28 at 4.) But a regulation cannot alter a statute whose
meaning is plain, see Oshkosh Truck Corp. v. United States, 123 F.3d 1477, 1481
(Fed. Cir. 1997), nor can it justify an agencys unlawful augmentation of authority.
VIII. Conclusion
For these reasons, Petitioners have failed to prove that claims 1, 3, 4, 7, 8,
10, and 12 are unpatentable. The Board should enter judgment against Petitioners
confirming the patentability of the claims, and terminate this proceeding.
Respectfully submitted,
Dated: March 21, 2016
By: /Joseph E. Palys/

Joseph E. Palys
Registration No. 46,508
Counsel for VirnetX Inc.
60

CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. 42.6(e), I certify that I caused to be served on the
counsel for Petitioners a true and correct copy of the foregoing Patent Owners
Response by electronic means on the date below at the following address of record:
Abraham Kasdan (akasdan@wiggin.com)
Wiggin and Dana LLP
450 Lexington Avenue
New York, NY 10017
IP@wiggin.com
James T. Bailey (jtb@jtbaileylaw.com)
504 W. 136th St. #1B
New York, NY 10031
Jeffrey P. Kushan
Scott Border
Thomas A. Broughan III
Sidley Austin LLP
1501 K Street NW
iprnotices@sidley.com
Dated: March 21, 2016
Respectfully submitted,
/Joseph E. Palys/
Joseph E. Palys
Counsel for VirnetX Inc.

Notice 49

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CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

THE MANGROVE PARTNERS MASTER FUND, LTD. and APPLE INC.,

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

Claim Construction ..........................................................................................2

Virtual Private Network (VPN) (Claims 1, 4, 7, 10, and 12) ............4

Domain Name Service (DNS) Request (Claims 1, 3, 4, 8, 10,

Client Computer (Claims 1, 3, 4, 7, 10, 12) ....................................15

Other Terms .........................................................................................17

Kiuchi Does Not Anticipate Claims 1, 3, 4, 7, 8, 10, and 12 ........................18

Kiuchis Disclosure .............................................................................18

Kiuchi Does Not Anticipate Independent Claim 1 .............................20

Kiuchi Does Not Disclose the Recited DNS Features ..............20

The Alleged Request in Kiuchi Does Not Request an IP

Kiuchis Client-Side Proxy and Server-Side Proxy Do

Kiuchi Does Not Disclose the Claimed VPN ...........................29

Direct Communication ...................................................31

Kiuchi Does Not Anticipate Independent Claim 10 ...........................32

Kiuchi Does Not Disclose the Recited DNS Features ..............32

Kiuchi Does Not Disclose a DNS Proxy Server that

Kiuchi Does Not Disclose a DNS Proxy Server that

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

Kiuchi Does Not Anticipate Dependent Claims 3, 4, 7, 8, and

Kiuchi Does Not Disclose the Features of Claim 4 ..................35

Kiuchi Does Not Disclose the Features of Claim 7 ..................36

Kiuchi and RFC 1034 Do Not Render Obvious Claim 8 ..............................37

Dr. Guerins Testimony Should be Accorded Little, If Any, Weight ...........38

Dr. Guerin Did Not Properly Analyze the Claims ..............................38

Petitioners Do Not Establish by a Preponderance of the

The Additional Evidence Presented by Petitioner Apple Is

VII. Review is Barred by 35 U.S.C. 312(a)(2) and 315(b)-(c) ........................45

The Petition Filed by Mangrove Fails to Name All of the Real

The Complex Web of Mangrove Entities .................................46

The Mangrove Entities ...................................................47

The Unnamed Investors ..................................................51

Recent Representations to the United States

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

Failure to Identify All RPIs Prohibits Review ..........................56

Review is Barred by 35 U.S.C. 315(b)-(c) .......................................57

VIII. Conclusion .....................................................................................................60

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

Koito Mfg. Co. v. Turn-Key-Tech LLC,

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

Square Inc. v. Unwired Planet, LLC,

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

The Board should enter judgment against Petitioners for several

In addition, Petitioners have not established at least one of the

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

rendered obvious by Kiuchi and/or RFC 1034.

no claim terms require express construction. (Decision at 5.) Patent Owner

Under this standard, terms are

computer science or computer engineering and approximately two years of

CONFIDENTIAL - PROTECTIVE ORDER MATERIAL

claims in light of the specification and prosecution history. Nevertheless, VirnetX

But IPR is more adjudicatory than