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571.272.7822
Paper No. 8
Entered: Sept. 9, 2016
DECISION
Institution of Inter Partes Review
37 C.F.R. 42.108
IPR2016-00957
Patent 7,921,211 B2
I.
INTRODUCTION
A.
Background
B.
Related Matters
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Patent 7,921,211 B2
inter partes reexamination in 95/001,789 and 95/001,856 and inter partes
review in IPR2013-00378, IPR2013-00397, IPR2013-00398, IPR201400174, IPR2014-00175, IPR2014-00616, IPR2014-00615, IPR2014-00618,
IPR2015-00185, and IPR2015-00186. Pet. 24.
C.
Petitioner challenges claims 1, 2, 5, 6, 15, 16, 23, 27, 36, 37, 39, 40,
47, 51, and 60 of the 211 patent under 35 U.S.C. 102 as anticipated by
Takahiro Kiuchi & Shigekoto Kaihara, C-HTTPThe Development of a
Secure, Closed HTTP-Based Network on the Internet, PROC. SYMP. ON
NETWORK & DISTRIBUTED SYS. SECURITY, Feb. 2223, 1996, at 64 (Ex.
1005, Kiuchi). Pet. 6.
D.
E.
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F.
Patent Owner argues that the present case should not be instituted
under 35 U.S.C. 315(d) and 325(d) because the present challenge is the
thirteenth challenge. Prelim. Resp. 39.
Under the specific circumstances involved at this juncture, the Kiuchibased ground would not place a significant burden on the parties or the
Board. Accordingly, Patent Owner has not shown a sufficient reason to
deny this Petition, and we decline to exercise our discretion to deny
institution of the present proceedings based on this ground. See 37 C.F.R.
42.108(a) (stating that the Board has discretion to proceed . . . on all or
some of the grounds of unpatentability asserted).
G.
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II.
A.
ANALYSIS
Claim Construction
B.
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Patent 7,921,211 B2
appropriate closed network member, a client-side proxy sends a request for
connection to the server-side proxy, which is encrypted. Id.
The server-side proxy accepts [the] request for connection from [the]
client-side proxy (Ex. 1005, 65) and, after the C-HTTP name server
determines that the client-side proxy is an appropriate member of the closed
network, that the query is legitimate, and that the client-side proxy is
permitted to access . . . the server-side proxy, the C-HTTP name server
sends the IP address [of the client-side proxy] (id. at 66). Upon receipt of
the IP address, the server-side proxy authenticates the client-side proxy
and sends a connection ID to the client-side proxy. After the client-side
proxy accepts and checks the connection ID, the connection is
established after which time, the client-side proxy forwards requests from
the user agent in encrypted form using C-HTTP format. Id.
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communication link itself. Pet. 910 (first alteration in original) (quoting
Ex. 1003, 20; Ex. 1004, 23).
Petitioner also states that [t]he establishment and operation of a
secure communication link in Kiuchi between the client-side proxy and the
server-side proxy encompasses . . . an indication . . . that the DNS system
supports establishing a secure communication link, including the
establishment of the secure communication link itself. Pet. 2425 (citing
Ex. 1005, 65).
Patent Owner argues that the term indicate, as recited in claim 1,
do[es] not require construction (Prelim. Resp. 19) but that it is improper
to equate establishing a secure communication link with indicating whether
the domain name service system supports establishing a secure
communication link. Id. at 34. However, Patent Owner does not explain
specifically why the establishment of a link by a system would not
indicate whether the system supports such an establishment. For example,
if the system establishes a link, then one of skill in the art would understand
that the system supports such an establishment and would arrive at such an
understanding because the system, in fact, achieves such an establishment.
One of skill in the art would not understand that the system does not support
the establishment of a link if the system establishes the link. This would be
contrary to common sense principles that when a system performs an action,
the system must be able to perform the action that has been performed.
Otherwise, the system would not have performed the action, the system not
supporting such an action, and would therefore not indicate as such.
In view of the above and in the absence of specific reasoning by
Patent Owner as to why the establishment of a link by a system of Kiuchi
would not indicate that the system supports such an establishment,
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Petitioner has met its burden of demonstrating by a preponderance of the
evidence a reasonable likelihood of prevailing in proving unpatentability of
the challenged claim.
Patent Owner argues that Kiuchi fails to disclose a plurality of domain
names and corresponding network addresses, as recited in claim 1, for
example, because, according to Patent Owner, the URL (the alleged domain
name) does not correspond to the IP address of the server-side proxy (the
alleged corresponding network address) but to a resource on the origin
server. Prelim. Resp. 3536. Claim 1 recites a system configured to store
a plurality of domain names and corresponding network addresses. Patent
Owner does not assert or demonstrate persuasively that claim 1 also recites
that the domain name must correspond to any specific component, much less
that the domain name must correspond to a server-side proxy.
Claim 1 recites a system for establishing a secure communication link,
the system comprising a domain name service system configured and
arranged to indicate whether the domain name service system supports
establishing a secure communication link. Petitioner argues that Kiuchi
discloses this feature. See, e.g., Pet. 1214, 2125. Patent Owner argues
that Kiuchi fails to disclose this claim feature because the Federal Circuit
held that a secure communication link requires a direct communication
link and Kiuchis proxy servers at least do not teach direct
communication between a client and target computer. Prelim. Resp. 36
37. However, a trial is needed in order to ascertain the precise nature of the
holding by the Federal Circuit on this issue, the nature of the applicability or
relevance of a specific holding or conclusion drawn by the Federal Circuit
on this proceeding, and the precise nature of Kiuchis disclosed connection.
Therefore, Petitioner has met its burden of demonstrating by a
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preponderance of the evidence a reasonable likelihood of prevailing in
proving unpatentability of the challenged claim.
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request that the client-side proxy processes, and that Petitioner fails to
demonstrate, or even allege, that there is a user at the client-side proxy.
Prelim. Resp. 3940. Claim 27 recites that the domain name service system
is configured to enable establishment of a secure communication link
between a first location and a second location. Patent Owner does not
demonstrate persuasively that claim 27 also recites that a user must be
located at any specific location, much less located at the client-side proxy.
Petitioner persuasively maps the remaining claim elements and claims
to Kiuchis disclosure. See Pet. 16-33. Based on the foregoing discussion
and preliminary record, Petitioner establishes a reasonable likelihood of
prevailing in showing that Kiuchi anticipates claims 1, 2, 5, 6, 15, 16, 23, 27,
36, 37, 39, 40, 47, 51 and 60.
III.
CONCLUSION
IV.
ORDER
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37 C.F.R. 42.4, notice is hereby given of the institution of a trial.
PETITIONER:
Thomas H. Martin
Wesley C. Meinerding
MARTIN & FERRARO, LLP
tmartin@martinferraro.com
wmeinerding@martinferraro.com
PATENT OWNER:
Joseph E. Palys
Naveen Modi
PAUL HASTINGS LLP
PH-VirnetX-IPR@paulhastings.com
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