Ex Parte 6502135 et al

Patent Trial and Appeal BoardJan 9, 2019

95001679 (P.T.A.B. Jan. 9, 2019)

UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/001,679 07/08/2011 6502135 43614.92 9786 137313 7590 01/18/2019 PAUL HASTINGS LLP 875 15th Street, NW Washington, DC 20005 EXAMINER PEIKARI, BEHZAD ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 01/18/2019 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ CISCO SYSTEMS, INC., Requester, v. VIRNETX INC., Patent Owner. ____________ Appeal 2017-011862 Reexamination Control 95/001,679 Patent 6,502,135 B1 Technology Center 3900 ____________ Before STEPHEN C. SIU, DENISE M. POTHIER, and JEREMY J. CURCURI, Administrative Patent Judges. SIU, Administrative Patent Judge DECISION ON REHEARING Appeal 2017-011862 Reexamination Control 95/001,679 Patent 6,502,135 B1 2 In papers filed March 6, 2018, Patent Owner requests a rehearing under 37 C.F.C. §§ 41.77(b)(2) and 41.79(a)(1) from the Decision (“Dec.” or “Decision”) of the Patent Trial and Appeal Board (hereinafter Board), dated February 6, 2018 (“Req. Reh’g”). Requester filed a response on April 5, 2018. Third Party Requester’s Comments in Response to Patent Owner’s Request for Rehearing Pursuant to 37 C.F.R. 41.79(c) (“3PR Comments”). Patent Owner argues that Kiuchi fails to disclose “determining whether the client computer is authorized to establish a VPN with the target computer,” as recited in claim 4. Req. Reh’g. 2–3 (citing PO App. Br. 21). In particular, Patent Owner argues that Kiuchi discloses whether a “server- side proxy is registered in the network, not whether a purported ‘client computer’ is authorized to establish a VPN” and that “whether the server- side proxy is permitted to connect says nothing as to the client computer’s authorization.” PO App. Br. 21. We are not persuaded by Patent Owner’s arguments for at least the reasons set forth by Requester. 3PR Comments 3–10. For example, as Requester points out, Patent Owner states that Kiuchi discloses that “a determination is made of whether ‘the server-side proxy . . . is permitted to accept the connection from the client-side proxy.’” 3PR Comments 7 (citing PO App. Br. 21).1 Patent Owner does not point out any specific differences between Kiuchi’s disclosure and “determining whether the client 1 Requester also indicates another panel states “[o]ne skilled in the art would have understood that a client that is determined to be ‘permitted to connect’ also would be determined to be ‘authorized’ to do so. Otherwise, the client would not be permitted to connect with the server[.]” 3PR Comments 4 (quoting IPR2015-01046, Paper 71 at 19). We agree. Appeal 2017-011862 Reexamination Control 95/001,679 Patent 6,502,135 B1 3 computer is authorized to establish a VPN with the target computer,” as recited in claim 4. In both cases, an authorized device (e.g., a “client computer” or a “client-side proxy”) connects with another device (e.g., a “target device” or a “server-side proxy”). Patent Owner argues that determining whether a server-side proxy of Kiuchi “is permitted to connect” with a client-side proxy “says nothing” about determining whether a client-side proxy “is permitted to connect” with a server-side proxy. We disagree with Patent Owner’s argument for at least the reasons set forth by Requester. 3PR Comments 8–10. For example, as Requester points out, Patent Owner “fails to explain the distinction.” We do not independently identify a distinction given that, as previously discussed, in both Kiuchi and the present claims, a device (e.g., a client-side proxy or client computer) that is “authorized” (i.e., permitted) to connect with another device (e.g., a server-side proxy), in fact, connects with the device – if authorized or permitted to do so – and a secure communication link is established between an authorized client computer (i.e., a client-side proxy) and a target computer (i.e., a server-side proxy). Also, we address the above passage in Kiuchi when discussing steps (2) and (3) in claim 1, from which claim 4 depends. See also Dec. 20 and 21–22 (both quoting Kiuchi 65). Claim 4 recites more details of step (3)’s “automatically initiating the VPN” step. Thus, although not explicitly discussing Patent Owner’s contention when discussing claim 4 (Dec. 22), we addressed that Kiuchi fails to teach “determining whether the client computer is authorized to establish a VPN with the target computer” as Appeal 2017-011862 Reexamination Control 95/001,679 Patent 6,502,135 B1 4 recited in claim 4 indirectly when discussing claim 1. Thus, Patent Owner’s argument was not overlooked or misapprehended. Although not argued in the Request for Rehearing, we note Patent Owner contended that “claims 1–9 and 13–18” would not have been obvious to one of ordinary skill in the art because of “[s]econdary considerations supporting nonobviousness include long-felt need, failure of others, skepticism, commercial success, and praise and acceptance by others in the field.” PO App. Br. 68. In particular, Patent Owner argues that there was “a long-felt need . . . to easily and conveniently establish secure communication links” and to “initiate a VPN between a client computer and a target computer,” that “others attempted to create easy-to-enable secure communications [but] failed,” that of various alleged “prestigious organizations,” “none of them came up with a solution” to “easily set up secure communications over the Internet,” that a specific “DARPA program manager” allegedly “informed” a “co-inventor . . . that [the] technology . . . would never be adopted,” that “multiple companies” “entered into a portfolio license” or “licensed the patents,” that various companies allegedly “demonstrat[ed] praise through their conduct” of “investing” and “spend[ing] . . . on internal research and development efforts” or “would have invested but for a[n adverse] change in circumstances,” PO App. Br. 68–71. Hence, Patent Owner argues that it would not have been obvious to one of ordinary skill in the art to have combined any of the cited references because the claimed feature of “establishing a secure communication link between a client computer and a target computer” (as the alleged “nexus” Appeal 2017-011862 Reexamination Control 95/001,679 Patent 6,502,135 B1 5 between the claimed invention and the alleged secondary considerations) resulted in satisfaction of a “long-felt need,” was the subject of alleged “praise” by others in the field, was supposedly the reason (or “nexus”) for alleged licenses, reported to have enjoyed commercial success, that one particular “DARPA program manager” allegedly express skepticism that a secure communication link between a client computer and a target computer could ever be accomplished “by regular computer users,” and that, at the time of the invention, those of skill in the art had attempted to establish a secure communication link between a client computer and a target computer (i.e., the alleged “nexus”) but failed to do so successfully. We are not persuaded by Patent Owner’s argument at least because the prior art reference, such as Kiuchi, discloses establishing a secure communication link between a client computer and a target computer, which Patent Owner relies on as a “nexus” between the claimed invention and each of the alleged objective indicia of non-obviousness. It would not make logical sense to conclude that establishing a secure communication link disclosed by Kiuchi, for example, was somehow not disclosed by Kiuchi because Patent Owner’s subsequent establishing of a secure communication link allegedly satisfied a long-felt need, met with skepticism by a “DARPA project manager,” enjoyed commercial success, was supposedly praised, or was the subject of alleged licenses. All evidence of secondary considerations stem from what was known in the prior art (e.g., Kiuchi) so that there can be no nexus. Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011). Appeal 2017-011862 Reexamination Control 95/001,679 Patent 6,502,135 B1 6 We have granted the Request for Rehearing to the extent that we have reconsidered the Decision, but we deny the request for rehearing with respect to making any changes to the grounds of rejection. REHEARING DENIED jagr For Patent Owner: PAUL HASTINGS LLP 875 15TH STREET, NW Washington, DC 20005 For Third Party Requester: SIDLEY AUSTIN LLP 2001 ROSS AVENUE SUITE 3600 Dallas,TX 75201