Ex Parte 7,188,180 et al

Patent Trials and Appeals Board

Apr 1, 2014

95001792 - (D) (P.T.A.B. Apr. 1, 2014)

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.
95/001,792 10/25/2011 7,188,180 43614.100 1972
22852 7590 04/01/2014
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/01/2014 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 and Appellant

v.

VIRNETX, INC.
Patent Owner and Respondent
____________________

Appeal 2014-000591
Reexamination Control No. 95/001,792
United States Patent No. 7,188,180 B2
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DENISE M. POTHIER, and
JEREMY J. CURCURI, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Requester, Cisco Systems, Inc. (hereafter “Requester”) made a third party
request for inter partes reexamination of U.S. Patent No. 7,188,180 B2 (“the 180
patent”) to Victor Larson et al., entitled Method for Establishing Secure
Communication Link Between Computers of Virtual Private Network, issued
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March 6, 2007, and currently assigned to VirnetX, Inc. (hereafter “Owner”).
Requester appeals under 35 U.S.C. §§ 134(b) and 315 (2002) from the
decision in the Right of Appeal Notice (RAN) confirming claims 1, 4, 6-15, 17, 20,
22-31, 33, 35, and 37-411 of the 180 patent. Requester App. Br. 2.
Owner filed a Respondent Brief disputing the contentions of the Requester
and supporting the Examiner’s decision. Owner Resp. Br.
Requester filed a Rebuttal Brief. Requester Reb. Br.
The Examiner’s Answer relies on the RAN for the rejections on appeal as
well as responses to the positions of Owner and Requester, incorporating it by
reference. Ans. 1.
An oral hearing was conducted on February 26, 2014. The transcript of the
oral hearing will be made of record in due course.
We are informed that the 180 patent is involved in pending litigation, styled
VirnetX Inc. v. Apple Inc., Civil Action No. 6-13-cv-00211, VirnetX Inc. v. Cisco
Systems, Inc., Civil Action No. 6-10-cv-00417, and VirnetX Inc. v. Microsoft
Corp., Civil Action No. 6-13-cv-00351, all of which are before the U.S. District
Court for the Eastern District of Texas. Requester App. Br. 1.
Requester identifies numerous reexaminations of different patents that share
some common claim terminology. Requester App. Br. 1. The application
resulting in the 180 patent claims to be a continuation-in-part of U.S. Application
No. 09/504,783 issued as U.S. Patent No. 6,502,135 B2. Two of the

1 The RAN also confirms claims 16 and 32. See RAN 1, Box 3. However, claim
16 depends from claim 2, which was not subject to reexamination; claim 32
depends from claim 18, which also was not subject to reexamination. See Non-
Final Rej. 1, Box 1; Owner Resp. Br. 1 n. 1, 3. We presume claims 16 and 32 are
not subject to this reexamination or appealable for purposes of this opinion.
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reexaminations for U.S. Patent No. 6,502,135 B2 listed in the Appeal Brief were
assigned Reexamination Control Nos. 95/001,679 and 95/001,682 and merged.
Requester App. Br. 1. On January 10, 2014, an Action Closing Prosecution (ACP)
was mailed for these reexaminations.
Requester also identifies numerous pending Inter Partes Reviews, none of
which concerns the 180 patent. Requester App. Br. 1-2.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315.
We AFFIRM the Examiner’s decision to confirm claims 8, 24, and 39.
We REVERSE the Examiner’s decision to confirm claims 1, 4, 6, 7, 9-15,
17, 20, 22, 23, 25-31, 33, 35, 37, 38, 40, and 41, designating our reversal as new
grounds of rejection for these claims pursuant to 37 C.F.R. § 41.77(b).
Illustrative claim 1 on appeal reads as follows:
1. A method for accessing a secure computer network address,
comprising steps of:
receiving a secure domain name;
sending a query message to a secure domain name service, the query
message requesting from the secure domain name service a secure computer
network address corresponding to the secure domain name;
receiving from the secure domain name service a response message
containing the secure computer network address corresponding to the secure
domain name; and
sending an access request message to the secure computer network
address using a virtual private network communication link.

Requester App. Br., Claims App’x 15.

A. Prior Art Cited
The Requester relies on the following as evidence of unpatentability:
Takahioro Kiuchi and Shigekoto Kaihara, C-HTTP – Development of a Secure,
Closed HTTP-based Network on the Internet, 1996 Proc. of SNDSS, 64-75
(January 26, 1996) (“Kiuchi”).
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David M. Martin Jr., A Framework for Local Anonymity in the Internet 1-14
(Boston University Technical Report) (February 21, 1998) (“Martin”)

B. Withdrawn Rejections
The Examiner has withdrawn the following rejections:
Reference(s) Basis Claims Last Presented
Kiuchi § 102
1, 4, 6, 8-10,
12-15, 17, 20,
22, 24-26, 28-
31, 33, 35, 37,
39, and 40
Non-Final
Rej. 2
Kiuchi § 103(a) 11, 27, and 41 Non-Final Rej. 3
Kiuchi and Martin § 103(a) 7, 23, and 38 Non-Final Rej. 3

Requester App. Br. 3.

II. ISSUE ON APPEAL
Requester raises the following issue: whether the Examiner erred in
confirming claims 1, 4, 6-15, 17, 20, 22-31, 33, 35, and 37-41?

III. ANALYSIS
A. Claim Construction
We begin by construing the phrase “a virtual private network
communication link” recited in independent claims 1, 17 and 33. Owner and
Requester have different understandings of this phrase. Requester argues that the
Examiner unduly narrowed the claim construction of this term to require the
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recited network to be entirely private. Requester App. Br. 6 (citing RAN 4).
Requester argues that the claimed network can have insecure communication
paths, such that “‘a virtual private network’ is ‘a network of computers which
privately communicate with each other by encrypting traffic on insecure
communication paths between the computers’” (Requester App. Br. 5 (citing Ex. F,
p. 13)), and that Owner’s own claim construction of this phrase in a court
proceeding did not require the network to be entirely private (id. at 5-6).
Although Owner does not define “a virtual private network communication
link,” Owner agrees with the Examiner that a one-way communication protected
with a public key, such as discussed in Kiuchi, is not a “virtual private network
communication link,” because no link exists in Kiuchi when the request for
connection is sent. Owner Resp. Br. 4 (citing ACP 4-5). Citing to the declaration
of Dr. Angelos D. Keromytis (“the Keromytis declaration”), Owner contends that
an ordinary skilled artisan would not have understood a mere point-to-point
communication between unconnected computers to constitute a virtual private
network communication link. Owner Resp. Br. 4-5 (citing the Keromytis
declaration ¶¶ 21-25). Keromytis further declares “[a] person of ordinary skill in
the art would have understood a virtual private communication, as recited in claim
1, to be a communication path between computers in a virtual private network.”
The Keromytis declaration ¶ 24.
We are not persuaded by either party’s support for how one of ordinary skill
in the art would have understood the phrase “a virtual private network
communication link.” Although the Keromytis declaration provides an opinion as
to how one of ordinary skill in the art would understand the phrase “a virtual
private network communication” (id.), this position is circular. That is, the
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explanation of the phrase “virtual private network communication link” includes “a
virtual private network” within the explanation and without defining what a virtual
private network is. Thus, we find the Keromytis Declaration of limited assistance
in resolving the issue of the meaning of virtual private network communication
link.
During examination of a patent application, a claim is given its broadest
reasonable construction “in light of the specification as it would be interpreted by
one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (internal citations and quotations omitted). In addition,
claim terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire disclosure.
In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
We agree with Requester that the Examiner improperly construed the
limitation “a virtual private network communication link” by not considering this
limitation as a whole and focusing on the phrase “private network” within the
recitation “virtual private network communication link.” See Requester App. Br. 5
(citing RAN 4); Requester Rebuttal Br. 1. Notably, claims 1, 17, and 33 do not
recite a network, but rather a communication link. That is, claims 1, 17, and 33
recite “a virtual private network communication link,” not “a virtual private
network.” As such, the claims on appeal do not require a VPN and recites nothing
more than a communication link with the ability to be used within a virtual private
network. The 180 patent’s disclosure supports this interpretation by stating “a
virtual private connection does not provide the same level of security to the client
computer as a virtual private network.” The 180 patent 55:9-11; Fig. 36.
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The disclosure of the 180 patent and other evidence of record support our
interpretation of the phrase “virtual private network communication link.” The
disclosure of the 180 patent states “[t]he secure communication link is a virtual
private network communication link over the computer network.” The 180 patent
6:63-65. Thus, in accordance with the disclosure, the link in claim 1 is a secure
communication link over a network. The disclosure also describes sending queries
using a virtual private network (VPN) communication link, which is created prior
to establishing a VPN. For example, an administrative VPN communication link
3319 is created at step 3408 when sending a query to the secure domain name
service (SDNS) 3313. The 180 patent 51:46-50; Fig. 34. The disclosure also sets
forth establishing a VPN communication link between software module 3309 and
secure server 3320 at step 3409. The 180 patent 52:27-37; Fig. 34. Both these
examples support a VPN communication link existing prior to the establishment of
a VPN itself at step 3410. See the 180 patent, Fig. 34, step 3410 (describing
“establishing VPN with secure website”).
We, therefore, disagree with the Examiner’s finding and Owner’s position
that a point-to-point communication cannot occur over a VPN communication link.
RAN 4-5; Owner Resp. Br. 4-5. Moreover, we agree with Requester that claim 1
does not recite when the VPN communication link is created. Rather, according to
claim 1, the link must exist only when sending an access request message to the
secure computer network address. See Requester App. Br. 9. This position is
consistent with the 180 patent, which indicates that a proxy application, when
enabled, modifies unencrypted message packets by inserting data into a message
packet that are used for forming a virtual private connection between client
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computer 3604 and a server computer connected to network. The 180 patent 55:2-
8; Fig. 36.
The Specification of the 180 patent also repeatedly states that the network is
the Internet. See, e.g., 180 patent 6:22-27, 41-44, 8:12-15, 16:47-48, 20:35-36.
Claim 10 also recites that the VPN includes the Internet. The 180 patent, claim 10.
The Specification of the 180 patent further provides examples of what a VPN is
based on, but does not define this term. See Spec. 6:63-7:12, 51:52-57. One
district court proceeding includes an ordinary meaning of “a virtual private
network” as
A network which has the appearance, functionality, and security of a
private network, but which is configured within a public network,
such as the Internet. The use of a public infrastructure while ensuring
privacy using measures such as encryption and tunneling protocols,
helps provide the security of a private network at a cost similar to that
of a public network.

Requester App. Br., Evidence App. Ex. B-4, p. 6 (quoting IEEE Wiley Electrical
and Electronics Engineering Dictionary Wiley Electrical 842 (2004)).2
Given the above, a broadest reasonable construction of the phrase “a virtual
private network communication link,” in claim 1, when considering the disclosure
and as construed by an ordinary skilled artisan, includes a secure communication
link within a network, including over the Internet, that appears to have the security
of a private network, such as by using encryption.

2 This definition is consistent with another dictionary which states “a virtual private
network” includes “[n]odes on a public network such as the Internet that
communicate among themselves using encryption technology so that their
messages are as safe from being intercepted and understood by unauthorized users
as if the nodes were connected by private lines.” Microsoft® Computer Dictionary
554 (5th ed. 2002).
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B. Art Rejections
With this understanding, we turn to Requester’s contentions and Kiuchi.

1. Withdrawn Rejection Based on Kiuchi Under § 102
The Examiner initially rejected claims 1, 4, 6, 8-10, 12-15, 17, 20, 22, 24-26,
28-31, 33, 35, 37, 39, and 40 based on Kiuchi under § 102 but later withdrew the
rejection. Non-Final Office Action 2 (citing Request 15-17, Ex. E-2);
ACP 3-6. In particular, the Examiner agreed with the Owner that the cited portions
of Kiuchi (i.e., request for connection discussed at Step (3) under Section 2.3 and
Appendix 3(c)) occur before any virtual private network communication link
exists. See RAN 4-5; Owner Resp. Br. 4-5. Given the above construction of a
VPN communication link, we disagree.
As explained by Requester in the Brief and the Request (Requester App. Br.
7-8; Request, Ex. E-2, pp. 13-16), Kiuchi discloses a client-side proxy sending a
request for connection to server-side proxy (e.g. an access message). Request, Ex.
E-2, p. 14 (citing Kiuchi 65). Additionally, Kiuchi teaches that this request is
encrypted using a key. See id. at 15; see also Kiuchi 74 (App’x. 3c). Lastly,
Kiuchi discloses the communications are within a closed group of institutions on
the Internet (e.g., a network). See Request, Ex. E-2, p. 16 (citing Kiuchi 64); see
also Kiuchi, Abstract. Thus, this encrypted communication between the client and
server sides in Kiuchi is over a communication link or path within a network (e.g.,
the Internet) that appears to have the security of a private network due to the
encryption of the request using a key. See Kiuchi 64-65.
Additionally, even assuming we accept Owner’s and the Examiner’s
understanding that “a virtual private network communication link” in claim 1
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requires the closed Hypertext Transfer Protocol (C-HTTP) connection in Kiuchi to
exist or have been established in order to use a VPN communication link, Kiuchi
discloses another step (e.g., step (6)) where communications (e.g., a C-HTTP or
HTTP/1.0 request) are sent from the client-side proxy to the server-side proxy after
establishing a connection at step (5). Requester App. Br. 9-10 (citing Kiuchi 66).
At step (6) in Kiuchi, the C-HTTP connection has been established. See Kiuchi 66.
Kiuchi further discloses the HTTP/1.0 request encrypted and wrapped in the
C-HTTP request dispatched by the client proxy includes a command “GET
‘http://server/in/current/connecton/sample.html’” (Kiuchi 66, Figure c) and is sent
to the server-side proxy at an Internet Protocol (IP) address (e.g., 130.69.222.222)
(Kiuchi 74-75, App’x 3g). See also Kiuchi 73 (explaining that lines with asterisk
are encrypted and server-side proxy IP address is 130.69.222.222). This computer
network address is consistent with Requester’s mapping of “the secure computer
network address” recited in claim 1. See Request, Ex. E-2, p. 13. Moreover, the
client side and server side are connected to each other, otherwise they would not be
able to communicate. Lastly, Kiuchi discloses the C-HTTP provides secure HTTP
communication mechanisms within a closed group of institutions on the Internet.
See Kiuchi 64.
As to the later findings, Owner asserts that a HTTP/1.0 request to access a
webpage has nothing to do with claim 1 and does not access a secure computer
network address. Owner Resp. Br. 7. As stated above, Kiuchi demonstrates the
request involves more than accessing a webpage. For example, Appendix 3g of
Kiuchi shows the access request message includes a server-side IP address once
the HTTP/1.0 request is encrypted and wrapped in a C-HTTP request. See Kiuchi
66, Fig. c(2), 74-75. Kiuchi teaches sending the access request message (e.g., the
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CTTP request) to the secure computer network address on the server side (e.g.,
server-side IP address). Kiuchi 74-75; see also Kiuchi 73. We, therefore, disagree
with Owner that Kiuchi fails to describe a request used to access a secure computer
network address of the server side. Owner Resp. Br. 7.
Citing to 37 C.F.R. § 41.67(c)(1)(vi), Owner asserts that the findings
concerning step (6), for example, are “outside the scope of appeal.” Owner Resp.
Br. 7. We agree that this step and other portions of Kiuchi discussed above have
not previously been discussed by Requester. Yet, we are permitted to propose a
new ground of rejection. See 37 C.F.R. § 41.77(b).

2. New Rejection Based on Kiuchi Under 35 U.S.C. § 103
Pursuant to 37 C.F.R. § 41.77(b), claims 1, 4, 6, 9-15, 17, 20, 22, 25-31, 33,
35, 37, 40, and 41 are newly rejected based on Kiuchi under § 103.
a. Claims 1, 4, 9-12, 14, 17, 20, 25-28, 30, 33, 35, 40, and 41
We refer to our discussion above in connection with Kiuchi when discussing
claim 1. For the additional recitations not discussed above, we adopt the findings
presented in the Request and the statements made by the Examiner in the RAN
when addressing the recitation of “the query message requesting from the secure
domain service a secure computer network address corresponding to the secure
domain name.” See Request, Ex. E-2, pp. 3-16; RAN 5-6.
We further find the above discussion discloses the step of sending an access
request message to the secure computer network address using a VPN
communication link. However, to the extent that Kiuchi does not disclose the
private network communication link is a virtual private network communication
link, Kiuchi also discusses that C-HTTP can be used in a closed HTTP-based
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virtual network for closed groups, such as headquarters or corporate branches.
Kiuchi 69. Kiuchi, thus, further teaches or suggests an access request message
being sent to the server computer network address, such as that discussed in step
(6), uses a virtual private network communication link as recited in claim 1 to
create a secure HTTP communication mechanism for institutions. Kiuchi 64, 69.
Independent claims 17 and 33 are similar in scope with claim 1. We adopt
our above findings as well as those presented in the Request. Request, Ex. E-2, pp.
31-33, 38-40.
Dependent claims 4, 9-12, 14, 20, 25-28, 30, 35, 40, and 41 are not
separately argued by Requester or Owner. See Requester App. Br. 13-14. We
adopt the position in the Request. Request, Ex. E-2, pp. 19-31, 34-38, 40-42, 51,
and 52.

b. Claims 6, 22, and 37
Claims 6, 22, and 37 recite “the virtual private network is based on inserting
into at least one data packet at least one data value representing a predetermined
level of service associated with the virtual private network.” Regarding these
claims, the Examiner finds that version information (e.g., C-HTTP/0.7) is not
inserted into a data packet but rather into the request-line or version-line.
RAN 8-9.
Requester disputes the Examiner’s position and argues the Examiner makes
inconsistent statements. Requester App. Br. 10-11; Requester Reb. Br. 5-7.
Specifically, Requester points to the discussion of claim 8, where the Examiner
states that the request and responses are data packets. Requester App. Br. 11
(citing RAN 11). Owner makes no comment concerning this point but disagrees
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with Requester that version information is a “predetermined level of service.” See
Owner Resp. Br. 7-8.
We agree with Requester. Owner does not dispute that Kiuchi’s request or
response containing information (e.g., C-HTTP request or response discussed at
Kiuchi 70-71) is a data packet. Furthermore, we agree that the broadest reasonable
construction of the term “data packet” in light of the disclosure, includes a C-
HTTP request or response containing information. See Requester App. Br. 11-12;
Requester Reb. Br. 6. Moreover, the C-HTTP connection creates a VPN as
previously discussed.
Concerning whether a version number of C-HTTP is “a predetermined level
of service,” we agree with Owner that the Examiner does not state that the version
number is or is not a predetermined level of service. See Owner Resp. Br. 8 (citing
RAN 8-9). Even so, Owner does not provide an adequate explanation why a
version number cannot be “predetermined level of service.” Owner Resp. Br. 7-8;
Requester Reb. Br. 7. Given that a version number discloses a version of a HTTP
protocol, which is associated with distributing information (e.g., a service), the
version of C-HTTP teaches or suggests a value representing a predetermined
service level as broadly as recited. Thus, collectively, Kiuchi teaches or suggests
the VPN is based on inserting into a data packet a data value representing a
predetermined level of service associated with the VPN as recited in claims 6, 22,
and 27.

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c. Claims 8, 24, and 39
Claims 8, 24, and 39 recite “the virtual private network is based on
comparing a value in each data packet transmitted to the secure computer network
address to a moving window of valid values.” Regarding these claims, the
Examiner finds that Requester’s understanding of “moving window of values” is
premised on “window sequence number.” RAN 10.
Requester disputes the Examiner’s position and argues both the request and
response in Kiuchi contain a nonce value that shifts and both values create a
sequence. Requester App. Br. 12-13; Requester Reb. Br. 7-8. Specifically,
Requester contends that because the values shift, they create a moving window of
valid values. Id. Owner asserts that the claim requires “a window of valid values”
not any particular nonce value as in Kiuchi and that there is no comparison of a
value to a window of valid values in Kiuchi as recited in claim 8. Owner Resp. Br.
8.
We agree with Owner. According to the disclosure in the 180 patent, the
“moving window of valid values” (e.g., 1209) is shown in Figure 12A. The 180
patent 21:64-22:1. For example, the 180 patent describes window W3 slides down
the list of valid entries, such that the valid entries changes over time. The 180
patent 24:12-21; Fig. 12A. Those values matching the entries in window W3 are
accepted and valid; those that fall outside the window are rejected as invalid. Id.
In light of the disclosure and as understood by an ordinary artisan, the “window of
valid values” is not a single valid value that changes with time, but rather is
collection of values at a given time. Additionally, we agree that Kiuchi does not
discuss comparing a value to a window or collection of values. Owner Resp. Br. 8.
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We, therefore, do not find that Kiuchi discloses, teaches, or suggests the
recited “virtual private network is based on comparing a value in each data packet .
. . to a moving window of valid values” as recited in claims 8, 24, and 39.

d. Claims 13, 15, 29, and 31
Claims 13 and 15 depend from claim 1. Claim 13 recites various steps being
performed by “a client computer,” and dependent claim 15 recites “[t]he method of
claim 1, performed by a client computer.” Claims 29 and 31 are commensurate in
scope with claims 13 and 15 respectively, but depend from independent claim 17.
We select claims 15 and 31 as representative.
The Examiner finds that Kiuchi teaches this limitation. Requester supports
the Examiner’s position, asserting that a client-side proxy is a computer operable
as a client and, thus, is “a client computer.” Requester Reb. Br. 8. Requester
further argues that the 180 patent’s disclosure does not define or limit the “client
computer” to exclude a client-side proxy. Id.
Owner argues that the Examiner erred in finding that Kiuchi teaches various
features being performed at the client computer. Owner Resp. Br. 8. Owner
contends that Kiuchi teaches the client-side proxy – not the client computer or user
agent – performs the various recited features and that the client-side proxy and the
client computer are not the same computer. Owner Resp. Br. 8-9. Owner also
states that one skilled in the art would not have understood Kiuchi to disclose a
client computer performing its features. Owner Resp. Br. 8 (citing the Keromytis
declaration ¶¶ 36-38).
Upon review, we agree with Requester. Notably, identity of terminology
between Kiuchi and claimed limitation “client computer” is not required. See In re
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Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Keromytis states the one skilled in the
art would be able to distinguish between a client computer within a firewall and
computer residing on a firewall (e.g., client-side proxy). The Keromytis
Declaration ¶ 38. Yet, this statement indicates that a client-side proxy is a
computer, consistent with Requester’s position. Id.; see also Requester Reb. Br. 8.
Given that that the proxy (e.g., a computer) serves the client-side, we find it
reasonable that this proxy is a computer for a client or “a client computer” as
broadly as recited. Moreover, claims 13 and 15 do not recite the location of the
client computer, such that the client computer cannot be located on a firewall. See
Owner Resp. Br. 8.
Also, the Specification of the 180 patent does not define or limit the “client
computer” so as to exclude the client-side proxy in Kiuchi. See generally Spec.
The 180 patent discusses and shows client computer 3604 that contains a browser
3606 and a proxy application 3607 and that all communications are protected by
the client-side proxy application. See the 180 patent 54:11-29, 54:59-55:2, 55:17-
20; Fig. 36. Thus, we do not find that the 180 patent’s disclosure excludes a proxy
as a part of client computer or defines a client computer to exclude a proxy.
Owner also has not provided support in the disclosure of the 180 patent that the
recited client computer is limited to the user agent in Kiuchi. See Owner Resp.
Br. 8. Regardless, even if Kiuchi distinguishes between a client-side proxy and
user agent (see Kiuchi 65 and the Keromytis declaration ¶ 38), we do not agree that
a client-side proxy cannot be a client computer in light of the disclosure as would
be interpreted by one of ordinary skill in the art.
We find Kiuchi teaches or suggests the recitations in claims 13, 15, 29, and
31.
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3. New Rejection Based on Kiuchi and Martin under § 103
Claims 7, 23, and 38 are newly rejected based upon Kiuchi and Martin under
§ 103. These claims are not separately disputed. Owner refers back to the
discussion of claims 1, 17, and 33. See Requester App. Br. 14; Requester Reb. Br.
12.
As to this rejection, we refer to our discussion of independent claims 1, 17,
and 33 and dependent claims 4, 20, and 35, not separately argued, for details. We
additionally adopt the position set forth in the Request. See Request, Ex. E-2, pp.
47-50.

4. Consideration of Secondary Evidence in Determining Obviousness
Having considered the evidence supporting a conclusion of obviousness for
claims 1, 4, 6, 7, 9-15, 17, 20, 22, 23, 25-31, 33, 35, 37, 38, 40, and 41 under
§ 103, we now turn to the arguments concerning objective evidence of
nonobviousness.
The “obviousness inquiry centers on whether ‘the claimed invention as a
whole’ would have been obvious . . . .” Rambus Inc. v. Rea, 731 F.3d 1248, 1257-
58 (Fed. Cir. 2013). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the prior
art, (2) any differences between the claimed subject matter and the prior art, (3) the
level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406-07 (2007). Additionally, “[t]he
obviousness assessment depends on what the prior art teaches and on what the non-
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prior-art evidence of ‘secondary considerations’ (or objective indicia) may indicate
about whether the invention would have been obvious at the relevant time.” See
Institut Pasteur and Universite Pierre et Marie Curie v. Focarino and Precision
Biosciences, Inc., 738 F.3d 1337, 1344 (Fed. Cir. 2013) (citing KSR, 550 U.S. at
406–07).
Owner presents arguments of secondary considerations related to long-felt
need, failure of others, skepticism, commercial success, and praise by other.
Owner Resp. Br. 9-14. Owner argues that this evidence weighs in favor of
nonobviousness. Id. at 9. The Examiner and Requester take the opposing position.
RAN 20-24; Requester Reb. Br. 8-12. We agree with the Examiner and adopt their
responses to the secondary evidence. See id. We add the following for emphasis.
Long-Felt Need
Owner asserts that industry was forced to choose between easy-to-use
systems and secure systems having a VPN prior to Owner’s invention and that
there was a long-felt need for establishing a VPN communication link in a simple
manner. Owner Resp. Br. 9-10. To support this position, Owner provides an
article, entitled “Living in your own private Idaho,” that discusses client-to-LAN
VPN technology and installation on the client side based on “remote access [being]
a nightmare.” Owner Resp. Br., Evidence App’x, Ex. B-4, p. 1. This evidence
does not address satisfying a persistent, long-felt need for establishing VPN
communication links in an easy manner or failure of others to solve this problem,
but rather supports that the need for secure VPN communications were being
addressed. Id. Moreover, we do not find that the provided evidence illustrates that
the claimed invention satisfies the alleged long-felt need for simple or easy-to-use
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VPN communication links. Id. That is, the claimed invention merely recites using
a VPN communication link and does not address its simplicity or ease of use.
Similarly, the declaration of Robert Dunham Short III (hereafter “the Short
declaration”) discusses a need for secure connections but does not address that the
invention of the 180 patent as claimed satisfies a long-felt need. See Owner Resp.
Br., Evidence App’x, Ex. DEC-2 (the Short declaration) ¶¶ 3, 9-11. The remaining
cited evidence (i.e., Exhibit B-1) does not seem to discuss VPN communications.
See Owner Resp. Br., Evidence App’x, Ex. B-13, pp. VNET00219301-02. Thus,
this evidence does not demonstrate a long-felt need for the claimed invention,
including “using a virtual private network communication link” to send
information in an access request message to the secure computer network address
as recited. See RAN 21.
Owner further discusses Defense Advanced Research Projects Agency
(DARPA) funding a program, “Next Generation Internet,” between 1998 and 2000.
Owner Resp. Br. 10 (citing the Short declaration). We are not persuaded that this
evidence outweighs the evidence of obviousness for the reasons set forth by the
Examiner and Requester. RAN 21; Requester Reb. Br. 9-10. Additionally, the
money spent on a project for three years (1998-2000) does not necessary show
satisfying a long-felt need. See Owner Resp. Br., Evidence App’x, Ex. B-1, pp.
VNET00219303. The following year (2001) no money was spent, which may, in
fact, suggest that the need had been met and satisfied. See id.

3 Owner cites to “Ex. B-1 at 1-2.” Owner Resp. Br. 10. We are not clear where in
Exhibit B-1 Owner is referring, because Exhibit B-1 is numbered using a
nomenclature beginning with “VNET00219301.” We presume Owner intended to
refer to VNET00219301-02.
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Additionally, Owner discusses In-Q-Tel and Science Applications
International Corporation (SAIC) spending significant resources on developing
“these and other similar inventions.” See Owner Resp. Br. 10 (citing the Short
declaration). However, the spending done in one year or for “other similar
inventions” fails to demonstrate the long-felt need of the claimed invention in the
180 patent. See id. Rather, it demonstrates the importance of these inventions to
these entities.
Failure of Others
Owner relies on the Short declaration to illustrate the failure of others “to
create an easy-to-use VPN solution” or to support “the security needs of
multidimensional organizations.” Owner Resp. Br. 10-11 (referring the Short
declaration ¶¶ 4-5, 10 and Owner Resp. Br., Evidence App’x, Ex. B-3, pp. 1-4).
Even assuming this is true, we fail to see how this evidence ties to or demonstrates
the failure of others to arrive at the claimed invention, including the recited step of
claim 1 of “sending an access request message to the secure computer network
address using a virtual private network communication link.” In particular, the
evidence of record does not explain how an easy-to-use VPN solution and the
security needs of the multidimensional organization relate to claim limitations or
the failure of others to arrive at the claimed invention. Owner contends the benefit
that “allows a user to easily establish a VPN communication link . . . flows from
the claimed features.” Owner Resp. Br. 12-13 (emphasis added). Yet, the claimed
invention of the 180 patent fails to recite establishing the VPN communication link
is easy or simple. See, e.g., Requester App. Br., Claims App’x, claims 1, 17, and
33. At a minimum, one would need to infer this conclusion from the claimed
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invention. However, on the record, we find insufficient evidence of this inference
between the claimed invention and the easy-to-use VPN solution.
Additionally, Exhibit B-3 discusses the key component of the DARPA’s
Dynamic Coalitions program is “the exploration of systems that would provide
continuous network operations even after a cyberattack.” Owner Resp. Br.,
Evidence App’x, Ex. B-3, p. 1. This evidence also does not tie to an easy-to-use
VPN solution, which Owner asserts others failed to invent.
Skepticism
Owner argues that the Short declaration illustrates the skepticism of others
concerning the invention. Owner Resp. Br. 11 (citing the Short declaration ¶ 15).
We are not persuaded. First, Sami Saydjari stating that a technology would not be
adopted does not demonstrate that this person was skeptical of the technology.
The Short declaration ¶ 15. Rather, it merely provides some evidence from one
person that the industry is not going to use the technology. Any other inference is
speculative. For example, the reasons that Sami Saydjari states the technology
would not be adopted could have been due to costs and not due to skepticism. See
id. Second, the evidence relied upon does not concern information that Dr. Short
has first-hand knowledge of, but rather relates to information conveyed to Edmund
Munger from Sami Saydjari. Third, the evidence provided is conclusory without
any underlying support. Id. (stating “the IT offices of many large companies and
institutions expressed skepticism that secure connections could ever be enabled
easily by regular computer users”); see also Owner Resp. Br. 11.
Fourth, we do not find that Exhibit B-5 illustrates “a pervasive
understanding in the industry that reliable security could only be achieved through
difficult-to-provision VPNs and that easy-to-set-up connections could not be
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secure.” Owner Resp. Br. 11. Rather, this evidence states “VPNs gain strength
from the fact that they can be phased in gradually without requiring companies to
rip out existing gear.” Owner Resp. Br., Ex. B-5, p. 2.
Commercial Success
Owner further contends that SafeNet, Microsoft Corporation, Aastra USA,
Incorporated, Mitel Network Corporation, and NEC Corporation of America have
entered into “portfolio” licenses with the Owner of the 180 patent or that includes
the 180 patent as evidence of commercial success. Owner Resp. Br. 11, 13-14. As
Requester points out (Requester Reb. Br. 10), the portfolio license between
SafeNet occurred prior to the issuance of the 180 patent and the statement made by
Owner does not state that the 180 patent is included in this license, but rather that
the license was “with the original owner of the ’180 patent in July 2002.” Owner
Resp. Br. 11. Additionally, Owner has not demonstrated commercial success of
the claimed invention, just because companies entered into a “portfolio” license,
which consists of multiple intellectual property assets and not just the 180 patent.
See Requester Reb. Br. 11-12. That is, as Requester states (Requester Reb. Br. 10-
12), Owner’s evidence fails to show the commercial success of “portfolio licenses
were driven by the features recited in the claims” of the 180 patent. Requester
Reb. Br. 10. As such, Owner has provided an insufficient nexus between the
claimed invention of the 180 patent and commercial success.
Praise By Others
Lastly, Owner asserts objective evidence of praise by others of the claimed
invention in the 180 patent. Owner Resp. Br. 11-12 (citing the Short declaration
¶¶ 7, 12, 16). We are not persuaded. We disagree that paragraphs 7 and 11 of the
Short declaration demonstrate praise by others. See the Short declaration ¶ 7
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(discussing SAIC funding of internal research) and ¶ 12 (discussing purported
commercial success through licensing). In particular and as for paragraph 16,
Owner has not demonstrated that allotting money towards research indicates praise
by others. See the Short declaration ¶ 16. Moreover, a portfolio license of
multiple intellectual property assets does not demonstrate praise for the specific
invention claimed in the 180 patent. We additionally refer to the reasons set forth
by the Examiner and Requester in concluding that there is insufficient evidence to
establish the praise by others concerning the claimed invention in the 180 patent.
See RAN 23-24; Requester Reb. Br. 11.

IV. CONCLUSION
Requester did not demonstrate that the Examiner erred in confirming claims
8, 24, and 39.
Requester did demonstrated that the Examiner erred in confirming claims 1,
4, 6, 7, 9-15, 17, 20, 22, 23, 25-31, 33, 35, 37, 38, 40, and 41.
We present new grounds of rejection for claims 1, 4, 6, 7, 9-15, 17, 20, 22,
23, 25-31, 33, 35, 37, 38, 40, and 41 under § 103.

V. TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Correspondingly, no portion of the decision is final for purposes of
judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if
appropriate; however, the Board may elect to defer issuing any decision on such
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request for rehearing until such time that a final decision on appeal has been issued
by the Board. For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the Board.
37 C.F.R. § 41.77(f).
Section 41.77(b) of Title 37 of the Code of Federal Regulations also
provides that the Owner, WITHIN ONE MONTH FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to the
new grounds of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be either an
amendment of the claims so rejected or new evidence relating to the claims so
rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record . . . .
Any request to reopen prosecution before the examiner under 37 C.F.R.
§ 41.77(b)(1) shall be limited in scope to the “claims so rejected.” Accordingly, a
request to reopen prosecution is limited to issues raised by the new ground(s) of
rejection entered by the Board. A request to reopen prosecution that includes
issues other than those raised by the new ground(s) is unlikely to be granted.
Furthermore, should the Owner seek to substitute claims, there is a presumption
that only one substitute claim would be needed to replace a cancelled claim.
A requester may file comments in reply to Owner response. 37 C.F.R.
§ 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited in
scope to the issues raised by the Board’s opinion reflecting its decision to reject the
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claims and the Owner’s response under paragraph 37 C.F.R. § 41.77(b)(1). A
newly proposed rejection is not permitted as a matter of right. A newly proposed
rejection may be appropriate, if it is presented to address an amendment and/or
new evidence properly submitted by the Owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and why it
could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all
Owner responses and requester comments, is required.
The examiner, after the Board’s entry of Owner response and requester
comments, will issue a determination under 37 C.F.R. § 41.77(d) as to whether the
Board’s rejection is maintained or has been overcome. The proceeding will then
be returned to the Board together with any comments and reply submitted by the
owner and/or requester under 37 C.F.R. § 41.77(e) for reconsideration and issuance
of a new decision by the Board as provided by 37 C.F.R. § 41.77(f).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.77(g).

AFFIRMED-IN-PART
37 C.F.R. § 41.77(b)

peb

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FOR PATENT OWNER:

FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
901 New York Avenue, NW
Washington, DC 20001-4413

FOR THIRD-PARTY REQUESTER:

HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue, Suite 700
Dallas, TX 75219