Ex Parte 7,188,180 et al

Patent Trials and Appeals Board

Jan 31, 2019

95001792 - (D) (P.T.A.B. Jan. 31, 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.
95/001,792 10/25/2011 7,188,180 43614.100 1972
137313 7590 01/31/2019
PAUL HASTINGS LLP
875 15th Street, NW
Washington, DC 20005
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/31/2019 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.

Patent of VIRNETX INC.
Patent Owner
____________

Appeal 2018-001175
Reexamination Control 95/001,792
Patent 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 REHEARING
This is a request by Patent Owner for a rehearing (“Req. for Reh’g”)
of our Decision dated February 27, 2018 (“Decision 2”) on the Examiner’s
Determination Under 37 C.F.R. § 41.77(d) (“Ex. Deter.”) mailed June 22,
2017. Decision 2 is subsequent to and incorporates a Decision dated
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April 1, 2014 (“Decision 1”)1 in which new grounds of rejection were
entered under 37 C.F.R. § 41.77(b). In response to the new grounds of
rejection, Patent Owner reopened prosecution and submitted new evidence
for consideration. Req. to Reopen Prosecution 1–2 (June 2, 2014).
Requester responded, urging the new grounds of rejection be maintained.
See generally Comments by Third Party Requester Pursuant to 37 C.F.R.
§ 41.77(c) (June 27, 2014). In Decision 2, we determined Patent Owner had
not provided sufficient arguments and evidence to overcome the new
grounds of rejection presented in Decision 1. Decision 2, pp. 12, 16–17.
This is a request for rehearing on Decision 2.
Patent Owner identified the following points believed to be
misapprehended or overlooked in Decision 2.
Point 1
Patent Owner argues we misapprehended a Federal Circuit opinion,
VirnetX Inc. v. Apple Inc., 671 F. App’x 786 (Fed. Cir. 2016). Req. for
Reh’g 2–3. This Federal Circuit opinion addresses IPR2014-00481, which
reviewed U.S. Patent No. 7,188,180 (“the ’180 patent)—the same patent as
the instant proceedings. Patent Owner asserts the construction of the term
“virtual private network communication link” “was not essential to any
question of validity” in IPR2014-00481, and thus, any “passing reference to
finding ‘no error’ in certain ‘claim constructions’” by the Federal Circuit
opinion does not indicate “the Federal Circuit intended to opine on the

1 In Decision 2, we state “Our new Decision is deemed to incorporate [the]
earlier Decision, except for any portion specifically withdrawn. 37 C.F.R.
§ 41.77(f).” Decision 2, p. 4.
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propriety of a construction that was not suitable for appellate review.” Req.
for Reh’g 3. We are not persuaded.
First, as noted by Requester, we did not overlook this relevant
decision because we addressed the opinion in Decision 2. Third Party
Requester’s Comments in Response to Patent Owner’s Request for
Rehearing Pursuant to 37 C.F.R. § 41.79(c) (dated April 26, 2018) (“3PR
Comments”) 2 n.1. Specifically, in Decision 2, we quoted that the Federal
Circuit opinion states “we find no error in the Patent Trial and Appeal
Board’s (‘the Board’) claim constructions or findings in the . . . 481
proceedings.” Decision 2, p. 6 (quoting from VirnetX Inc., 671 F. App’x
786). This statement by the Federal Circuit refers to claim constructions in
the 481 proceedings without exception and does not limit the claim
constructions to only those “essential to any question of validity” as Patent
Owner asserts. Req. for Reh’g 3. Also, at least one portion of IPR2014-
00481’s Final Written Decision addresses an argument concerning the claim
language “using a virtual private network communication link” and the
applied prior art. See Apple Inc. v. VirnetX Inc., IPR2014-00481, Paper 35,
2015 WL 5047986, at *21–23 (PTAB Aug. 24, 2015), aff’d, 671 F. App’x
786 (Fed. Cir. 2016); see also 3PR Comments 6 (citing IPR2014-00481,
Paper 35, at *3–4 and 272).
Patent Owner further discusses IPR2016-00332 (Req. for Reh’g 3),
which differs from IPR2014-00481 discussed above reviewed by the Federal
Circuit. We disagree with how Patent Owner characterizes “the construction

2 Apple Inc. v. VirnetX Inc., No. IPR2014-00481, Paper 35 (PTAB Aug. 24,
2015), available at https://e-
foia.uspto.gov/Foia/RetrievePdf?system=PRPS&flNm=IPR2014-00481_35.
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for the ‘virtual private network communication link’ term was not
‘necessary to the judgment’ of either the ‘Board or Federal Circuit.’” Req.
for Reh’g 3 (citing Apple Inc. v, VirnetX, Inc., IPR2016-00332, Paper 29 at
*11 (June 22, 2017)3). When addressing the limitation “virtual private
network link” in IPR 2016-00332, another Board panel stated “Petitioner
does not direct specific attention to a Board or Federal Circuit final
judgment in which resolving the construction regarding the direct
requirement was necessary to the judgment.” Apple Inc. v, VirnetX, Inc.,
IPR2016-00332, Paper No. 29 at *11 (emphasis added). Thus, IPR2016-
00332 indicates resolving the construction regarding a direct requirement for
the phrase “virtual private network link” (e.g., the virtual private network
communication link requires a direct communication) was not necessary in
construing the phrase “virtual private network link” or in determining
whether the prior art discloses or suggests the recited “virtual private
network link.” See Apple Inc. v, VirnetX, Inc., IPR2016-00332, Paper No.
29, 2017 WL 2704096, at *4–5 (PTAB June 22, 2017). Similarly, in the
instant proceeding, we determined a virtual private network communication
link may, but does not require, computers to communicate directly with each
other. Decision 2, p. 7.
Thus, we disagree that whether the claim construction set forth in
IPR2014-00481 and affirmed by the Federal Circuit resolved the question
related to direct communication means that the construction of “virtual
private network communication link” was not essential to any question of
validity. In addition, as further discussed below, Patent Owner does not

3 2017 WL 2704096 at *5 (PTAB June 22, 2017).
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provide any specific argument as to the effect of the claim construction set
forth in Decision 2 on the application of prior art. In a request for rehearing,
Patent Owner is charged with stating “with particularity the points believed
to have been misapprehended or overlooked in rendering the Board’s
opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). Here, Patent
Owner’s bare assertion that the claim construction should be revisited, does
not rise to the level of particularity required to satisfy the rule regarding
rehearings.
Point 2
Patent Owner further contends we provided a new claim construction
for the phrase “virtual private network communication link” in Decision 2
and thus allegedly formulated new grounds of rejection. Req. for Reh’g 3–4
(citing Rambus, Inc. v. Rea, 731 F.3d 1248, 1255–56 (Fed. Cir. 2013)). We
are not persuaded.
Patent Owner does not indicate which rejection’s or rejections’ thrusts
have changed based on the purported new claim construction such that we
misapprehended or overlooked that a new ground should have been
designated. Req. for Reh’g 3–4. Because the rejections based on Kiuchi4
are the only rejections addressed in Decision 2 (Decision 2, pp. 4–5), we
presume these are the rejections Patent Owner is asserting should be
designated as new grounds. Concerning whether a rejection should be
designated as new, Rambus states the Office must provide prior notice of
“all ‘matters of fact and law asserted’” and that “[t]he ultimate criterion is

4 Takahiro Kiuchi and Shigekoto Kaihara, C-HTTP- The 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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whether the appellant has had before the PTO a ‘fair opportunity to react to
the thrust of the rejection.’” Rambus, 731 F.3d at 1255. Rambus further
indicates findings may be elaborated on, “so long as the appellant had an
adequate opportunity to respond to the Board’s findings during the PTO
proceeding.” Id.
The rejections based on Kiuchi were first presented in Decision 1 and
not by the Examiner. Decision 1, pp. 9–23. In this regard, we disagree our
claim construction for “virtual private network communication link”
presented in Decision 2 differs from our construction in Decision 1, such
that Patent Owner has not had a fair opportunity to react to the thrust of the
rejections based on Kiuchi. See Req. for Reh’g 4. In Decision 1, we
determined a virtual private network communication link “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.” Decision 1, p. 8. In Decision 2, we elaborated on this
construction, adopting the claim construction found in IPR2014-00481, in
which the Federal Circuit found no error in its claim constructions. Decision
2, p. 6. In particular, we stated another
panel construed “‘virtual private network communication link’
to mean ‘a transmission path between two devices that restricts
access to data, addresses, or other information on the path,
generally using obfuscation methods to hide information on the
path, including, but not limited to, one or more of
authentication, encryption, or address hopping.” Apple, 2015
WL 5047986, at *5. The panel maintained the above
construction in its decision, adding the requirement “that the
VPN communication link traverses a portion of a public
network (which otherwise would be insecure).” Id. at *7.
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Decision 2, p. 6.
Both of these claim constructions include a secure communication
link or path within a network, including over a public network (e.g., the
Internet), using encryption as an obfuscation technique. As such, Decision 2
elaborates on the claim construction of “a virtual private network
communication link” in Decision 1 but does not change how this phrase is
construed such that the rejections have changed or such that the elaborated-
on construction denies Patent Owner a fair opportunity to respond the
rejections’ thrust. On this later point, we agree with Requester (3PR
Comments 3) that Patent Owner has not asserted that the claim construction
in Decision 2 for “virtual private network communication link” is incorrect
or indicated how the purported new construction changes the thrusts of the
rejections in this proceeding. See Req. for Reh’g 3–4. As such, the
argument does not illustrate sufficiently a point that misapprehended or
overlooked in rendering Decision 2. See 37 C.F.R. § 41.79(b)(1).
In the Examiner’s Determination, the Examiner indicated Patent
Owner’s new evidence and arguments do not overcome the rejections
presented in Decision 1. Ex. Deter. 3, 42; Decision 2, pp. 4–5. As such, the
Examiner’s discussion of “virtual private network communication link” (Ex.
Deter. 8–20), including how the phrase is construed, does not change the
rejections based on Kiuchi. More specifically, the Examiner’s “agree[ment]
with PO’s construction of the claim term [of a VPN communication link] as
‘a communication link that comprises a VPN wherein a VPN requires . . .
the capability of computers to directly communicate with one another[’]”
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(Ex. Deter. 41, quoted in Req. for Reh’g 4), does not change the thrust of the
rejections presented in Decision 1.
Additionally, Decision 2 does not reject the Examiner’s comments
related to how to construe “virtual private network communication link” and
“virtual private network” in its entirety. Decision 2, p. 7 (stating “we
disagree with the Examiner’s claim construction of [the terms] to the extent
the Examiner’s position . . . differs from that presented in Final Written
Decision in IPR2014-00481, affirmed by the Federal Circuit”) (emphasis
added). In Decision 2, we addressed one distinction between our claim
construction and the Examiner’s—namely our construction of virtual private
network communication link “encompasses indirect communications”
between computers or the ability of the computers to communicate indirectly
with each other. Decision 2, p. 7 (citing Apple Inc. v. VirnetX Inc.,
IPR2014-00481, Paper 35, 2015 WL 5047986, at *5–6 (PTAB Aug. 24,
2015), aff’d, 671 F. App’x 786 (Fed. Cir. 2016), and the ’180 patent 50:1–6,
51:38–40, 52:3, Fig. 33). Thus, our construction of “virtual private network
communication link” in Decision 2 does not outright reject the Examiner’s
claim construction of this phrase. Decision 2, p. 7.
Again, we emphasize that the thrust of the rejections based on Kiuchi
presented in Decision 1 have not changed regardless of whether the term
“virtual private network communication link” requires the computers to have
the ability to communicate directly with each other. In Decision 2, we stated
“[r]egardless . . . the Examiner determines Kiuchi’s client-side proxy and
server-side proxy are capable of directly communicating. Ex. Deter. 30;
3PR Reply 4–5.” Decision 2, p. 7; see also Decision 2, pp. 7–9, 13–14
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(citing Decision 1, pp. 9–12, Ex. Deter. 28–30, 34, and Kiuchi 64–66, 69).
We therefore disagree Patent Owner has not had the opportunity to respond
the thrust of the rejections based on Kiuchi.
Lastly, we agree with Requester (3PR Comments 3) that Patent
Owner has not asserted that the claim construction in Decision 2 for “virtual
private network communication link” is incorrect or indicated how the
purported new construction changes the thrusts of the rejections in this
proceeding. See Req. for Reh’g 3–4. As such, the argument does not
illustrate sufficiently a point that misapprehended or overlooked in rendering
Decision 2. See 37 C.F.R. § 41.79(b)(1).
Requester’s additional arguments
Requester argues Patent Owner’s request for rehearing violates 37
C.F.R. § 42.73(d)(3). 3PR Comments 4–7. This section of the Code of
Federal Regulations concerns trial proceedings, such as IPR, and more
specifically, “taking action inconsistent with the adverse judgement.” 37
C.F.R. § 42.73(d)(3). The rule indicates an adverse judgment includes
disclaiming a patent, canceling or disclaiming claims, or conceding
unpatentability. See 37 C.F.R. § 42.73(d)(3). We are not persuaded the
record demonstrates a party (e.g., Patent Owner) has requested such adverse
judgement in IPR2014-00481, such that Rule 42.73(d)(3) applies to the
instant proceedings.
Requester further argues VirnetX is collaterally estopped from
disputing the proper claim construction of “virtual private network
communication link.” 3PR Comments 7–10. We do not reach this
contention because, as noted by Requester and above, VirnetX has not
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disputed the claim construction of “virtual private network communication
link” in its request for rehearing. 3PR Comments 3–4. Instead, VirnetX
disputes the claim construction in Decision 2 is a new finding that requires
“those rejections” based “on that construction” (Req. for Reh’g 3) to be
designated as new grounds. Req. for Reh’g 3–4.
In summary, we have considered the arguments raised by Patent
Owner in the Request for Rehearing, but the arguments are not persuasive to
find that Decision 2 was in error. Based on the record before us now and in
the original appeal, we maintain the rejections of: (1) claims 9, 25, and 40
based on Kiuchi under 35 U.S.C. § 102, (2) claims 9, 11, 25, 27, 40, and 41
based on Kiuchi under 35 U.S.C. § 103, and (3) claims 7, 23, and 38 based
on Kiuchi and Martin under 35 U.S.C. § 103.5 Decision 1, p. 9–12, 17–23;
Decision 2, pp. 4, 12, 16–17. We also maintain our affirmance of the
Examiner’s confirmation of claims 8, 24, and 39 of the ’180 patent.
Decision 1, p. 23.
We have granted the Request for Rehearing to the extent that we have
reconsidered Decision 2, but we deny the request for hearing with respect to
making any changes to the new grounds of rejection.

REHEARING DENIED

5 References cited in full in Decision 1. Decision 1, pp. 3–4.
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FOR PATENT OWNER:

PAUL HASTINGS LLP
875 15TH STREET, NW
WASHINGTON DC 20005

FOR THIRD-PARTY REQUESTER:

HAYNES AND BOONE, LLP
IP SECTION
2323 VICTORY AVENUE , SUITE 700
DALLAS TX 75219

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