VIRNETX INC. (OWNER) et al.

Patent Trials and Appeals Board

Mar 24, 2022

2022001473 (P.T.A.B. Mar. 24, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 95/001,714 08/16/2011 7,490,151 B2 43614.99 3428 7590 03/24/2022 PAUL HASTINGS LLP 2050 M STREET, NW WASHINGTON, DC 20036 EXAMINER RALIS, STEPHEN J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 03/24/2022 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 Cross-Appellant v. Patent of VIRNETX INC. Patent Owner and Appellant Appeal 2022-001473 Reexamination Control 95/001,714 Patent 7,490,151 B2 Technology Center 3900 Before JEFFREY B. ROBERTSON, DENISE M. POTHIER, and JEREMY J. CURCURI, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION UNDER 37 C.F.R. § 41.77(f) Appeal 2022-001473 Reexamination Control 95/001,714 Patent 7,490,151 B2 2 This is a decision under 37 C.F.R. § 41.77(f). In a Decision on Appeal entered June 23, 2020 (Appeal No. 2020-000639, hereinafter “Decision”), the Board entered a new ground of rejection under 37 C.F.R. § 41.77(b) for claims 6 and 12. Decision 58-59, 62.1 Specifically, the Decision reversed the Examiner’s decision not to adopt the rejection of claims 6 and 12 as obvious over Aziz2 and Edwards.3 Id. In response to the Decision, Patent Owner VirnetX, Inc. (“Patent Owner”) requested reopening of prosecution under 37 C.F.R. § 41.77(b)(1). REQUEST TO REOPEN PROSECUTION filed July 23, 2020 (hereinafter “Request to Reopen” or “Req. to Reopen”). The Request to Reopen presented a Declaration of Dr. Fabian Monrose dated July 22, 2020 (hereinafter “2020 Monrose Declaration”), as evidence in response to the new grounds of rejection. Req. to Reopen 2. Third Party Requester Cisco Systems, Inc. (“Cisco”) filed THIRD PARTY COMMENTS TO PATENT OWNER’S REQUEST TO REOPEN PROSECUTION on August 21, 2020 (hereinafter “41.77(c) Comments” or “41.77(c) Comm.”) in response to the Patent Owner’s Request to Reopen. 1 Patent Owner filed a petition to vacate the Decision on June 29, 2020, which was dismissed in a Decision on Petition entered on August 17, 2020. Patent Owner also filed a request for rehearing before the Precedential Opinion Panel or review by the Chief Judge of the August 17, 2020 Petition Decision on October 13, 2020, which was also denied in a Decision on Petition entered April 27, 2021. 2 Ashar Aziz et al., U.S. Patent No. 6,119,234, issued September 12, 2000 (“Aziz”). 3 Nigel Edwards & Owen Rees, High security Web servers and gateways, 29 Computer Networks and ISDN Systems 927-938 (Sept. 1997) (“Edwards”). Appeal 2022-001473 Reexamination Control 95/001,714 Patent 7,490,151 B2 3 In an order remanding the case to the Examiner, Patent Owner’s Request to Reopen was entered for consideration by the Examiner. ORDER REMANDING INTER PARTES REEXAMINATION UNDER 37 C.F.R. § 41.77(d) to the EXAMINER entered June 22, 2021. In addition, Requesters’ comments were also entered for consideration by the Examiner. An Examiner’s Determination under 37 C.F.R. § 41.77(d) was issued on August 17, 2021 (hereinafter, “Ex. Det.”), in which the Examiner determined that Patent Owner’s Response was insufficient to overcome the new rejection set forth in the Decision. Ex. Det. 5-6. Patent Owner filed a response to the Examiner’s Determination. PATENT OWNER’S COMMENTS IN RESPONSE TO EXAMINER’S DETERMINATION PURSUANT TO 37 C.F.R. § 41.77(e) filed September 17, 2021 (hereinafter, “PO 41.77(e) Resp.”). Cisco filed a reply to Patent Owner’s 37 C.F.R. § 41.77(e) Response. THIRD PARTY REQUESTER’S REPLY TO PATENT OWNER’S COMMENTS IN RESPONSE TO EXAMINER’S DETERMINATION PURSUANT TO 37 C.F.R. § 41.77(e) filed October 5, 2021, (hereinafter “Req. 41.77(e) Rep.”). Pursuant to 37 C.F.R. § 41.77(f) the proceeding has been returned to the Board in order to “reconsider the matter and issue a new decision.” Also pursuant to 37 C.F.R. § 41.77(f), this decision is deemed to incorporate the earlier decision, except as for those portions specifically withdrawn. Discussion Claim 6 of United States Patent 7,490,151 B2 (hereinafter the “’151 Patent”), depends from claim 1 and further recites “wherein automatically Appeal 2022-001473 Reexamination Control 95/001,714 Patent 7,490,151 B2 4 initiating the encrypted channel between the client and the secure server avoids sending a true IP address of the secure server to the client.” Cisco’s Appeal Brief filed June 3, 2016 (hereinafter “Cisco Appeal Br.”) 18. Claim 12 depends from claim 7, and recites similar limitations. Id. at 19. In the Decision, we determined that the combination of Edwards, which discloses a naming service interceptor that prevents services in the internal network from accidently subverting security, and Aziz, which discloses including automatically initiating the encrypted channel between the client and the secure server, renders obvious avoiding sending a true IP address of the secure server to the client as recited in claim 6. Decision 59, citing Edwards 932, 936; Aziz, col. 11, ll. 64-65; see also Decision 29 (discussing that Aziz discloses automatically initiating an encrypted channel between the client and the secure server). Patent Owner contends that the Decision misunderstood the teachings of the references. Req. to Reopen 2. Patent Owner contends that Aziz and Edwards do not render obvious the full limitation “wherein automatically initiating the encrypted channel between the client and the secure server avoids sending a true IP address of the secure server to the client” recited in claim 6. Id. at 3. Patent Owner argues Edwards discloses the web server, not the client, includes a CORBAweb plugin and that an interceptor receives requests from the CORBAweb plugin. Id. at 3-4, citing 2020 Monrose Declaration ¶¶ 18-21. Patent Owner argues that if Aziz’s system were modified so that the client only received an address of a service interceptor, there is no evidence of how an encrypted channel would extend between the Appeal 2022-001473 Reexamination Control 95/001,714 Patent 7,490,151 B2 5 client and secure server instead of between the client and the service interceptor. Id. at 4, citing Monrose Declaration ¶ 22. Cisco contends Edwards discloses that services are available to the client only through the name service interceptor and proxy such that the true identification is not provided to the client. 41.77(c) Comm. 2-3, citing Edwards 936. Cisco argues Patent Owner has not addressed the language of the claims by focusing on what is provided to the client in Edwards, rather than what is not provided to the client as recited in claim 6. Id. at 3. Cisco contends Aziz and Edwards are properly combinable, where Patent Owner only reiterates arguments that the Board has already rejected. Id. at 3-5. Cisco contends Patent Owner’s arguments are against bodily incorporation of Aziz and Edwards, rather than the combined disclosures of the prior art. Id. at 5. The Examiner determined that the 2020 Monrose Declaration failed to overcome the new ground of rejection in the Decision. Ex. Det. 5. The Examiner found Edwards discloses a proxy providing a reference to a service interceptor instead of an actual service, such that Edwards teaches or renders obvious avoiding sending a true IP address of the secure server to the client. Id. As to Patent Owner’s position that it would not have been obvious to have modified Aziz with Edwards to arrive at the subject matter of claim 6, the Examiner determined that Patent Owner had unduly focused on Edwards rather than the combination of Aziz and Edwards. Id. at 5-6. Because the 2020 Monrose Declaration constitutes the new evidence to be considered in response to the rejection of claims 6 and 12 under 37 C.F.R. 41.77(b)(1), for the purposes of this decision, we focus on our Appeal 2022-001473 Reexamination Control 95/001,714 Patent 7,490,151 B2 6 discussion on the 2020 Monrose Declaration. The 2020 Monrose Declaration states that “Edwards does not provide any disclosure regarding whether the client, or the web server, is provided with the address of the service.” 2020 Monrose Declaration. ¶ 21. The 2020 Monrose Declaration states that “it is my opinion that a person of ordinary skill in the art would not have been motivated to combine the disclosures of Aziz and Edwards in a manner that would have met the limitations of claims 6 and 12” because “it would have been unclear to a person of ordinary skill in the art how, in the context of Aziz, an encrypted channel would extend ‘between the client and the secure server’ instead of between the client and service interceptor.” Id. at ¶ 22. The 2020 Monrose Declaration opines that there is no guidance or description in Aziz and Edwards of how or why such a combination would have met the limitations of claims 6 and 12. Id. Thus, the 2020 Monrose Declaration expresses the opinion that a person of ordinary skill in the art would not have had a reason to implement the suggested combination or have an expectation that such a combination would have been successful. Id. We are not persuaded by the 2020 Monrose Declaration. As discussed by Cisco and the Examiner, the 2020 Monrose Declaration discusses the individual teachings of each reference and bodily incorporation thereof. 41.77(c) Comm. 5; Ex. Det. 5-6. Indeed, the 2020 Monrose Declaration only discusses certain disclosures in Edwards to support the position that Edwards discloses the web server, and not the client, includes the CORBAweb plugin. 2020 Monrose Declaration ¶¶ 18-21, citing Edwards 930, 932, 936, Figs. 3, 4. In this regard, the 2020 Monrose Appeal 2022-001473 Reexamination Control 95/001,714 Patent 7,490,151 B2 7 Declaration acknowledges Edwards discloses an interceptor for a name service that returns a reference to a service interceptor instead of the actual service. Id. However, the 2020 Monrose Declaration does not sufficiently explain why any lack of disclosure in Edwards as to whether the client or web server is provided with address of the service would mean that when the combination of Aziz and Edwards is considered as a whole, one of ordinary skill in the art would not have considered the recitation that establishing an encrypted channel between the client and secure server “avoids sending a true IP address of the secure server to the client” as recited in claims 6 and 12. In this regard, Aziz specifically discloses a desire to hide network topology in conjunction with automatically establishing an encrypted channel between the client and secures server. Decision 28-29 (discussing that Aziz discloses an application 215 running on an authorized client 210 that makes a query in the form of a DNS request for a secure server received by resolver 225, which results in automatically initiating an encrypted channel between the client and secure server), 58-59; Aziz, col. 11, ll. 64- 65. Edwards discloses the use of service interceptors to prevent the accidental subverting of security. Edwards 936. In addition, Edwards emphasizes the flexibility of CORBA for various processes. Id. at 931. The Supreme Court in KSR has stated “[a]s our precedents make clear, however, the analysis [under 35 U.S.C. § 103] need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l. Co. v. Teleflex Inc., 550 Appeal 2022-001473 Reexamination Control 95/001,714 Patent 7,490,151 B2 8 U.S. 398, 418 (2007). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. In this case, the 2020 Monrose Declaration expresses opinions based upon the lack of express teachings and guidance in Aziz and Edwards without sufficiently addressing why the proposed combination would have been beyond the inferences and creative steps employed by one of ordinary skill in the art. That is, the 2020 Monrose Declaration indicates that the level of ordinary skill is high, including a master’s degree in computer science or computer engineering with two years of experience in computer networking with some accompanying exposure to network security. 2020 Monrose Declaration ¶ 4. Accepting this description of the level of skill in the art, we are of the view that more explanation is necessary beyond any lack of express teachings in Aziz and Edwards as to the recitations in claims 6 and 12 in order to support the position that the combination of Aziz and Edwards as a whole fail to render claims 6 and 12 obvious. It is unclear from the 2020 Monrose Declaration why, when combining Aziz and Edwards, the result would necessarily be only an encrypted channel between the client and a service interceptor, and why one of ordinary skill in the art would have had an issue with establishing an encrypted channel between the client and the secure server that avoids sending the true IP address of the secure server to the client. It is well settled that the Board is entitled to weigh declarations expressing opinions as to fact and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Appeal 2022-001473 Reexamination Control 95/001,714 Patent 7,490,151 B2 9 Cir. 2004); cf. In re Thompson, 545 F.2d 1290, 1295 (CCPA 1976) (affidavit fails if it recites conclusions without reciting the underlying facts to support those conclusions). In this case, although we assign weight to the opinions made in the 2020 Monrose Declaration, we find that there is insufficient explanatory support therein as to why a person of ordinary skill in the art would not have been capable of the modifications suggested by the disclosures of Aziz and Edwards to outweigh the evidence in favor of obviousness for the reasons expressed above and in the Decision. Lastly, we do not subscribe to Patent Owner’s view that the Examiner’s Determination did not give due consideration to Patent Owner’s arguments and evidence submitted in the Request to Reopen. PO 41.77(e) Resp. 3-5. Such procedural considerations are appropriately addressed by way of a timely filed petition. See 37 C.F.R. § 1.181. However, to the extent relevant, we agree with Cisco that the Examiner provided sufficient explanation in the Determination from which to ascertain that Patent Owner’s evidence and arguments were considered. Req. 41.77(e) Resp. 2-3. The Examiner’s Determination expressed the Examiner’s view that the 2020 Monrose Declaration and Request to Reopen did not sufficiently address the combination of Aziz and Edwards as a whole, and as such, did not provide a sufficient basis to overcome the rejection of claims 6 and 12. Ex. Det. 5-6. I. CONCLUSION In view of the discussion above, we find Patent Owner’s evidence and argument to be insufficient to overcome the new grounds of rejection under Appeal 2022-001473 Reexamination Control 95/001,714 Patent 7,490,151 B2 10 37 C.F.R. § 41.77(b) of claims 6 and 12 under 35 U.S.C. § 103(a) as unpatentable over Aziz and Edwards as set forth in the Decision. Thus, the status of the Adopted Rejections is as follows: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 2, 5, 7, 8, 11, 13, 14 102(b) Aventail Connect v3.01 13, 14 1, 2, 5, 7, 8, 11 1, 2, 5, 7, 8, 11, 13, 14 102(b) AutoSOCKS 13, 14 1, 2, 5, 7, 8, 11 1, 2, 5, 7, 8, 11, 13, 14 103(a) Beser, Kent 1, 2, 5, 7, 8, 11, 13, 14 1-4, 7-10, 13-16 102(b) Kiuchi 13, 14 1-4, 7- 10, 15, 16 5, 11 103(a) Kiuchi, Martin 5, 11 1, 7, 13 103(a) Aziz, Edwards 1, 7, 13 5, 11 103(a) Aziz, Edwards, Martin 5, 11 1-4, 6-10, 12-16 103(a) Kiuchi, Edwards 13, 14 1-4, 6- 10, 12, 15, 16 5, 11 103(a) Kiuchi, Edwards, Martin 5, 11 Overall Outcome 1, 2, 5, 7, 8, 11, 13, 14 3, 4, 6, 9, 10, 12, 15, 16 Appeal 2022-001473 Reexamination Control 95/001,714 Patent 7,490,151 B2 11 The status of the Non-Adopted Rejections is as follows: In accordance with 37 C.F.R. § 41.79(a)(4), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he new decision of the Board under § 41.77(f).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November Claims 35 U.S.C. § References/Basis Affirmed Reversed New Ground 6, 12 102(b) Kiuchi 6, 12 1-4, 6- 10, 12-16 102(e) Wesinger 1-4, 6- 10, 12-16 5, 11 103(a) Wesinger, Martin 5, 11 1, 7, 13 102(e) Blum 1, 7, 13 2-4, 6, 8- 10, 12, 14-16 103(a) Aziz, Edwards 2-4, 8- 10, 14-16 6, 12 6, 12 1-4, 6- 10, 12-16 103(a) Wesinger, Edwards 1-4, 6- 10, 12-16 5, 11 103(a) Wesinger, Edwards, Martin 5, 11 Overall Outcome 1-5, 7- 11, 13-16 6, 12 6, 12 Appeal 2022-001473 Reexamination Control 95/001,714 Patent 7,490,151 B2 12 2, 2002 may not be taken “until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 8, July 2010). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). 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. § 41.79. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED; 37 C.F.R. § 41.77(f) PATENT OWNER: PAUL HASTINGS LLP 2050 M STREET, NW Washington, DC 20036 THIRD PARTY REQUESTER: HAYNES AND BOONE, LLP IP SECTION 2323 VICTORY AVE., SUITE 700 DALLAS, TX 75219