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Paper No. 8
Entered: Sept. 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
BLACK SWAMP IP, LLC,
Petitioner,
v.
VIRNETX INC.,
Patent Owner.
____________
Case IPR2016-00957
Patent 7,921,211 B2
____________

Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C.

SIU, Administrative Patent Judges.
SIU, Administrative Patent Judge.

DECISION
Institution of Inter Partes Review
37 C.F.R. 42.108

IPR2016-00957
Patent 7,921,211 B2
I.

INTRODUCTION
A.

Background

Petitioner, Black Swamp IP, LLC, filed a Petition (Paper 1, Pet.)

requesting an inter partes review of claims 1, 2, 5, 6, 15, 16, 23, 27, 36, 37,
39, 40, 47, 51, and 60 (the challenged claims) of U.S. Patent No.
7,921,211 B2 (Ex. 1001, the 211 patent). See Pet. 6. Patent Owner,
VirnetX Inc., filed a Preliminary Response. Paper 6 (Prelim. Resp.).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. 314(b); 37 C.F.R. 42.4(a). The standard for
instituting an inter partes review is set forth in 35 U.S.C. 314(a), which
provides that an inter partes review may not be instituted unless the
Director determines . . . there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.
After considering the Petition and Preliminary Response, we
determine that Petitioner has established a reasonable likelihood of
prevailing in showing the unpatentability of at least one of the challenged
claims. Accordingly, we institute inter partes review.

B.

Related Matters

According to Petitioner, the 211 patent is the subject of the following

civil actions: Civ. Act. No. 6:13-cv-00211 (E.D. Tex.); Civ. Act. No. 6:12cv-00855 (E.D. Tex.); Civ. Act. No. 6:10-cv-00417 (E.D. Tex.); Civ. Act.
No. 6:11-cv-00018 (E.D. Tex.); Civ. Act. No 6:13-cv-00351 (E.D. Tex.);
Civ. Act. No. 6:13-mc-00037 (E.D. Tex.); and Civ. Act. No. 9:13-mc-80769
(E.D. Fla). Petitioner also indicates that the 211 patent is the subject of
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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.

Asserted Ground of Unpatentability

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.

The 211 Patent

The 211 patent describes a secure mechanism for communicating

over the internet. Ex. 1001 3:1011.

E.

Illustrative Challenged Claim 1

Claim 1 reads as follows:

1.
A system for providing a domain name service for
establishing a secure communication link, the system comprising:
a domain name service system configured and arranged to be
connected to a communication network, store a plurality of domain
names and corresponding network addresses, receive a query for a
network address, and indicate in response to the query whether the
domain name service system supports establishing a secure
communication link.

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Patent 7,921,211 B2
F.

35 U.S.C. 315(d) and 325(d) The Thirteenth Challenge

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.

Non-reliance on Expert Testimony

Patent Owner argues that Petitioners proposed ground of

unpatentability is wholly unsupported by expert testimony and that expert
testimony is required. Prelim. Resp. 9, 10, 1316. Even assuming
Petitioner does not rely upon expert testimony, Patent Owner does not
demonstrate sufficiently that reliance on expert testimony is required or that
the absence of expert testimony alone in this matter indicates the failure to
demonstrate a reasonable likelihood of prevailing in proving unpatentability
of a challenged claim. We are not persuaded by Patent Owners argument.

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II.
A.

ANALYSIS
Claim Construction

In an inter partes review, the Board construes claims by applying the

broadest reasonable interpretation in light of the specification. 37 C.F.R.
42.100(b). Under this standard, absent any special definitions, claim terms
or phrases 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).
Petitioner and Patent Owner each proffer proposed constructions of
several claim terms. At this stage of the proceeding, and on this record, we
determine that no claim term needs express construction at this time. See
Vivid Techs., Inc. v. Am. Sci. & Engg, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999) (only those terms that are in controversy need to be construed and
only to the extent necessary to resolve the controversy).

B.

Overview of Prior Art Kiuchi (Exhibit 1005)

Kiuchi discloses closed networks (HTTP (Hypertext Transfer

Protocol)-based network (C-HTTP)) of related institutions on the Internet.
Ex. 1005, 64. A client and client-side-proxy asks the C-HTTP name server
whether it can communicate with the [specified] host and, if the query is
legitimate and if the requested server-side proxy is registered in the closed
network and is permitted to accept the connection, the C-HTTP name
server sends the [requested] IP address. Id. at 65. After confirmation by
the C-HTTP name server that the specified server-side proxy is an

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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.

C. Analysis of Anticipation Grounds Based on Kiuchi

Claim 1, for example, recites a domain name service system
configured to indicate whether the domain name service system supports
establishing a secure communication link. Petitioner contends that Kiuchi
discloses all material limitations of the challenged claims and states that [i]f
the user attempts to establish a secure communication link using a DNS
system after booting and is able to do so, then the user has been provided a
broadly recited and discernable indication that the DNS in some manner
supports establishing a communication link, and that it would be
reasonable to interpret the indication . . . to read on the ability of the user to
communicate using a secure link after boot-up, and that the claim term[ ]
indicate . . . encompass[es] . . . the establishment of the secure

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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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Patent 7,921,211 B2
preponderance of the evidence a reasonable likelihood of prevailing in
proving unpatentability of the challenged claim.

Claim 15 recites that the domain name service system is configured to

provide, in response to the query, the network address corresponding to a
domain name from the plurality of domain names and the corresponding
network addresses. Claim 39 recites a similar feature. As previously stated,
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 this
feature because, according to Patent Owner, Kiuchi returns a server-side
proxys IP address but does not disclose return[ing] the IP address of the
URL in the request, which identifies Kiuchis origin server. Prelim. Resp.
38. Claim 15 recites a system that is configured to provide a network
address corresponding to a domain name (for establishing a secure
communication link). Patent Owner does not demonstrate sufficiently that
claim 15 also recites that the network address must identify any specific
entity, much less an origin server. We are not persuaded by Patent
Owners argument.
Petitioner argues that Kiuchi discloses the features recited in claim 27
and claim 51. See, e.g., Pet. 3940. 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 that the domain name service system is
configured to enable establishment of a secure communication link between
a first location and a second location, as recited in claim 27 and claim 51,
because [a] user at a user agent, not at the proxies themselves, sends a
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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

For the foregoing reasons, we determine that the information

presented in the Petition establishes that there is a reasonable likelihood that
Petitioner would prevail with respect to the challenged claims of the 211
patent. The Board has not made a final determination on the patentability of
any challenged claims. The Boards final determination will be based on the
record as fully developed during trial.

IV.

ORDER

In consideration of the foregoing, it is hereby ORDERED that an inter

partes review is instituted with respect to unpatentability of claims 1, 2, 5, 6,
15, 16, 23, 27, 36, 37, 39, 40, 47, 51, and 60 as anticipated by Kiuchi; and
FURTHER ORDERED that pursuant to 35 U.S.C. 314(c) and
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Patent 7,921,211 B2
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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