7418504 et al.

Patent Trials and Appeals Board

Mar 24, 2022

2017010954 (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. 95/001,851 12/13/2011 7418504 43614.101 1688 137313 7590 03/24/2022 PAUL HASTINGS LLP 2050 M. Street NW Washington, DC 20036 EXAMINER FOSTER, ROLAND G 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 v. Patent of VIRNETX INC. Patent Owner and Appellant Appeal 2017-010954 Reexamination Control 95/001,851 Patent 7,418,504 B2 Technology Center 3900 Before KARL D. EASTHOM, JEFFREY B. ROBERTSON, and JEREMY J. CURCURI, Administrative Patent Judges.1 ROBERTSON, Administrative Patent Judge. DECISION ON REMAND 1 See PANEL CHANGE ORDER (entered November 12, 2021); DECISION ON PETITION (entered January 31, 2022, denying Patent Owner’s Petition for Assignment of a New Panel filed November 22, 2019). Appeal 2017-010954 Reexamination Control 95/001,851 Patent 7,418,504 B2 2 I. STATEMENT OF THE CASE In a series of decisions, the Board affirmed the Examiner’s rejections of claims 1-10, 12-35, and 60 of United States Patent 7,418,504 B2 (hereinafter the “’504 Patent”). Decision on Appeal, Appeal No. 2016- 004575 (entered Sept. 12, 2016) (hereinafter “Decision on Appeal”), 2, 31; Decision on Rehearing (entered February 1, 2018). The Board also reversed the Examiner’s decision not to reject claim 11. Decision on Appeal 31; Decision, Appeal No. 2017-010954 (entered Sept. 18, 2017). The Federal Circuit affirmed the Board’s Decision on Appeal with respect to claims 1-4, 6-11, 14-35, and 60. VirnetX Inc. v. Cisco Systems, Inc., 776 F. App’x 698, 700 (Fed. Cir. June 28, 2019) (non-precedential). However, the Federal Circuit vacated and remanded the Board’s Decision on Appeal with respect to claims 5, 12, and 13, because “the Board failed to address VirnetX’s arguments and failed to make necessary factual findings for the rejection of claims 5, 12, and 13.” Id. In particular, the Federal Circuit stated that “[o]n remand, the Board should consider whether the system described in Lendenmann[2] uses the RPC[3] mode of communication for communications between a user and the CDS[4].” Id. at 704. A petition for rehearing of the Federal Circuit’s decision was filed by Appellee (here the Third Party Requester) Cisco Systems, Inc. (hereinafter “Cisco”), which was denied in an Order filed October 1, 2019. 2 Rolf Lendenmann, Understanding OSF DCE 1.1 for AIX and OS/2, IBM International Technical Support Organization, pp. 1-245 (Oct. 1995) (“Lendenmann”). 3 “Remote Procedure Call.” 4 “Cell Directory Service.” Appeal 2017-010954 Reexamination Control 95/001,851 Patent 7,418,504 B2 3 A General Order by the Chief Administrative Patent Judge entered on May 5, 2020 in the 95/001,851 reexamination ordered 95/001,851 be held in abeyance until the Supreme Court ultimately resolved the issues raised in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) (cert. granted sub nom. United States v. Arthrex, Inc., 141 S. Ct. 549 (2020)). In a General Order entered on October 26, 2021, the Chief Administrative Patent Judge lifted the General Order of May 5, 2020. Consistent with the Federal Circuit’s guidance discussed above, we consider whether the Examiner erred in finding that Lendenmann’s system uses an RPC mode of communication between a user and the CDS and as such meets the recitation in claim 5 that “the domain name service system is configured to authenticate the query using a cryptographic technique.” After due consideration, we affirm the Examiner’s rejections of claims 5, 12, and 13 for the reasons discussed infra. II. OPINION Discussion Claim 5 Claim 5 depends from claim 2, and recites “the domain name service system is configured to authenticate the query using a cryptographic technique.” The Examiner found Lendenmann discloses that the CDS is based on the RPC foundation and that a query from the client to a directory service (CDS) is made by RPC. Right of Appeal Notice entered February 26, 2015 (“RAN”), 43, 45. The Examiner found RPC calls rely upon well-known authentication algorithms (cryptographic techniques). RAN 45. Appeal 2017-010954 Reexamination Control 95/001,851 Patent 7,418,504 B2 4 Patent Owner VirnetX (“VirnetX”) contends that “the CDS does not use the RPC model of communication, as the Office contends. . . . Thus, the CDS is not ‘configured to authenticate the query using a cryptographic technique.’” VirnetX Appeal Brief (filed May 26, 2015), 25. Cisco contends that Lendenmann discloses “the Directory Service, including CDS, is ‘based upon the data sharing model,’ and that ‘data sharing is built upon RPC’” such that the Examiner’s findings are not in error. Cisco Respondent Brief (filed June 25, 2015), 13 (citing Lendenmann 9; RAN 45). We agree with the Examiner and Cisco. In particular, Lendenmann discloses “[i]n OSF [open software foundation] DCE [distributed computer environment], data sharing is built upon RPC [remote procedure call], which is used as the means of transferring data. . . . [T]he directory service . . . [is] based upon the data sharing model.” Lendenmann 9 (emphasis added). Lendenmann discloses the RPC application includes RPC runtime, which “performs such tasks as controlling communications between clients and servers or finding servers for clients on request.” Id. at 175 (emphasis added). Lendenmann discloses “[t]he RPC runtime can be used to store and search for the location of servers (binding information) in the directory service.” Id. at 178 (emphasis added); see also id. at 186, 190, 207-208. Thus, the Examiner’s finding that Lendenmann uses the RPC mode of communication between a user and the CDS is supported by a preponderance of the evidence. Moreover, Lendenmann discloses that the level of protection for RPC may be specified, which further supports the Examiner’s position that RPC relies on well-known authentication algorithms (cryptographic techniques). Appeal 2017-010954 Reexamination Control 95/001,851 Patent 7,418,504 B2 5 See Lendenmann 192-194 (disclosing that client RPC runtime requests a service ticket from the Security Service and that “this communication between client and Security Service is itself encrypted”); 34 (“The CDS, as any other DCE service, is integrated into the security service. The CDS server only completes an operation over the clearinghouse if the user is authenticated and authorized by the Security Service. It is a two-way process where the user or the principal is first authenticated to prove who he is and then authorized to do certain operations.”). Accordingly, we affirm the Examiner’s rejection of claim 5 as anticipated by Lendenmann. Claims 12 and 13 For claims 12 and 13, the Federal Circuit stated “[t]he issue above applies equally to the Board’s treatment of claims 12 and 13. Like claim 5, the Examiner’s rejection of those claims is premised on finding that Lendenmann uses RPC to communicate with its DNS server.” VirnetX v. Cisco, 776 F. App’x at 702. Thus, we incorporate our discussion above that the Examiner’s position that Lendenmann uses RPC to communicate with the CDS is supported by a preponderance of the evidence. Claim 12 recites “wherein the virtual private network is based on comparing a value in each data packet transmitted between a first device and a second device to a moving window of valid values.” Claim 13 recites “wherein the virtual private network is based on a comparison of a discriminator field in a header of each data packet to a table of valid discriminator fields maintained for a first device.” Appeal 2017-010954 Reexamination Control 95/001,851 Patent 7,418,504 B2 6 Claims 12 and 13 were rejected under 35 U.S.C. § 103(a) as unpatentable over Lendenmann, Gaspoz,5 and RFC793.6 See Decision on Appeal 3-5. The Examiner’s position is that Lendenmann discloses that CDS uses the RPC model of communication and “RPC operate[s] over TCP, where RFC793 teaches that TCP verifies that received data falls within a moving window of accepted sequence number as is notoriously well-known in the art of TCP communications.” RAN 47. In the Decision on Appeal, the Board addressed the additional recitations in claims 12 and 13. Decision on Appeal 16-17. In particular, the Decision on Appeal expressly addressed Appellant’s additional arguments that [o]ne of ordinary skill in the art would not understand any and all TCP-based communications in compliance with RFC 793 to be a VPN as claimed. (Supp. Keromytis Decl. ¶ 29.) And even assuming that the TCP protocol discloses using a moving window, the Office fails to explain how or why a VPN operating over TCP must also be “based on’ a moving window. VirnetX Appeal Br. 27-28. In this regard, the Board observed that “neither Patent Owner nor Patent Owner’s declarant assert that no TCP-based communications can be a VPN.” Decision on Appeal 16-17. We reiterate and adopt the findings and 5 Gaspoz, Jean-Paul, “VPN on DCE: From Reference Configuration to Implementation,” Bringing Telecommunication Services to the People - IS&N ’95, Third International Conference on Intelligence in Broadband Services and Networks, October 1995 Proceedings, pp. 250-260 (“Gaspoz”). 6 Information Sciences Institute, “Transmission Control Protocol,” DARPA Internet Program Protocol Specification Request for Comments 793 (Sept. 1981) (“RFC793”). Appeal 2017-010954 Reexamination Control 95/001,851 Patent 7,418,504 B2 7 reasoning regarding claims 12 and 13 from the Decision on Appeal. Id. Lendenmann expressly discloses TCP as a communications protocol. Lendenmann 179. RFC793 discloses TCP verifies that received data falls within overlapping windows. Cisco Request for Reexamination (filed December 13, 2011), Ex. F-1 139-140; RFC793 24, 26. Thus, whether “any and all” TCP-based communications in compliance with RFC793 are a VPN, that does not directly address the Examiner’s position that basing a VPN on comparing values in each data packet to a moving window of valid values would have been obvious in view of the combined disclosures of Lendenmann and RFC793. As to VirnetX’s argument that no rationale was provided as to why a VPN operating over TCP must also be based on a moving window, the Board found that as discussed by Cisco, Lendenmann discloses TCP as a communications protocol, which, as defined by RFC793 and RFC793, discloses a moving window of valid values. Decision on Appeal 17 (citing Cisco Request for Reexamination filed December 13, 2011, Ex. F-1 138- 140). Thus, the Board found that VirnetX had not identified sufficient flaws in the rationale presented by Requester. Id. We reiterate and adopt this rationale, and determine the rationale is supported by a preponderance of the evidence. Accordingly, we affirm the Examiner’s rejection of claims 12 and 13. III. CONCLUSION In summary, the Federal Circuit previously affirmed the Board’s Decision affirming the Examiner’s rejection of claims 1-4, 6-11, 14-35, and Appeal 2017-010954 Reexamination Control 95/001,851 Patent 7,418,504 B2 8 60. Accordingly, this decision addresses only claims 5, 12, and 13, the status of which is as follows: In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he original decision of the Board under § 41.77(a).” 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 (d) of this section, and for submitting comments under paragraph (c) of this section may not be extended. 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 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 5 102(b) Lendenmann 5 12, 13 103(a) Lendenmann, Gaspoz, RFC793 12, 13 Overall Outcome 5, 12, 13 Appeal 2017-010954 Reexamination Control 95/001,851 Patent 7,418,504 B2 9 PATENT OWNER: PAUL HASTINGS LLP 2050 M. Street NW Washington DC 20036 THIRD PARTY REQUESTER: David L. McCombs HAYNES AND BOONE, LLP, IP SECTION 2323 Victory Avenue, Suite 700 Dallas, TX 75219