Ex Parte 6839759 et al

Patent Trial and Appeal Board

Jul 31, 2018

95001746 (P.T.A.B. Jul. 31, 2018)

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.
95/001,746 09/07/2011 6839759 43614.98 5175
22852 7590 07/31/2018
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/31/2018 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 2017-010852
Reexamination Control 95/001,746
Patent 6,839,759 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 (“Request for
Rh’g”) of our Decision dated November 14, 2017 (“Decision 2”) on the
Examiner’s Determination Under 37 C.F.R. § 41.77(d) (“Ex. Deter.”)
(March 7, 2017). Decision 2 is subsequent to and incorporates a Decision
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dated February 11, 2016 (“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. See Request to Reopen Prosecution 1–2 (March 11,
2016). Third Party Requester responded, urging the new grounds of
rejection be maintained. See Comments by Third Party Requester Pursuant
to 37 C.F.R. §41.77(C) 1–2 (April 11, 2016). 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,
p. 18. This is a request for rehearing on Decision 2.
Patent Owner identified the following points believed to be
misapprehended or overlooked in Decision 2.
Patent Owner contends the Examiner, in the Examiner’s
Determination, “presented a new rationale as to how Kent purportedly
discloses the claim limitations” from that presented in Decision 1. Request
for Rh’g 2–3. Patent Owner asserts that we failed to address the Examiner’s
distinction between “a user” and “an administrator” in Kent and how the
new grounds of rejection based on Kent in Decision 1 did not make this
distinction. Request for Rh’g 3.
In Decision 2,
We emphasize[d] that in our previous decision[, Decision 1,]
we found that Kent discloses an embodiment where an
application—as opposed to a user—can establish security
services. Dec. 40. Despite Patent Owner's statements and Dr.

1 In Decision 2, we stated “[o]ur new Decision is deemed to incorporate the
earlier Decision, except for those portions specifically withdrawn. 37 C.F.R.
§ 41.77(f).” Decision 2, p. 3.
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Monrose’s determination to the contrary (PO Response 12-14
(citing Kent 6, 7, 14, 15 and Monrose Decl. ¶¶ 27-34)), the
record does not demonstrate persuasively that the phrase
“cryptographic information” must include the discussed
information in Kent that a user can enter (e.g., a user can
control how IPsec is applied or traffic (Kent 14, cited in PO
Response 12)).
Decision 2, p. 15. We further stated
The rejection still remains as presented in the earlier Decision[,
Decision 1,] and the Examiner's Determination indicates that
the rejection is being maintained despite the newly presented
evidence and arguments. See 37 C.F.R. § 41.77(d). In
particular, this decision reviews the grounds of rejection based
on Kent as presented in our previous decision (see Dec. 40) in
light of the arguments presented and the newly presented
evidence.
Decision 2, p. 16.
Notably, Decision 2 emphasized “an embodiment where an
application—as opposed to a user—can establish security services”
(Decision 2, p. 15) and stated the rejection “remains as presented in
the earlier Decision.” Decision 2, p. 16 Thus, contrary to Patent
Owner’s assertions (Request for Rh’g 2–3), we addressed that the
Examiner’s alleged new rationale related to a distinction between “a
user” and “an administrator” in the Examiner’s Determination is not
part of the rejection. We refer to Decision 1 for more details.
Decision 1, pp. 6–7, 39–47 (discussing Issues 7, 9, 23, and 25, which
address grounds under 35 U.S.C. §§ 102 and 103 based on at least
Kent).
Nonetheless and although not part of the grounds of rejection,
we agree with the Examiner’s findings related to the distinction in
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Kent between a system administrator and the user, such that a user
does not enter cryptographic information. See Decision 2, pp. 15
(signaling we agree with the Examiner and citing to page 19 of the
Examiner’s Determination, distinguishing between a user and system
administrator), 16 (stating “The discussion in the Examiner’s
Determination regarding a user as well as an administrator can set
constraints only further illustrates how Kent teaches and suggests the
limitations of claim 1.”) (emphasis added).
Patent Owner also contends Decision 2 “purports to affirm the
Examiner’s determination” even though we overlooked an exhibit, Exhibit
A-87, the Examiner considered in determining to maintain the rejection we
presented in Decision 1. Request for Rh’g 3–4. We are not persuaded.
First, as stated previously, Decision 2 clearly states “[t]he rejection
still remains as presented in the earlier Decision[, Decision 1.]” Decision 2,
p. 16. We therefore are reaffirming our rejection as presented in the
Decision 1 rather than affirming the Examiner’s determination as alleged.
Second, we did not overlook the arguments related to Exhibit A-87.
Decision 2, pp. 7–8 (referring to Exhibit A-87 on several occasions). Third,
the Examiner states Exhibit A-87 is “a transcript of Roberto Tamassia,
within the IPR2015-1009 proceeding.” Ex. Deter. 8 (emphasis added).
Thus, as the Examiner indicates, Exhibit A-87 was located in another
proceeding. See Decision 2, pp. 2 n.1 and 4 n.3. Moreover, Patent Owner
does not affirmatively state Exhibit A-87 was submitted in this proceeding.
Request for Rh’g 3–4.
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Fourth, presuming Exhibit A-87 was submitted in this record with the
request to reopen prosecution,2 this evidence does not change our position
related to the grounds of rejection based on Kent. In the Request to Reopen
Prosecution, Patent Owner argues that “cryptographic information” is
understood by ordinary artisan to be “cryptographic values, specific
cryptographic algorithms and key lengths that are required or expected.”
Request to Reopen Prosecution 6 (citing Exhibit A-87, p. 27:7–20). Upon
review of this evidence, we agree with the Examiner that Exhibit A-87
presents argument similar to those “submitted by the Patent Owner in the
March 2016 Remarks” (Request to Reopen Prosecution) (Ex. Deter. 6),
which we found unpersuasive. Decision 2, pp. 6–9. As such, we decline to
change our claim construction of “cryptographic information”3 or our overall
determination that Kent teaches the disputed limitations related to the
disputed phrase “cryptographic information.” Decision 2, pp. 6 (citing
Decision 1, p. 11), 7 (citing Ex. Deter. 7–9 and quoting Ex. Deter. 8 (stating
“The Examiner determines our construction ‘still conforms to the plain and
ordinary definition of the term[, cryptographic information,’] provided by
the Patent Owner”) (brackets in original)), 8 (citing Ex. Deter. 7–9 and
stating “[w]e agree with the Examiner”), 15–17 (addressing Kent and
“cryptographic information”).

2 We consider the copy of Exhibit A-87 provided by Patent Owner with the
Request for Rehearing.
3 We determined the phrase “cryptographic information” includes “codes
and keys used to convert data so that only specific recipients will be able to
read the sent information.” Decision 2, pp. 6 (citing Decision 1, p. 11).
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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, we
maintain the new grounds of rejection based on Kent and all other, new
grounds. All rejections affirmed remain affirmed. See Decision 1, pp. 4–6,
39–58; see also Decision 2, pp. 3 (incorporating Decision 1), 5 (listing the
grounds under review), 18.
We have granted the Request for Rehearing to the extent that we have
reconsidered Decision 2 and considered Exhibit A-87, but we deny the
request for hearing with respect to making any changes to the new grounds
of rejection.

REHEARING DENIED