Ex Parte 7,188,180 et al

Patent Trial and Appeal Board

Apr 1, 2014

95001792 (P.T.A.B. Apr. 1, 2014)

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.
95/001,792 10/25/2011 7,188,180 43614.100 1972
22852 7590 02/28/2017
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
02/28/2017 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.
VIRNETX, INX.
Patent Owner

Appeal 2017-001289
Reexamination Control No. 95/001,792
Patent US 7,188,180 B2
Technology Center 3900

DENISE M. POTHIER, Administrative Patent Judge.

ORDER REMANDING INTER PARTES REEXAMINATION
TO THE EXAMINER TO ISSUE
NEW 37 C.F.R. § 41.77(d) DETERMINATION
Appeal 2017-001289
Control No. 95/001,792
Patent 7 ,188,180 B2

\

2

This case currently awaits a decision under 37 C.F.R. § 41.77(f) from
the Board following the Examiner’s determination under § 41.77(d) mailed
February 11, 2015 (“Ex. Deter.”) and associated comments from the parties
under § 41.77(e). For the reasons explained below, however, the Examiner’s
determination is insufficient for the Board to reconsider the matter
meaningfully; consequently, this case is not ripe for the Board’s new decision
under 37 C.F.R. § 41.77(f). This proceeding is remanded to the Examiner to
issue a new determination under 37 C.F.R. § 41.77(d) addressing all the new
evidence and clarifying the Examiner’s patentability determination.

The Board’s Decision, Subsequent Responses, and
the First Remand to the Examiner

In the Board’s decision of April 1 , 2014 (“Op.”), the Board reversed
the Examiner’s confirmation of claims 1, 4, 6, 7, 9–15, 17, 20, 22, 23, 25–31,
33, 35, 37, 38, 40, and 41 among other things. The Board presented the
following new grounds of rejection under 37 C.F.R. § 41.77(b):
1. Claims 1, 4, 6, 9–15, 17, 20, 22, 25–31, 33, 35, 37, 40, and 41 as
being obvious1 under 35 U.S.C. § 103(a) over Kiuchi. Op. 11–23.
2. Claims 7, 23, and 38 as being obvious over Kiuchi and Martin. Op.
17–23.2

1 Patent Owner and Requester state the Opinion also newly rejects claims 1, 4,
6, 9, 10, 12–15, 17, 20, 25, 26, 28–31, 33, 35, 37, and 40 under 35 U.S.C.
§ 102. Request 1 (citing Op. 9); 3PR Comments (cover page). The Opinion
indicates the claims are newly rejected under § 103. Op. 11, 17 (both sections
including headings entitled “New Rejection,”) 23 (stating the new grounds of
rejection are “under § 103.”)
2 The references are cited in full on pages 3 and 4 of the Decision mailed
Appeal 2017-001289
Reexamination Control No. 95/001,792
Patent US 7,188,180 B2
3

In response, Patent Owner requested to reopen prosecution under
§ 41.77(b)(1) (“Request”), submitting two new declarations , a
Declaration from Fabian Monrose, Ph.D. (“Monrose Declaration”), a
Supplemental Declaration of Inventor Robert Dunham Short III, Ph.D
(“Supplemental Short Declaration”) as well as numerous exhibits.
Requester submitted comments (“3PR Comments”) on June 27, 2014.
On November 10, 2014, a remand order granted the Request and
indicated that “the new evidence is entered for the Examiner’s consideration.”
Remand 3. The order further remanded the Request “to the Examiner for
consideration of Owner’s Response and Requester’s Comments in connection
with claims 1, 4, 6, 7, 9–15, 17, 20, 22, 23, 25–31, 33, 35, 37, 38, 40, and 41.”
Id.
37 C.F.R. § 41.77(d) states that
The statement of the Board shall be binding upon the examiner unless
an amendment or new evidence not previously of record is made
which, in the opinion of the examiner, overcomes the new ground of
rejection[s] stated in the decision. The examiner will consider any
owner response under paragraph (b)(1) of this section . . . .

Concerning the new evidence related to the claims “so rejected” under
37 C.F.R. § 41.77(b)(1) and entered for Examiner’s consideration, the order
states that “Owner submits additional evidence in the form of a Declaration
from Fabian Monrose, Ph.D., a Supplemental Declaration of inventor Robert
Dunham Short III, Ph.D, and Exhibits A-9 and A-34 through A-38 listed in
Appendix.” Order 3. Notably, Patent Owner indicated in its Request that
“[t]he new evidence includes a Declaration of Fabian Monrose, Ph.D (“Monrose

April 1, 2014. Accordingly, the full citations are omitted here for brevity.
Appeal 2017-001289
Control No. 95/001,792
Patent 7 ,188,180 B2

\

4

Decl.”) and a Supplemental Declaration of Robert Dunham Short, III (“Supp.
Short Decl.”), as well as Exhibits A-9 and A-34 through A-38 listed in
Appendix – List of Exhibits.” Request 2. Thus, Patent Owner stated in the
record that only Exhibits A-9 and A-34 through A-38 were new.
On February 11, 2015, the Examiner considered the Monrose
Declaration, the Supplemental Short Declaration, Exhibit A-9, Exhibits A-34 –
A-38, and Exhibit M. Ex. Deter. 3–4. Thus, the record reflects that only
Exhibits A-9 and A-34–A-38 submitted by Patent Owner were considered by
the Examiner in concluding that the new grounds of rejection by the Board was
not overcome. Id. at 3–8.
On March 11, 2015, Patent Owner submitted comments (“PO
Comments”) to the Examiner’s Determination contending that the Examiner did
not address all the new evidence submitted. PO Comments 4–5. In particular,
Patent Owner contends that the Examiner did not address newly submitted
Exhibits A-39 through A-48. See id. at 5. Yet, Patent Owner contributed to the
confusion regarding what evidence in the Request was new to the record. As
noted above, Patent Owner explicitly stated that only Exhibits A-9 and A-34
through A-38 were new. Request 2. Perhaps, this statement in the Request
referring to Exhibit “A-38” was intended to be “A-48,” but Patent Owner did
not clarify this was a typographical error in the record.
On the other hand, the “Appendix – List of Exhibits” of the Request that
only Exhibit Nos. A-1, A-10–A-13, and B-1–B-5 were “Previously Submitted,”
suggesting the remainder exhibits were new. As such, this order clarifies that
Exhibits A-39 through A-48 should have been considered by the Examiner
when issuing the determination that new grounds of rejection are being
maintained as set forth under §41.77(d).
Appeal 2017-001289
Reexamination Control No. 95/001,792
Patent US 7,188,180 B2
5

Additionally, the Examiner’s Determination attributes varying “weight”
to the exhibits. Ex. Deter. 7–8 (affording (a) the Monrose Declaration, the
Supplemental Short Declaration, Exhibit A-34, and Exhibit A-35 “substantial
weight,” (b) Exhibit A-36 “considerable weight,” (c) Exhibits A–9 and A-37
“less weight,” and (d) Exhibits A-38 and M “little weight” related to the claim
phrase, “virtual private network communication link.”) But, the determination
does not articulate whether the Examiner agrees with any of the new exhibits as
particularly providing a correct claim construction for “virtual private network
communication link.” See id. Specifically, it is not apparent that an exhibit that
the Examiner affords “substantial weight” or “considerable weight,” such as
Monrose Declaration or Exhibit A-36, contains a claim construction for the
phrase “virtual private network communication link,” with which the Examiner
agrees. See id.
The Examiner’s Determination also does not clearly articulate what claim
construction, if any, for other terms disputed by Patent Owner (e.g., “client
computer” in claims 13, 15, 29, and 31) the Examiner agrees with based on the
new evidence. Request 11–13 (citing Monrose Decl., Ex. A-45, and Ex. A-48)
and PO Comments 4. Patent Owner also disputes the substance of the new
grounds of rejection and discusses the evidence of secondary considerations
based on new exhibits. See Request 13–27 (citing Monrose Decl. and Supp.
Short Decl.). The Examiner’s Determination does not articulate that this new
evidence was considered with regards to these disputed points.3

3 On October 1, 2014, Patent Owner also submitted an Information Disclosure
Statement (IDS). Office records do not reflect whether this IDS has been
considered. See MPEP § 2656 (stating “the examiner must also consider
patents and printed publications: . . . (b) cited by the patent owner under a duty
Appeal 2017-001289
Control No. 95/001,792
Patent 7 ,188,180 B2

\

6

Accordingly, the proceedings are remanded to the Examiner to consider
all new evidence, including Exhibits A-9 and A-34 through A-48 as well as
Patent Owner’s response under § 41.77(b)(1), completely for consideration in a
determination made under § 41.77(d). Notably, arguments that do not relate to
the claims newly rejected or do not relate to the new evidence do not need
consideration. On the other hand, the new evidence not previously of record
must be considered in determining whether the new grounds of rejection have
been overcome. See 37 C.F.R. § 41.77(d).

SUMMARY
This matter is remanded to the Examiner to issue a new § 41.77(d)
determination to consider all new evidence and to clarify what claim
construction, if any, for the terms disputed by Patent Owner, the Examiner
agrees with based on the new evidence. Additionally, the Examiner should
consider and clarify the disputed points of the new grounds of rejection,
including the evidence of secondary considerations, based on new exhibits.
The proceeding will then return to the Board to reconsider the matter
and issue a new decision under § 41.77(f).

REMANDED

of disclosure (37 C.F.R. 1.933) in compliance with 37 CFR 1.98” (underling
and bolding omitted)).
Appeal 2017-001289
Reexamination Control No. 95/001,792
Patent US 7,188,180 B2
7

Patent Owner:
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
901 New York Avenue, NW
Washington, DC 20001-4413

Third Party Requester:
HAYENS AND BOONE, LLP
IP Section
2323 Victory Avenue, Suite 700
Dallas, TX 75219