Microsoft Word - 19-1671 - VirnetX Motion To Remand (143478501 - 14)

Case: 19-1671 Document: 19-1 Page: 1 Filed: 08/23/2019
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

______________________
VIRNETX INC.,
Appellant
v.
CISCO SYSTEMS, INC.,

Appellee
______________________
2019-1671
______________________
Appeal from the United States Patent and Trademark Office,

Patent Trial and Appeal Board in No. 95/001,679
______________________
APPELLANT VIRNETX INC.’S MOTION TO REMAND,

AND PROTECTIVE MOTION TO STAY THE BRIEFING SCHEDULE
Naveen Modi
Joseph E. Palys
Stephen B. Kinnaird
Igor V. Timofeyev
Daniel Zeilberger
PAUL HASTINGS LLP
875 15th Street, N.W.
Washington, D.C. 20005
(202) 551-1700
August 23, 2019 Counsel for Appellant VirnetX, Inc.

TABLE OF CONTENTS
Page(s)
TABLE OF AUTHORITIES .................................................................................... ii

BACKGROUND .......................................................................................................3
I. The ’135 Patent and the Asserted Reference................................................3
II. The Inter Partes Reexamination Proceedings Under Review .....................5
III. The Mangrove Inter Partes Review Proceedings ........................................8
ARGUMENT ...........................................................................................................12
STAY OF BRIEFING..............................................................................................16
CONCLUSION ........................................................................................................16
i
TABLE OF AUTHORITIES
Page(s)
Cases
In re Apple Inc.,
562 F. App’x 983 (Fed. Cir. 2014) .................................................................2, 14
Ethyl Corp. v. Browner,

989 F.2d 522 (D.C. Cir. 1993) ......................................................................12, 15
In re Gould,
673 F.2d 1385 (C.C.P.A. 1982) .......................................................................... 16
Lawrence v. Chater,
516 U.S. 163 (1996) (per curiam) ....................................................................... 12
In re Odetics, Inc.,
129 F.3d 133, 1997 WL 632791 (Fed. Cir. Sept. 16, 1997) ............................... 14
In re Rambus, Inc.,
560 F. App’x 1005 (Fed. Cir. 2014) .........................................................2, 14, 15
In re Rambus, Inc.,
No. 13-1623, Docket No. 20 (Dec. 20, 2013) .................................................... 15
SKF USA Inc. v. United States,

254 F.3d 1022 (Fed. Cir. 2001) ......................................................................2, 12
VirnetX Inc. v. The Mangrove Partners Master Fund, Ltd.,

No. 17-1368, 2019 WL 2912776 (Fed. Cir. July 8, 2019) ..........................passim
Rules
Fed. Cir. R. 31(c) .................................................................................................2, 16
Fed. R. App. P. 28(j) ................................................................................................ 11
ii
Appellant VirnetX Inc. (“VirnetX”) respectfully requests that this Court
remand this appeal, No. 19-1671, to the Patent Trial and Appeal Board (“the
Board”) for reconsideration in light of this Court’s recent decision in VirnetX Inc.
v. The Mangrove Partners Master Fund, Ltd., No. 17-1368, 2019 WL 2912776
(Fed. Cir. July 8, 2019). In the proceeding below, the Board found claims 1-9 and
13-18 of U.S. Patent No. 6,502,135 (the “’135 patent”) unpatentable over the
asserted Kiuchi reference by committing two critical claim construction errors:
First, the Board refused to construe the disputed term “client computer”; second,
the Board refused to apply VirnetX’s unambiguous prosecution-history disclaimer
of any claimed “virtual private network” (“VPN”) that did not require direct
communication.
After VirnetX filed this appeal, the Court decided Mangrove Partners,
where the Board committed the same two errors, and rejected overlapping claims
of the same patent over the same Kiuchi reference. This Court held that the Board
erred in refusing to consider VirnetX’s proposed construction of “client computer.”
Mangrove Partners, 2019 WL 2912776, at *7. The Court also held that the Board
erred in refusing to give effect to VirnetX’s disclaimer when construing the term
“VPN.” Id. at *8-9. The Court vacated the Board’s anticipation findings and
obviousness determination, and directed the Board “to assess Kiuchi’s disclosure
in light of the proper construction.” Id. at *9.
1
Because this Court has already decided two claim construction questions
that are also at issue in this appeal, and those questions undergird the Board’s near-
identical rejections of the same patent claims over the same prior art reference, the
Court should remand the case to the Board for reconsideration in light of its recent
decision. The remand would permit the Board to consider this Court’s guidance
with respect to the construction of the disputed claim terms, thereby conserving the
Court’s, the Patent Office’s, and the parties’ resources. “A remand is generally
required if the intervening event may affect the validity of the agency action.”
SKF USA Inc. v. United States, 254 F.3d 1022, 1028 (Fed. Cir. 2001) (citation
omitted). This Court’s practice, accordingly, is to remand the case to the Board
where an intervening decision of the Court—particularly on claim construction—
calls into question the Board’s unpatentability rejections. See, e.g., In re Apple
Inc., 562 F. App’x 983, 983-84 (Fed. Cir. 2014) (remanding an appeal to the Board
“to reconsider its decision in light of th[e Court’s] construction” of a disputed
claim term in an intervening decision); In re Rambus, Inc., 560 F. App’x 1005,
1005-06 (Fed. Cir. 2014) (remanding an appeal to the Board “to reconsider its
decision in light of this court’s decision” in an intervening case). The Court should
follow that practice here.
Since this motion, “if granted, would terminate the appeal, the time to serve
and file the next brief due is suspended.” Fed. Cir. R. 31(c). In an abundance of
2
caution, however, VirnetX requests that this Court stay the briefing in this appeal
while it considers the motion to remand.
Appellee Cisco Systems, Inc. (“Cisco”) indicated that it opposes this motion.
BACKGROUND
I. The ’135 Patent and the Asserted Reference
Both this appeal and the Mangrove Partners appeal decided by this Court
involve the same patent—the ’135 patent—and the same Kiuchi reference. See
Ex. A (Decision on Appeal (Feb. 6, 2018)) at 2-3; Mangrove Partners, 2019 WL
2912776, at *1. The invention claimed in the ’135 patent describes a system and
method of establishing secure communications over the Internet. Mangrove
Partners, 2019 WL 2912776, at *4; Ex. A at 2. Specifically, the ’135 patent
“address[es] problems related to communications involving conventional domain
name servers (‘DNS’).” Mangrove Partners, 2019 WL 2912776, at *4.
Conventionally, when a user seeks to connect to another device, he “enters the
name of a web site” into a client application (e.g., a web browser), and “a request
is sent to a DNS, which returns the IP address associated with that web site to the
client application. The client application then uses that IP address to communicate
with the web site.” Id. (citations omitted).
The resulting connection, however, is vulnerable to interception by
“nefarious listeners on the Internet,” who can “learn what IP addresses the user
3
was contacting.” Id. (internal quotation marks and citation omitted). To solve this
problem, the ’135 patent “discloses using a DNS proxy to intercept all DNS lookup
functions from the client and determine whether access to a secure site has been
requested. If so, the DNS proxy transmits a message to a gatekeeper requesting
that a virtual private network (‘VPN’) be created between the user computer and
the secure site.” Id. (citations omitted).
Claim 1 of the ’135 patent is representative, and recites:
A method of transparently creating a virtual private network (VPN)

between a client computer and a target computer, comprising the steps
of:
(1) generating from the client computer a Domain Name Service

(DNS) request that requests an IP address corresponding to a
domain name associated with the target computer;
(2) determining whether the DNS request transmitted in step (1) is

requesting access to a secure web site; and
(3) in response to determining that the DNS request in step (2) is

requesting access to a secure target web site, automatically
initiating the VPN between the client computer and the target
computer.
Ex. A at 2-3 (quoting ’135 patent (47:20-32)) (emphasis added); see also
Mangrove Partners, 2019 WL 2912776, at *7.1
Cisco challenged claims 1-18 of the ’135 patent over a variety of references,
including the “Kiuchi” reference, a 1996 publication by Takahiro Kiuchi and
Shigekoto Kaihara, C-HTTP—The Development of a Secure, Closed HTTP-Based
1
The ’135 patent is attached as Exhibit B.
4
Network on the Internet, Proceedings of the Symposium on Network and
Distributed System Security, IEEE 64-75 (1996). See Ex. A. at 3-4. Kiuchi
“discloses using a closed HTTP-based network (‘C-HTTP’) to provide secure
communications between a closed group of institutions on the Internet.”
Mangrove Partners, 2019 WL 2912776, at *4. In contrast to VirnetX’s invention,
C-HTTP communication is a multi-step process that involves five different
components: “a user agent (also referred to as a client), a client-side proxy, a C-
HTTP name server, a server-side proxy, and an origin server.” Id.
II. The Inter Partes Reexamination Proceedings Under Review
On July 8, 2011, Cisco requested inter partes reexamination of claims 1-18
of the ’135 patent. See Ex. A at 2. The Examiner rejected claims 1-9 and 13-18
over several asserted references, including Kiuchi. Id. at 4. VirnetX appealed
those rejections to the Board. Id. at 2. On appeal, the Board affirmed the
rejections of claims 1-9, 13-14, and 17-18 on the basis of Kiuchi, alone or together
with additional references. Id. at 28. Specifically, the Board found that claims 1-4,
7, 13-14, and 17 were anticipated by Kiuchi, and claims 1-9 and 18 were rendered
obvious by Kiuchi combined with other references. Id.2
Two claims terms were at issue in the proceeding before the Board: “client
computer” and “virtual private network (VPN).” See Ex. A at 15-16, 17-18.
2
The Board also upheld the rejections of claims 13-17 on the basis of other
references. Id.
5
VirnetX proposed a construction for each of these terms and argued that Kiuchi
does not disclose either limitation, properly construed.
For “client computer,” VirnetX argued that the term should be defined to
mean “a ‘user’s computer.’” Id. at 15 (quoting Ex. C (VirnetX’s Appeal Br.
(Dec. 15, 2015)) at 10); see also Ex. D (VirnetX’s Rebuttal Br. (July 14, 2016))
at 2. VirnetX then pointed out that Kiuchi does not disclose a “user’s computer”
and that the Examiner erred in relying on Kiuchi’s client-side proxy for the
disclosure of the claimed “client computer” because the client-side proxy has no
end-user. Ex. A at 15; Ex. C at 11-12; Ex. D at 3-4.
For “VPN,” VirnetX argued that this term must be construed to encompass
only “interconnected computers that can directly communicate with one another.”
During the prosecution of the ’135 patent VirnetX “unambiguously disclaimed
VPNs that do not involve direct communication.” Ex. C at 13-15; see also Ex. D
at 4; Ex. A at 18. As VirnetX noted, in a prior district court proceeding, “Cisco
itself previously acknowledged that the prosecution history demonstrates that there
is a ‘clear mandate to the Patent Office that computers in a “virtual private
network” communicate directly with each other, and that absent direct
communication between the computers, there is no virtual private network.’”
Ex. D at 4 (citations omitted).3
3
VirnetX also responded to Cisco’s argument that “‘[e]ven if ‘direct communica-
6
The Board rejected both arguments. With respect to “client computer,” the
Board refused to construe the term. Instead, the Board asserted that, “[e]ven
assuming that claim 1 recites a ‘user’s computer’ (instead of a ‘client computer,’
which claim 1 actually recites) that generates a Domain Name Service (DNS)
request … [VirnetX] does not demonstrate persuasively that the hypothetical
‘user’s computer’ (renamed from ‘client computer’) differs from the client-side
proxy of Kiuchi.” Ex. A at 15; see also id. at 16 (“we need not consider whether or
not Kiuchi’s ‘user agent’ … discloses the claimed ‘client computer’” because
“Kiuchi’s client-side proxy (equated to the claimed ‘client computer’ by the
Examiner) … performs th[e] recited function”).
The Board also rejected VirnetX’s argument that the claimed VPN should be
limited to computers that directly communicate with each other. The Board first
asserted—without even acknowledging VirnetX’s disclaimer argument—that
“[c]laim 1 does not recite a ‘directly communicating’” limitation. Ex. A at 18.
The Board then stated that “[e]ven assuming that claim 1 recites this hypothetical
limitation,” it is met because “the client-side proxy and the server-side proxy
tion’ were required, Kiuchi’s client-side and server-side proxies do communicate

directly.” Ex. D at 4 (quoting Cisco’s Respondent Br. at 6) (internal quotation
marks omitted). As VirnetX explained, “this argument ignores the fact that the C-
HTTP client-side and server-side proxies do not disclose the claimed client
computer and target computer, respectively, and moreover these C-HTTP proxies
preclude the user agent and origin server (the true client and target) from directly
communicating with one another as in a network.” Ex. D at 4-5 (citations
omitted).
7
(equated by the Examiner to the client and target computers, respectively)”
communicate directly. Id.
The Board upheld the Examiner’s anticipation and obviousness rejections
based on Kiuchi. See Ex. A at 26-28. The Board then denied rehearing. See Ex. E
(Decision on Rehearing (Jan. 18, 2019) at 6). VirnetX timely appealed the Board’s
decisions to this Court on March 18, 2019.4
III. The Mangrove Inter Partes Review Proceedings
On April 14, 2015, while the proceedings below were pending, a hedge fund
named The Mangrove Partners Master Fund, Ltd. (“Mangrove”) filed an inter
partes review petition challenging claims 1, 3-4, 7-8, 10, and 12 of the ’135 patent.
See Mangrove Partners, 2019 WL 2912776, at *1. After the Board instituted
review, Apple Inc. (“Apple”) filed an inter partes review petition challenging the
same claims, and sought to be joined in the Mangrove proceeding—a request the
Board granted. Id.
The same two claim construction issues—whether the term “client
computer” should be defined as a “user’s computer,” and whether VirnetX
unambiguously disclaimed any VPN that did not require direct communication—
4
Prior to filing its appeal, on February 5, 2019, VirnetX requested that the Board
re-designate its decision denying rehearing as a new decision, because it contained
an entirely new analysis of secondary considerations of non-obviousness. The
Board dismissed that request on April 2, 2019 on the grounds that VirnetX’s
appeal divested the Board of jurisdiction. See Ex. F (Decision on Petition (Apr. 2,
2019)) at 2-3.
8
were at issue in the Mangrove proceedings. There, as here, “VirnetX argued that a
‘client computer’ should be construed as a ‘user’s computer’ and that Kiuchi’s
client-side proxy does not meet this limitation.” Id. at *7 (citing Appx1226-1227
in Appeal No. 17-1368). And VirnetX similarly argued that “the Board should
have construed a ‘VPN between the client computer and the target computer’ as
requiring direct communication between the client computer and target computer,”
and “premised [its argument] on prosecution-history disclaimer.” Id. at *8
(discussing Appx6228 in Appeal No. 17-1368).
In a decision authored by the same Administrative Patent Judge who
authored the decision in this case, the Board rejected both arguments. “The Board
… declined to construe ‘client computer,’” asserting instead that “Kiuchi’s client-
side proxy is a client even under VirnetX’s construction.” Mangrove Partners,
2019 WL 2912776, at *7; see also Ex. G (Final Written Decision (Sept. 9, 2016))
at 10-11 (Appx26-27 in Appeal No. 17-1368). The Board also refused to
recognize VirnetX’s prosecution-history disclaimer of any VPN that did not
require direct communication when construing the term “VPN.” See Ex. G at 15-
17 (Appx31-32 in Appeal No. 17-1368); Mangrove Partners, 2019 WL 2912776,
at *8-9. The Board then held that claims 1, 3-4, 7-8, 10, and 12 were anticipated
by Kiuchi and claim 8 was rendered obvious by Kiuchi in view of another
reference. Ex. G at 34 (Appx50 in Appeal No. 17-1368).
9
On appeal, this Court vacated the Board’s decision. It held that the Board
erred in construing the terms “client computer” and “VPN.” With respect to
“client computer,” the Court explained that the Board’s failure to consider
VirnetX’s proposed construction on the grounds that Kiuchi’s client-side proxy
was the claimed “client computer” was error:
To the extent the Board intended to rely exclusively on

Kiuchi’s client-side proxy for the claimed “client,” we
agree with VirnetX that the Board erred in failing to
resolve the claim construction dispute as to the meaning
of “client.” VirnetX’s proposed construction of a
“client” was a “user’s computer.” In its patent owner
response, it argued that “[t]here is no question that
Kiuchi’s client-side proxy is not a user’s computer.
Kiuchi does not disclose any user associated with the
client-side proxy … . In Kiuchi, the user’s computer is
the user agent, not the client-side proxy.”
Mangrove Partners, 2019 WL 2912776, at *7 (quoting Appx3041 in Appeal
No. 17-1368) (emphasis added).5 For that reason, the Court held, “[i]t was
improper” for the Board not to “analyz[e] the language of [VirnetX’s] proposed
construction, which the patent owner response makes clear does not cover the
client-side proxy.” Id.
The Court also held that the Board erred by refusing to give effect to
VirnetX’s disclaimer when construing the term “VPN”:
5
The Court’s discussion refers to “client” instead of “client computer” because the
Court first analyzed the issue with respect to an analogous term “client” in a
related patent. The Court adopted that reasoning with respect to the term “client
computer” in the ’135 patent. Mangrove Partners, 2019 WL 2912776, at *7.
10
The statements VirnetX made during reexamination

constitute disclaimer. VirnetX described a system in
which a client computer communicates with an
intermediate server via a singular, point-to-point
connection. That intermediate server then relays the data
to a target computer on the same private network on
which the server resides. VirnetX stated that because the
computers “do not communicate directly with each
other” and “[t]he client cannot open a connection with
the target itself,” the computers are not on the same VPN.
This clearly and unmistakably states that a “VPN
between the client computer and the target computer”
requires direct communication between the client and
target computers.
Id. at *9 (quoting Appx6228 in Appeal No. 17-1368) (emphasis added).6
Because the Board’s claim construction errors impacted both its anticipation
finding and obviousness determination with respect to Kiuchi, this Court vacated
the Board’s unpatentability findings. Id.7
6
The Court in Mangrove Partners quoted VirnetX’s Response to Office Action in
inter partes re-examination of the ’135 patent, Control No. 95/001,269. In this
appeal, VirnetX relied on the exact same disclaimer.
7
After the Board denied rehearing in the proceeding below, Apple (appellee in
Mangrove Partners) submitted a Rule 28(j) letter of supplemental authority,
arguing that the Board’s decision below supported the Board’s decision in
Mangrove Partners because it purportedly “reaffirm[ed] that there is no basis for
limiting the claimed ‘client computer’ to a ‘user’s computer,’ and no support for
narrowing the claims to include only ‘direct’ communication.” Ex. H (Appeal
No. 17-1368, Docket No. 100 (Feb. 5, 2019)) at 1. In response, VirnetX pointed
out that the decision below “suffers from many of the same flaws as the Board’s
decisions under review [in Mangrove Partners],” namely failing to properly
construe the terms “client” and “client computer,” and “failing to apply a
prosecution history disclaimer” to the term “VPN.” Ex. I (Appeal No. 17-1368,
Docket No. 101 (Feb. 22, 2019)) at 1.
11
ARGUMENT
This Court has observed that “[a] remand is generally required if the
intervening event may affect the validity of the agency action.” SKF, 254 F.3d at
1028 (citing Ethyl Corp. v. Browner, 989 F.2d 522, 524 (D.C. Cir. 1993)). For this
reason, there is “the tradition of allowing agencies to reconsider their actions where
events pending appeal draw their decision in question.” Ethyl Corp., 989 F.2d at
524. And this Court (and the Supreme Court) specifically identified “a new legal
decision” as one of the “intervening events outside of the agency’s control” that
warrants a remand of a pending appeal to the agency. SKF, 254 F.3d at 1028
(citing Lawrence v. Chater, 516 U.S. 163, 169 (1996) (per curiam)). As the
Supreme Court explained, a vacatur and remand are appropriate “[w]here
intervening developments … reveal a reasonable probability that the decision
below rests upon a premise that the lower court would reject if given the
opportunity for further consideration, and where it appears that such a
redetermination may determine the ultimate outcome of the litigation.” Lawrence,
516 U.S. at 167.
Here, these factors plainly warrant a remand to the Board for reconsideration
of its decision in light of this Court’s intervening decision in Mangrove Partners.
In Mangrove Partners, this Court considered the same claim construction
arguments with respect to the same claim terms that are in issue here, and vacated
12
the Board’s invalidity findings with respect to claims of the same patent against the
same reference. The Court held that the Board erred by failing to consider
VirnetX’s proposed construction of “client computer” (and by “rely[ing]
exclusively on Kiuchi’s client-side proxy for the claimed ‘client’”), Mangrove
Partners, 2019 WL 2912776, at *7, and by failing to recognize that “[t]he
statements VirnetX made during reexamination [of the ’135 patent] constitute
disclaimer” that “clearly and unmistakably states that a ‘VPN between the client
computer and the target computer’ requires direct communication between the
client and target computer,” id. at *9. These errors, the Court held, required a
vacatur of the Board’s anticipation findings and obviousness determinations. Id.
Mangrove Partners compels the same outcome here. The Board below
similarly failed to consider VirnetX’s proposed construction of the term “client
computer” (instead equating that term with Kiuchi’s client-side proxy), see Ex. A
at 15-16, and refused to recognize VirnetX’s clear and unambiguous prosecution-
history disclaimer when construing the term “VPN,” id. at 18. Applying the same
claim construction rejected in Mangrove Partners, the Board invalidated the same
claims of the same ’135 patent (or claims containing an identical limitation) as
anticipated or rendered obvious by Kiuchi. The Board’s repetition of the same
error warrants remand.
The positions taken by opposing parties bolster the conclusion that the same
13
error infects the Board’s decisions. In Mangrove Partners, the party challenging
VirnetX’s patents, Apple, recognized that the same issues were presented in these
two cases. Apple invoked the Board’s decision here as a reason to affirm in
Mangrove Partners. See Ex. H at 1; supra at 11 n.7.
At a minimum, the Court’s decision in Mangrove Partners requires a
vacatur of the Board’s decision here and a remand to the Board for reconsideration
of its anticipation and obviousness findings.8 That is the practice this Court
follows when its intervening decision—particularly on claim construction—calls
into question the Board’s unpatentability rejections. See, e.g., In re Apple, 562 F.
App’x at 983-84 (remanding an appeal to the Board “to reconsider its decision in
light of th[e Court’s] construction” of a disputed claim term in an intervening
decision); In re Rambus, 560 F. App’x at 1005-06 (remanding an appeal to the
Board “to reconsider its decision in light of this court’s decision” in an intervening
case); In re Odetics, Inc., 129 F.3d 133, 1997 WL 632791, at *1 (Fed. Cir.
8
The claims rejected below overlap with those at issue in Mangrove Partners. In
both proceedings, the Board found claims 1-4 and 7 to be anticipated by Kiuchi,
and claim 8 rendered obvious by Kiuchi (together with another reference).
Compare Ex. A at 28, with 2019 WL 2912776, at *1. As to the remaining claims,
claim 9 depends from claim 1; claims 13 and 18 are separate independent claims
but contain the same “client computer” and “VPN” limitations, and claim 17
depends from claim 13. See Ex. B (the ’135 patent) (47:65-48:2; 48:29-46; 48:59-
64) (claims 9, 13, and 17); id. (Inter Partes Reexamination Certificate at 1:21-
2:21) (claim 18). Thus, the Board’s invalidity findings as to all claims at issue will
have to be vacated.
14
Sept. 16, 1997) (table) (same).9 The Court should follow its established practice
here.
A remand would serve judicial efficiency, conserve the Patent Office’s and
the parties’ resources, and afford the agency an opportunity to reconsider its
erroneous decision with the benefit of this Court’s guidance. Where an intervening
court ruling affects the agency’s decision (as it does here), courts “commonly
grant” motions to remand, “preferring to allow agencies to cure their own mistakes
rather than wasting the courts’ and the parties’ resources.” Ethyl Corp., 989 F.2d
at 524. There is no reason for the parties to spend time and resources briefing this
appeal, and for this Court to hold oral argument, deliberate, and issue an opinion if
the inevitable result is a vacatur of the Board’s decision and remand for
reconsideration of the anticipation and obviousness rulings in light of what the
Court has already laid out in Mangrove Partners. A remand would eliminate
unnecessary review of a Board decision that does not account for this Court’s
intervening guidance, thereby preventing needless expenditure of additional
9
In fact, this Court remanded appeals to the Board in situations where the
relationship between this Court’s intervening decision and Board’s vacated
decision was more attenuated than here. In Rambus, the Court granted an opposed
motion to remand where the patents at issue were not the same, but “share[d] the
same specification,” and “the rejections in the two cases [we]re not the same”;
nevertheless, “there [we]re similarities in the two cases indicating that review of
this Court’s [intervening] decision would be helpful and important to the Board’s
thorough analysis in th[e remanded] case.” PTO’s Motion To Remand, In re
Rambus, Inc., No. 13-1623, Docket No. 20 (Dec. 20, 2013) at 2.
15
resources. See In re Gould, 673 F.2d 1385, 1386 (C.C.P.A. 1982).
STAY OF BRIEFING
The Court’s rules provide that “[w]hen a motion is filed that, if granted,
would terminate the appeal, the time to serve and file the next brief due is
suspended.” Fed. Cir. R. 31(c). This motion would terminate the appeal because it
would be remanded to the Board, and so the time for VirnetX’s opening brief is
suspended.
In an abundance of caution, however, VirnetX requests that this Court stay
the briefing in this appeal while it considers the motion to remand. As explained
above, a remand would serve the interests of reasoned decision-making by the
Board, ensure consistent application of this Court’s decisions, and promote judicial
efficiency. A stay of the briefing to enable the Court to consider this motion is
appropriate.
CONCLUSION
For the reasons stated above, this Court should remand this appeal to the
Board for reconsideration in light of the Court’s decision in VirnetX Inc. v. The
Mangrove Partners Master Fund, Ltd., No. 17-1368, 2019 WL 2912776 (Fed. Cir.
July 8, 2019).
16
Date: August 23, 2019 Respectfully submitted,
/s/ Naveen Modi

Naveen Modi
Joseph E. Palys
Stephen B. Kinnaird
Igor V. Timofeyev
Daniel Zeilberger
Tel.: (202) 551-1700
Fax: (202) 551-1705
Counsel for Appellant VirnetX Inc.
17
CERTIFICATE OF INTEREST
Counsel for Appellant VirnetX Inc. certifies the following:
1. Full name of party 2. Name of real party in 3. Parent corporations and

represented by me interest represented by me publicly held companies
that own 10% or more of
stock in the party
VirnetX Inc. VirnetX Inc. VirnetX Inc. is a wholly

owned subsidiary of
VirnetX Holding
Corporation.
4. The names of all law firms and the partners or associates that appeared for
the party now represented by me in the agency or are expected to appear in this
court (and who have not or will not enter an appearance in this case) are:
None.
5. The title and number of any case known to counsel to be pending in this or
any other court or agency that will directly affect or be directly affected by this
court’s decision in the pending appeal. See Fed. Cir. R. 47.4(a)(5) and 47.5(b).
VirnetX Inc. v. The Mangrove Partners Master Fund, Ltd., Apple Inc.,
No. 17-1368 (consolidated with VirnetX Inc. v. The Mangrove Partners
Master Fund, Ltd., Apple Inc., Black Swamp IP, LLC, No. 17-1383);
VirnetX Inc., Leidos, Inc. v. Cisco Systems, Inc., Apple Inc.,

No. 2018-1197 (Fed. Cir.);
VirnetX, Inc. v. Apple Inc., No. 2019-1050 (Fed. Cir.);
VirnetX Inc. v. Apple Inc., No. 6:13-cv-00211 (E.D. Tex.);
Inter Partes Reexamination, Control No. 95/001,682.
Dated: August 23, 2019 /s/ Naveen Modi

Naveen Modi
Counsel for Appellant VirnetX Inc.

CERTIFICATE OF COMPLIANCE
WITH TYPE-VOLUME LIMITATION, TYPEFACE REQUIREMENTS,
AND TYPE STYLE REQUIREMENTS
Pursuant to Federal Rule of Appellate Procedure 27(d) and 32(g), I certify
the following:
1. The attached motion complies with the type-volume limitation of
Federal Rule of Appellate Procedure 27(d)(2)(A). The motion contains 3,972
words (according to the Microsoft Word 2010 count function), excluding the
accompanying documents authorized by Federal Rule of Appellate Procedure
27(a)(2)(B) and items excluded by Federal Rules of Appellate Procedure 27(d)(2)
and 32(f).
2. The attached motion complies with the typeface requirements of
Federal Rule of Appellate Procedure 32(a)(5) and the type style requirements of
Federal Rule of Appellate Procedure 32(a)(6). The motion has been prepared in a
proportionally spaced typeface using Microsoft Word 2010 in 14-point Times New
Roman type style.
Date: August 23, 2019 /s/ Naveen Modi

Naveen Modi
Counsel for Appellant
CERTIFICATE OF SERVICE
I, Naveen Modi, hereby certify that on August 23, 2019, the foregoing
motion was filed using the Court’s CM/ECF system and a copy served on the
parties’ counsel of record via ECF.
Date: August 23, 2019 BY: /s/ Naveen Modi

Naveen Modi
Paul Hastings LLP
Tel.: (202) 551-1700
Fax: (202) 551-1705

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Case: 19-1671 Document: 19-1 Page: 1 Filed: 08/23/2019

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

CISCO SYSTEMS, INC.,

Appeal from the United States Patent and Trademark Office,

APPELLANT VIRNETX INC.’S MOTION TO REMAND,

August 23, 2019 Counsel for Appellant VirnetX, Inc.

TABLE OF AUTHORITIES .................................................................................... ii

Ethyl Corp. v. Browner,

SKF USA Inc. v. United States,

VirnetX Inc. v. The Mangrove Partners Master Fund, Ltd.,

Fed. R. App. P. 28(j) ................................................................................................ 11

Appellant VirnetX Inc. (“VirnetX”) respectfully requests that this Court

asserted Kiuchi reference by committing two critical claim construction errors:

the Board refused to apply VirnetX’s unambiguous prosecution-history disclaimer

erred in refusing to consider VirnetX’s proposed construction of “client computer.”

in light of the proper construction.” Id. at *9.

where an intervening decision of the Court—particularly on claim construction—

“to reconsider its decision in light of th[e Court’s] construction” of a disputed

claim term in an intervening decision); In re Rambus, Inc., 560 F. App’x 1005,

follow that practice here.

while it considers the motion to remand.

I. The ’135 Patent and the Asserted Reference

Ex. A (Decision on Appeal (Feb. 6, 2018)) at 2-3; Mangrove Partners, 2019 WL

method of establishing secure communications over the Internet. Mangrove

Partners, 2019 WL 2912776, at *4; Ex. A at 2. Specifically, the ’135 patent

“address[es] problems related to communications involving conventional domain

name servers (‘DNS’).” Mangrove Partners, 2019 WL 2912776, at *4.

Conventionally, when a user seeks to connect to another device, he “enters the

with the web site.” Id. (citations omitted).

The resulting connection, however, is vulnerable to interception by

requested. If so, the DNS proxy transmits a message to a gatekeeper requesting

the secure site.” Id. (citations omitted).

Claim 1 of the ’135 patent is representative, and recites:

A method of transparently creating a virtual private network (VPN)

(1) generating from the client computer a Domain Name Service

(2) determining whether the DNS request transmitted in step (1) is

(3) in response to determining that the DNS request in step (2) is

Mangrove Partners, 2019 WL 2912776, at *7.1

including the “Kiuchi” reference, a 1996 publication by Takahiro Kiuchi and

Shigekoto Kaihara, C-HTTP—The Development of a Secure, Closed HTTP-Based

Network on the Internet, Proceedings of the Symposium on Network and

“discloses using a closed HTTP-based network (‘C-HTTP’) to provide secure

communications between a closed group of institutions on the Internet.”

Mangrove Partners, 2019 WL 2912776, at *4. In contrast to VirnetX’s invention,

C-HTTP communication is a multi-step process that involves five different

components: “a user agent (also referred to as a client), a client-side proxy, a C-

HTTP name server, a server-side proxy, and an origin server.” Id.

II. The Inter Partes Reexamination Proceedings Under Review

On July 8, 2011, Cisco requested inter partes reexamination of claims 1-18

over several asserted references, including Kiuchi. Id. at 4. VirnetX appealed

obvious by Kiuchi combined with other references. Id.2

does not disclose either limitation, properly construed.

mean “a ‘user’s computer.’” Id. at 15 (quoting Ex. C (VirnetX’s Appeal Br.

end-user. Ex. A at 15; Ex. C at 11-12; Ex. D at 3-4.

During the prosecution of the ’135 patent VirnetX “unambiguously disclaimed

at 4; Ex. A at 18. As VirnetX noted, in a prior district court proceeding, “Cisco

is a ‘clear mandate to the Patent Office that computers in a “virtual private

communication between the computers, there is no virtual private network.’”

Ex. D at 4 (citations omitted).3

assuming that claim 1 recites a ‘user’s computer’ (instead of a ‘client computer,’

request … [VirnetX] does not demonstrate persuasively that the hypothetical

“Kiuchi’s client-side proxy (equated to the claimed ‘client computer’ by the

Examiner) … performs th[e] recited function”).