[00:00:00] Speaker 02:
The first argued case this morning is number 19-1043, Bernat X, Incorporated against Cisco Systems.

[00:00:10] Speaker 02:
Mr. Kennard.

[00:00:14] Speaker 03:
May it please the court.

[00:00:16] Speaker 03:
This appeal challenges the PTAB's failure to apply the proper construction of the claim term, virtual private network communication link.

[00:00:27] Speaker 02:
Let me ask you right away what's troubling me.

[00:00:30] Speaker 02:
Apparently this question of the scope has been present throughout.

[00:00:36] Speaker 02:
Was there any attempt made to narrow the claim to be limited to what you are telling us is the correct construction?

[00:00:45] Speaker 03:
Yes, I mean there was a disclaimer and I should point out... Not a disclaimer, by amendment.

[00:00:50] Speaker 03:
No amendment, no, Your Honor.

[00:00:52] Speaker 02:
Well, then what's all the fuss about?

[00:00:54] Speaker 02:
That could very easily have been remedied the entire problem, couldn't it?

[00:00:59] Speaker 03:
Well, even if there's no amendment, this Court has held that you still have to give effect to a prosecution disclaimer.

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And I would point out that Vernettix... You're relying on the disclaimer.

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We're relying on the disclaimer.

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And Vernettix made this disclaimer twice, once with regard to the claim term VPN in one proceeding,

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but also with regard to the very same claim term at issue here, virtual private network communication link.

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That's at appendix 4518 to 24.

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So the claimed link must be a link in a virtual private network, and the communications in that network must be direct.

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Because the board never applied the proper construction of VPN to the network disclosed in Kyuchi,

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this case must be remanded.

[00:01:46] Speaker 01:
And there is no... Doesn't QG disclose direct connection?

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And if the claim includes direct connection, irrespective of disclaimer of non-direct, then the claim is anticipated by QG.

[00:02:01] Speaker 03:
No, Your Honor, because it's the network

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that must have direct communication.

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And there's no dispute as to what the claim network is in Kyuuchi, the claim VPN.

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As the examiner... What was the reason?

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And your friend pointed out that there was no proposed amendment.

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that there was no attempt to narrow the claim to state what you say is the correct construction.

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What was the reason for declining or omitting to solve the problem in such a simple manner?

[00:02:37] Speaker 03:
Well, Your Honor, I don't know, but this Court has already held in mangrove partners that there's still a disclaimer even in the absence of amendment.

[00:02:45] Speaker 03:
But I wanted to get back to the point about what is the network of the alleged VPN in Kiuchi.

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And the examiner stated in the right of appeal notice, and this is at appendix 1312, that, quote, the clients and servers form a closed CHTTP-based virtual network.

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Thus, the Kiuchi network, as opposed to the proxy-to-proxy link, comprises the user agent, the proxies, and the origin server

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that holds the patient records.

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And that's necessary because the transfer of patient records cannot occur without the participation of each element.

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And Kiuchi, in Step 7 and 8, for example, in Appendix 2947 says, the server-side proxy forwards the request to the origin server.

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The origin server responds to the user requests, sends it back through the proxies, and the client-side proxy

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decrypts the message and sends it to the user agent.

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So that is the network.

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And again, QG actually specifically describes the host, which is the origin server, Appendix 2946, as being in the closed network.

[00:04:00] Speaker 04:
Let me ask you one question, please.

[00:04:02] Speaker 04:
In Kiuchi, we have a user agent, a client-side proxy, a server-side proxy, and then an origin server.

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That's kind of the chain.

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The client-side proxy and the server-side proxy, are those computers?

[00:04:18] Speaker 04:
They are.

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They are computers.

[00:04:21] Speaker 04:
Yes.

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Correct me if I get this wrong.

[00:04:25] Speaker 04:
In the 759 patent, you have a method for establishing a circuit

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a secure communication link between a first computer and a second computer over a computer network.

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Now the language there is broader than, with respect to computers, than I think it was in the case of the 135 Pat and Mangrove.

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There you had a client and a target computer.

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So why don't you have here a direct communication between

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computers, namely the client-side proxy and the server-side proxy.

[00:05:02] Speaker 03:
Well, Your Honor, it doesn't matter if any particular link is direct, because the claim requires that the link between the first and second computer be a virtual private network communication link.

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So the antecedent question is, is it a link in a virtual private network?

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And to determine that, you have to apply the disclaimer to the network in Kiuchi.

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That's what the board didn't do.

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And from the outset, hernetics has challenged Cisco's and the examiner's reliance upon Kiyuchi's proxy to proxy link.

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Because it is not part of a VPN, and indeed prevents the formation of a VPN.

[00:05:40] Speaker 04:
Why is that connection not part of a VPN?

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The client-side proxy to the server-side proxy?

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Because the network as a whole does not have direct communications.

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And that's the key question.

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That's why the disclaimer has to be applied.

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And that's what we argued.

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We argued at appendix 1444 that Kiyuchi's proxies prevent the creation of a VPN because they disallow

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direct communication between a user at one hospital and the server at which the resources are located at another.

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And the board did not grapple with this issue, because at Appendix 21, it found that a VPN communication link is not limited to computing systems that directly address each other.

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And Kiuchi would satisfy the limitation, even if the communications are indirect.

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So it never applied the proper construction.

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we should do in this case what was done in mangrove namely send it back to the board vacate and say you've got the claim construction wrong a direct communication is required and and and send it back to uh... to the board that's exactly right and because the antecedent they have to find that uh... hugely discloses a VPN with direct communications which is the antecedent question to finding that any link

[00:07:03] Speaker 03:
in Kiyuchi is a VPN communication.

[00:07:07] Speaker 04:
Can you say there's a fact dispute now as to what the nature of Kiyuchi is?

[00:07:13] Speaker 04:
Well, I think that there is a factual.

[00:07:16] Speaker 04:
We can't assume for the moment we were to agree with you and follow mangrove and say, yes, the claim construction was erroneous, even though the 135 is not the 759.

[00:07:28] Speaker 04:
You're saying we can't decide the issue of whether there's anticipation or obviousness.

[00:07:33] Speaker 03:
I think that's right.

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I mean, there has been no finding about whether the network in Kyuuchi is a VPN with direct communication.

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So that is the necessary thing that has to be found.

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I mean, the court has previously found it in upholding a jury verdict because Kyuuchi does not disclose.

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The jury verdict was sustained because there was evidence that Kyuuchi

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does not allow direct communication because it sets up and terminates the connection.

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So you can have direct communication through routers and firewalls as long as you're not terminating the connection, as long as there's direct addressability.

[00:08:09] Speaker 04:
But you would agree there is, quote, direct communication, close quote, between the client side proxy and the server side proxy in Kiyuchi.

[00:08:20] Speaker 03:
Yes, I would agree with that, but I think it's irrelevant and the board didn't find that.

[00:08:24] Speaker 03:
Because the directness has to be a property of the VPN.

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And so for a link to be part of a VPN, the network has to have direct communication.

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Again, the examiner to find the network is between the clients and the servers.

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And so I think that's the question that has to be decided here.

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So I think the case does need to go back and there's no mootness because we have challenged throughout this finding that the VPN communication link is simply the link between the proxies based on the fact that it's not a link within a VPN.

[00:09:08] Speaker 03:
So there's no mootness because you have to decide

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The claim construction issue over the board has to, you have to decide the claim construction issue, and the board has to apply it as a matter of fact.

[00:09:20] Speaker 03:
If there are no further questions, I'll save my time for a vote.

[00:09:23] Speaker 02:
OK.

[00:09:23] Speaker 02:
Thank you.

[00:09:28] Speaker 00:
Mr. Emke.

[00:09:29] Speaker 00:
Thank you, Your Honors.

[00:09:30] Speaker 00:
May it please the court?

[00:09:31] Speaker 00:
I'd like to start by just responding to counsel's argument regarding the link with respect to the virtual private network.

[00:09:38] Speaker 00:
And go directly to the claim.

[00:09:40] Speaker 00:
Let's start with the claim language.

[00:09:42] Speaker 00:
The claim language when referencing the virtual private network communication link is saying it's over the computer network.

[00:09:49] Speaker 00:
So the computer network that we're looking at with respect to this link is the generic the computer network.

[00:09:56] Speaker 00:
There's not this requirement within the claim that we identify and find a virtual private network.

[00:10:03] Speaker 00:
The claim is requiring that we look for a link over a computer network.

[00:10:07] Speaker 00:
not this special virtual private network communication link where we're going to import the disclaimer from Mangrove, that would actually break this claim if we import the construction from Mangrove.

[00:10:18] Speaker 00:
This claim, as we look at this claim, is establishing a link.

[00:10:21] Speaker 00:
We're creating a new link.

[00:10:23] Speaker 00:
And under their theory, this new link would be a new link within a virtual private network.

[00:10:29] Speaker 04:
So Mr. Eppie, you're saying that, assume for the moment that the

[00:10:33] Speaker 04:
board aired in the claim construction, that it aired and that the communication link does have to be direct.

[00:10:41] Speaker 04:
You're saying it's met here because Kiuchi shows direct communication, as I think Mr. Kinnaird agreed, between the client side and server side proxies.

[00:10:56] Speaker 00:
That is correct, Your Honor.

[00:10:57] Speaker 00:
The link that we're looking at here, the virtual private network communication link over the computer network,

[00:11:02] Speaker 00:
If we're somehow importing... What's your argument again?

[00:11:05] Speaker 04:
He said, yes, that's true.

[00:11:07] Speaker 04:
If you could just repeat what you said a minute ago, it would be helpful to me.

[00:11:10] Speaker 04:
He said, yes, that's true.

[00:11:12] Speaker 04:
You have that direct communication between the proxies, but that doesn't solve the problem because it has to be over a computer network, I think is what he was saying.

[00:11:21] Speaker 00:
Correct.

[00:11:21] Speaker 00:
Under the theory that he's espousing, we have to identify a separate virtual private network.

[00:11:26] Speaker 00:
We have this claimed virtual private network communication link.

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which we've identified and the board has identified as being the client-side, server-side proxies.

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And there's directness there.

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Their argument is we have to look at some other network and identify that other network.

[00:11:42] Speaker 00:
And then within that network, we have to somehow quantify and say that that qualifies as a virtual private network applying the mangrove standard.

[00:11:51] Speaker 00:
But this claim language doesn't say that.

[00:11:53] Speaker 00:
This claim language does not have us looking for this separate virtual private network.

[00:11:57] Speaker 00:
This language is very clear.

[00:11:59] Speaker 00:
It's a link over.

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a computer network.

[00:12:01] Speaker 00:
It's not a link over a virtual private network.

[00:12:04] Speaker 00:
And we think that's one of the primary distinctions.

[00:12:07] Speaker 02:
Well, his position, if I understand it, is that the claim language doesn't have to say it because there's a prosecution disclaimer that says it.

[00:12:16] Speaker 00:
Their argument is there's a prosecution disclaimer with respect to a virtual private network.

[00:12:20] Speaker 00:
That's a different claim term than what's recited here.

[00:12:23] Speaker 00:
We have a virtual private network communication link.

[00:12:25] Speaker 00:
We have a link versus a network.

[00:12:28] Speaker 00:
And our position is, because it's a different claim term, it does not automatically follow the disclaimer with respect to a network, applies the exact same way with the same disclaimer of scope with respect to a link that's a component of that network.

[00:12:43] Speaker 00:
There's a different claim term, and this is going to have a different scope.

[00:12:46] Speaker 00:
And we can't just automatically assume, because there's some commonality of words,

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but that disclaimer would apply to a different claim term in a different path.

[00:12:54] Speaker 01:
What about Kiyuchi?

[00:12:56] Speaker 00:
With respect to Kiyuchi, Your Honor, it's very clear we have a client-side proxy and a server-side proxy.

[00:13:01] Speaker 00:
Those are the first and second computers as recited in the claim.

[00:13:04] Speaker 00:
We then look to see what type of link there is between that client-side proxy and server-side proxy as the first and second computers.

[00:13:11] Speaker 00:
The Board is very clear the client-side proxy is talking to the server-side proxy

[00:13:17] Speaker 00:
The server-side proxy is talking to the client-side proxy.

[00:13:21] Speaker 00:
Patent owner multiple times characterized that communication as a point-to-point communication.

[00:13:26] Speaker 00:
This point is talking to that point.

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It's a direct communication.

[00:13:30] Speaker 00:
They further argued in their briefing that that's not a direct connection.

[00:13:34] Speaker 00:
They argued that it's an indirect connection.

[00:13:36] Speaker 00:
The board addressed that and rejected that argument.

[00:13:40] Speaker 00:
We clearly have substantial evidence and we have fact findings that the client-side proxy and the server-side proxy

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are their first and second computers respectively.

[00:13:47] Speaker 00:
They talk directly.

[00:13:49] Speaker 00:
And that's what the claim would require even under their proposed construction.

[00:13:58] Speaker 00:
If there are any further questions, I think your questions have raised most of the issues.

[00:14:03] Speaker 00:
I'll exceed the rest of my time.

[00:14:07] Speaker 02:
Thank you.

[00:14:07] Speaker 02:
Thank you.

[00:14:14] Speaker 03:
Your Honor, I'd like to turn to the claims, because I think my colleague is confusing two different terms.

[00:14:22] Speaker 03:
There is, if you look at claim one, and this is appendix 165, there is the term used computer network, a method for establishing a secure communication link between a first computer and a second computer over a computer network.

[00:14:38] Speaker 03:
That's referring to the public network, can be the internet, for example.

[00:14:41] Speaker 03:
That's not what we're talking about.

[00:14:43] Speaker 03:
We're talking about at the very last clause in that claim where the secure communication link being a virtual private network communication link over the computer network.

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So the virtual private network is on the larger computer network.

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It's separate.

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And the board found at appendix 20 and 28 that the virtual private network is separate from the link.

[00:15:09] Speaker 03:
And in fact, if you look at the dependent claims here, 4, 5, 18, 20, they all recite a virtual private network.

[00:15:19] Speaker 03:
So when you use the same term, virtual private network communication link, that's referring to the same virtual private network.

[00:15:27] Speaker 03:
So you have to identify what is the virtual private network in Kyuuchi and

[00:15:34] Speaker 03:
determine whether this is a link in a virtual private network.

[00:15:38] Speaker 01:
You're saying that's the secure communication link.

[00:15:42] Speaker 01:
But as the first line of the claim, it's a secure communication link between a first computer and a second computer over a computer network.

[00:15:52] Speaker 03:
That's the internet.

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That's the public network.

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Computer network means that.

[00:15:56] Speaker 03:
But then they define what is a secure communication link.

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And they define it as a virtual private network communication link over the computer network.

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So you have to say, what is the link for it to be a virtual private network communication link?

[00:16:15] Speaker 03:
It must be a link in a virtual private network formed on the public computer network.

[00:16:21] Speaker 04:
You're saying, Mr. Kanata, we'll make sure I understand you,

[00:16:23] Speaker 04:
You would say, OK, yes, you do have a direct communication between the client side proxy and the server side proxy, but that's not a direct communication in the sense of being a virtual private network communication.

[00:16:38] Speaker 04:
That's your argument as to why Kyuchi

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showing that direct communication between the client and server side proxy isn't enough.

[00:16:48] Speaker 04:
Is that correct?

[00:16:49] Speaker 03:
Exactly.

[00:16:49] Speaker 03:
So you have to show that it's a link in a virtual private network, which means that the network has to have direct communication.

[00:16:58] Speaker 03:
The examiner defined the network as between.

[00:17:01] Speaker 04:
But what about getting back to, I think, what maybe Judge Lurie was touching on.

[00:17:05] Speaker 04:
The first, I guess, words of that clause say, establishing the secure communication link

[00:17:12] Speaker 04:
between the first computer and the second computer over a computer network based on the applied goes on.

[00:17:22] Speaker 04:
Doesn't that, aren't you establishing a secure communication network between the, in QG, between the client side proxy and the server side proxy?

[00:17:31] Speaker 03:
Well, no, your honor, I don't think you can say that, you know, the link between the user agent and the client side proxy is one network and the client side to the server side proxy is another network and the server side proxy the origin.

[00:17:42] Speaker 03:
There's a network that allows the communication of patient records.

[00:17:46] Speaker 03:
The examiner said, that is the VPN.

[00:17:49] Speaker 03:
The VPN goes from the clients to the servers.

[00:17:52] Speaker 03:
So with that finding, they then have to apply the disclaimer and the proper construction of a VPN.

[00:17:59] Speaker 03:
So if they're going to rely on that link between the proxy and proxy, they have to show it's a link within a VPN.

[00:18:05] Speaker 04:
Of course, in Mangrove, it did involve the client computer and the target computer.

[00:18:12] Speaker 04:
language like that in the 135 patent?

[00:18:14] Speaker 04:
That's right.

[00:18:15] Speaker 03:
Yeah.

[00:18:15] Speaker 03:
And there the term is VPN between it.

[00:18:18] Speaker 03:
So here we have a communication link.

[00:18:20] Speaker 03:
So regardless of which first computer and second computer, what link you're looking at, it has to be a VPN communication link, i.e.

[00:18:28] Speaker 03:
a link within a VPN.

[00:18:30] Speaker 03:
And Your Honor, I was reminded by my colleagues in terms of why there was no amendment to the term.

[00:18:36] Speaker 03:
The patent had been inserted in litigation, so there was no amendment.

[00:18:40] Speaker 03:
But again, mangrove partners makes clear you don't need amendment.

[00:18:44] Speaker 03:
We did not, by the way, argue that the link between the proxies was indirect.

[00:18:49] Speaker 03:
We've always argued that it prevents the formation of a VPN because it prevents direct communication.

[00:18:57] Speaker 03:
That's an appendix of 1444.

[00:19:00] Speaker 03:
So we think what the board needs to do, they should go back with a directive to apply the disclaimer to the term VPN and apply that to the network disclosing key cheat.

[00:19:11] Speaker 03:
and then make a determination of whether or not that meets the claims.

[00:19:15] Speaker 02:
Just to be clear, say there was no amendment.

[00:19:19] Speaker 02:
That's clear.

[00:19:20] Speaker 02:
Was there a petition for amendment?

[00:19:25] Speaker 03:
I don't believe so, no.

[00:19:27] Speaker 03:
Okay.

[00:19:27] Speaker 03:
But again, there does not have to be an amendment.

[00:19:31] Speaker 03:
Thank you very much, Your Honor.

[00:19:32] Speaker 02:
Okay.

[00:19:32] Speaker 02:
Thank you.

[00:19:33] Speaker 02:
Thank you both.

[00:19:34] Speaker 02:
The case is taken under submission.