`
`Paper No.
`Filed: September 27, 2013
`
`
`Filed on behalf of: VirnetX Inc.
`By:
`Joseph E. Palys
`
`Naveen Modi
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
`Telephone: 571-203-2700
`Facsimile: 202-408-4400
`E-mail: joseph.palys@finnegan.com
`
` naveen.modi@finnegan.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`NEW BAY CAPITAL, LLC
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2013-00376
`Patent 7,490,151
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 7,490,151
`
`
`
`
`
`
`
`

`

`Case No. IPR2013-00376
`
`Table of Contents
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review ......................................................................................... 4
`
`A.
`
`The Petition Fails to Comply with 37 C.F.R. § 42.104(b)(4) ............... 5
`
`1.
`
`2.
`
`New Bay Does Not Apply Each of Its Proposed
`Constructions .............................................................................. 5
`
`The Proposed Grounds Rely Heavily on Expert
`Testimony Rather Than the Cited References ............................ 6
`
`B.
`
`The Board Should Not Institute Based on the Petition’s
`Redundant Grounds ............................................................................... 9
`
`1.
`
`2.
`
`Grounds 1 and 3 and Grounds 2 and 4 Are Horizontally
`Redundant .................................................................................11
`
`Grounds 1, 3, and 5 Are Vertically Redundant and
`Grounds 2, 4, and 6 Are Vertically Redundant ........................12
`
`III. The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected .........................................................................................................13
`
`A. Overview of the ’151 Patent ................................................................14
`
`B.
`
`C.
`
`D.
`
`E.
`
`“DNS Request” (Claims 1 and 13) ......................................................16
`
`“Domain Name” (Construe as Part of “Domain Name Server
`(DNS) Proxy Module” or “Domain Name Server (DNS)
`Module”) .............................................................................................17
`
`“Domain Name Server” (Construe as Part of “Domain Name
`Server (DNS) Proxy Module” or “Domain Name Server (DNS)
`Module”) .............................................................................................19
`
`“DNS or Domain Name Service” (Construe “DNS” in the
`Context of Other Terms Containing “DNS”) ......................................22
`
`F.
`
`“Domain Name Server (DNS) Proxy Module” (Claim 1) ..................23
`
`
`
`i
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`Case No. IPR2013-00376
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`G.
`
`“Domain Name Server (DNS) Module” (Claim 13) ...........................25
`
`H.
`
`“Secure Server” (Claims 1 and 13) .....................................................27
`
`I.
`
`“Automatically Initiating an Encrypted Channel” /
`“Automatically Creating a Secure Channel” (Claims 1 and 13) .........29
`
`J.
`
`“Client” (Claims 1 and 13) ..................................................................30
`
`K.
`
`“Determining” (Claims 1 and 13) .......................................................33
`
`L.
`
`M.
`
`“Forwarding the DNS Request to a DNS Function” (Claims 1
`and 13) .................................................................................................34
`
`“Intercepts DNS Requests” / “Intercepted DNS Request”
`(Claims 1 and 13) ................................................................................35
`
`IV.
`
`If Trial Is Instituted, VirnetX Requests an 18-Month Schedule ...................36
`
`V.
`
`Conclusion .....................................................................................................37
`
`
`
`
`
`
`
`ii
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`
`
`FEDERAL CASES
`
`Table of Authorities
`
`Case No. IPR2013-00376
`
`Page(s)
`
`Baldwin Graphic Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008) .......................................................................... 19
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001 (Jan. 9, 2013) Paper No. 15 ................................................ 13-14
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) ............................................................................ 13
`
`LaRose Indus., LLC v. Capriola Corp.,
`IPR2013-00120 (July 22, 2013) Paper No. 20 ................................................... 10
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003 (Oct. 25, 2012) Paper No. 7 ............................................passim
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093 (Apr. 29, 2013) Paper No. 28 ................................................... 14
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .................................................... 13, 21
`
`FEDERAL STATUTES
`
`35 U.S.C. § 311 .......................................................................................................... 3
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 316(a)(1) ............................................................................................... 37
`
`FEDERAL REGULATIONS
`
`37 C.F.R. § 42.100(b) .............................................................................................. 13
`
`37 C.F.R. § 42.100(c) ............................................................................................... 37
`
`37 C.F.R. § 42.104(b)(4) ................................................................................... 4, 5, 6
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`iii
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`Case No. IPR2013-00376
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`I.
`
`Introduction
`
`Patent Owner VirnetX Inc. (“VirnetX” or “Patent Owner”) respectfully
`
`submits this Preliminary Response in accordance with 35 U.S.C. § 313 and
`
`37 C.F.R. § 42.107, responding to the Petition for Inter Partes Review (Paper
`
`No. 4, the “Petition”) filed by New Bay Capital, LLC (“New Bay” or “Petitioner”).
`
`This Petition is one of eleven inter partes reviews requested recently by
`
`Apple Inc. (“Apple”) and New Bay against VirnetX’s patents. Two of the
`
`inter partes review petitions challenge VirnetX’s U.S. Patent No. 7,490,151
`
`(“the ’151 patent”). The ’151 patent is no stranger to validity challenges, as it has
`
`been tested numerous times in district court and in the Office.
`
`New Bay’s Petition marks the fifth challenge to the validity of the
`
`’151 patent. Apple raised the first challenge to the ’151 patent in district court. It
`
`failed. The case was tried before a jury, which upheld the validity of the asserted
`
`’151 patent claims. (Ex. 2001, Jury Verdict Form Against Apple in VirnetX, Inc. v.
`
`Apple Inc., Case No. 6:10-CV-417 (E.D. Tex. Nov. 6, 2012) (“the ’417
`
`Litigation”). The court later entered judgment upholding the validity of the
`
`’151 patent. (Ex. 2002, Final Judgment Against Apple in the ’417 Litigation
`
`(E.D. Tex. Feb. 28, 2013).)
`
`
`
`1
`
`

`

`
`
`In the second and third challenges, Apple and Cisco each requested
`
`inter partes reexamination of the ’151 patent (Control Nos. 95/001,697 and
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`Case No. IPR2013-00376
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`95/001,714). Those reexaminations, later merged by the Office, are ongoing.
`
`Apple recently sought the fourth challenge to the ’151 patent by an
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`inter partes review petition. (See Case No. IPR2013-00354, “the ’354 Petition.”)
`
`That proceeding is ongoing but not instituted.1
`
`New Bay’s Petition represents the fifth challenge to the ’151 patent, and is
`
`now one of the four pending post-grant challenges before the Office concerning the
`
`’151 patent (two reexaminations and two inter partes review petitions). These
`
`proceedings are largely duplicative of one another, and instituting New Bay’s
`
`Petition will only serve to duplicate and complicate efforts already undertaken in
`
`litigation and in reexamination of the ’151 patent.
`
`New Bay claims that “[t]he present Petition advances new arguments and
`
`evidence (not presented in the litigations or pending reexaminations) for
`
`invalidating claims 1 and 13 over Kiuchi2 and Dalton3 in view of Kiuchi.”
`
`1 New Bay’s Petition should not be joined with Apple’s petition for the
`
`’151 patent, if instituted, for the reasons discussed in VirnetX’s Opposition to
`
`Apple’s Motion for Joinder, filed August 28, 2013, in Case No. IPR2013-00354.
`
`2 Ex. 1002, Takahiro Kiuchi and Shigekoto Kaihara, C-HTTP—The
`
`Development of a Secure, Closed HTTP-based Network on the Internet (“Kiuchi”).
`
`
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`2
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`Case No. IPR2013-00376
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`
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`(Petition at 2.) This statement ignores that Cisco and Apple and Cisco previously
`
`relied on Kiuchi for their invalidity positions. Cisco asserted Kiuchi in its ongoing
`
`reexamination of the ’151 patent. (Compare Petition with Ex. 2003, Request for
`
`Inter Partes Reexamination Under 35 U.S.C. § 311, filed August 16, 2011, in
`
`Control No. 95/001,714.) Further, in the ’417 Litigation, Apple’s primary
`
`invalidity theory—and the only theory it elected to present at trial—was invalidity
`
`of the asserted ’151 patent claims based on Kiuchi. (Ex. 2004 at 4:4-7, Transcript
`
`of Trial Morning Session in the ’417 Litigation (E.D. Tex. Nov. 5, 2012).) Despite
`
`focusing the jury on what Apple believed was its strongest reference, Apple failed
`
`to persuade the jury that any asserted claim was invalid, and the court entered final
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`judgment upholding the validity of the asserted ’151 patent claims over Kiuchi.
`
`(Exs. 2001, 2002.) Apple has appealed.
`
`Since New Bay’s Petition is largely duplicative of Cisco’s ongoing
`
`reexamination of the ’151 patent and of Apple’s unsuccessful invalidity challenge
`
`in the ’417 Litigation, instituting it will serve only to harass VirnetX, contrary to
`
`Congress’s stated intentions in adopting the AIA. In addition, New Bay’s Petition
`
`is defective in a number of ways described below. Accordingly, VirnetX
`
`respectfully requests that the Board not institute this proceeding. As one example,
`
`
`3 Ex. 1003, C. I. Dalton and J. F. Griffin, “Applying Military Grade Security
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`to the Internet,” published in the Proceedings of JENC8, May 1997 (“Dalton”).
`
`
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`3
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`

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`Case No. IPR2013-00376
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`
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`New Bay proposes several defective claim constructions that do not represent the
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`broadest reasonable interpretation of the claims in light of the specification.
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`Because its proposed rejections are based on incorrect constructions, New Bay
`
`cannot demonstrate a reasonable likelihood of prevailing for any claim of the
`
`’151 patent. Accordingly, the Board should not institute these proceedings.
`
`II. The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review
`
`New Bay’s Petition fails to comply with the requirements for instituting
`
`inter partes review. As explained in more detail below, in some cases, New Bay’s
`
`Petition fails to “specify where each element of the claim is found in the prior art
`
`patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
`
`Additionally, New Bay proposes multiple parallel rejections that are
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`redundant of one another. New Bay does not explain any differences between the
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`parallel anticipation and obviousness rejections based on Kiuchi, or why one
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`proposed rejection is better than the other. New Bay also fails to explain how the
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`proposed Dalton-Kiuchi obviousness rejection improves upon the proposed
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`Kiuchi-only anticipation and obviousness rejections, or vice versa. Addressing
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`these redundant grounds would significantly burden the Board and the Patent
`
`Owner, and it would cause unnecessary delay of the inter partes review
`
`proceedings, all without any added benefit. Liberty Mut. Ins. Co. v. Progressive
`
`Cas. Ins. Co., CBM2012-00003 (Oct. 25, 2012) Paper No. 7.
`
`
`
`4
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`Case No. IPR2013-00376
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`
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`A. The Petition Fails to Comply with 37 C.F.R. § 42.104(b)(4)
`
`For a petition for inter partes review to be instituted, “the petition must
`
`specify where each element of the claim is found in the prior art patents or printed
`
`publications relied upon.” 37 C.F.R. § 42.104(b)(4). New Bay has failed to
`
`provide the requisite specificity in its Petition, primarily in two ways: (1) by not
`
`applying its proposed claim constructions to explain how Kiuchi and/or Dalton
`
`allegedly satisfies the claim limitations; and (2) by relying on an 81-page
`
`declaration (Ex. 1009), instead of citing Kiuchi and Dalton themselves, to support
`
`its unpatentability positions. Inter partes review thus should not be instituted on
`
`the basis of the Petition. Some examples are identified below.
`
`1.
`
`New Bay Does Not Apply Each of Its Proposed
`Constructions
`
`New Bay does not identify the specific aspects of Kiuchi that allegedly
`
`disclose “automatically” initiating an encrypted channel, as recited in claim 1.
`
`According to New Bay, “automatically” means “initiating the encrypted channel
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`without involvement of a user.” (Id. at 11, 19.) In its analyses of claim 1 for
`
`Grounds 1 and 3, for example, New Bay identifies the C-HTTP name server
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`sending a name service response to the client-side proxy (id. at 36, 46) as
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`“automatically” initiating an encrypted channel. But New Bay never applies its
`
`claim construction and explains how Kiuchi’s user has no involvement in that
`
`particular step. As a result, New Bay does not specify how the “automatically”
`
`
`
`5
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`

`

`
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`recitation is allegedly satisfied by the cited references under its own proposed
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`Case No. IPR2013-00376
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`construction.
`
`2.
`
`The Proposed Grounds Rely Heavily on Expert Testimony
`Rather Than the Cited References
`
`As discussed above, a petition for inter partes review must, among other
`
`things, “specify where each element of the claim is found in the prior art patents or
`
`printed publications relied upon.” 37 C.F.R. § 42.104(b)(4) (emphasis added). But
`
`New Bay bases some of its proposed rejections almost entirely on a declaration
`
`(Ex. 1009) from New Bay’s expert, Russell Housley, rather than on the Kiuchi or
`
`Dalton references themselves. For this additional reason, inter partes review
`
`should not be instituted based on the Petition.
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`What New Bay calls “Request 1” and “Request 2” (i.e., Grounds 1-4) for
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`example, are based on a largely fictional description of Kiuchi that finds almost no
`
`support in Kiuchi itself. (Petition at 27-48.) In its description of Kiuchi prefacing
`
`these Requests, New Bay alleges that Kiuchi’s client-side proxy contains
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`components like a “resolver function,” a “Client Module,” and a “DNS Proxy
`
`Server Module” that perform various functions. (See id.) New Bay even provides
`
`a “functional diagram” of Kiuchi’s client-side proxy containing these fictitious
`
`functions and Modules:
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`6
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`Case No. IPR2013-00376
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`
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`(Id. at 39, Fig. 4.) None of these components is actually disclosed in Kiuchi. It is
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`no wonder that New Bay’s description of Kiuchi cites almost exclusively to
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`Mr. Housley’s declaration, neglecting Kiuchi itself. (See id. at 37-40.) Because
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`“Request 1” and “Request 2” are premised on a fictitious description of Kiuchi that
`
`cites almost exclusively
`
`to Mr. Housley’s declaration, “Request 1” and
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`“Request 2” lack the requisite specificity to institute inter partes review.
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`Requests 1-3 (including Grounds 1-6) also lack the requisite specificity in
`
`additional ways. For instance, all of the Grounds rely on Figure 2, New Bay’s
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`“functional diagram of Kiuchi,” which is reproduced below.
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`
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`7
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`Case No. IPR2013-00376
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`
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`(Id. at 23, Fig. 2.) The figure contains a function block “[e]xtract domain name
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`from http request” that flows into a function block “[s]end domain name resolution
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`request to C-HTTP Server,” which are highlighted above. (Id.)
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`Based on the discussion that follows these figures, New Bay arranges the
`
`two function blocks this way from Kiuchi’s statement that “the client-side proxy
`
`takes off the connection ID and forwards the stripped, the original resource name
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`to the server in its request, as described in Figure (c).” ( Ex. 1002 at 65; Petition at
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`24.) But “the server” in that passage does not refer to the C-HTTP name server as
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`New Bay indicates in its Figure 2—it refers to the origin server behind the
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`server-side proxy. This is because “the request” that contains that “resource name”
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`is the “GET” request described in Kiuchi’s Figure (c), which is a request sent to the
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`origin server to get the resource (i.e., web page) stored on it. (Ex. 1002 at 66.)
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`8
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`Case No. IPR2013-00376
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`
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`The “GET” request is not sent to the C-HTTP name sever as New Bay’s Figure 2
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`suggests. Indeed, the C-HTTP name server does not even have the resource—the
`
`origin server does. Thus, New Bay’s Figure 2 is not an accurate representation of
`
`Kiuchi. And since Grounds 1-6 are based on this figure and not on Kiuchi itself,
`
`they lack the requisite specificity to institute inter partes review.
`
`Grounds 5 and 6 also suffer from further deficiencies. Those grounds
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`combine Kiuchi and Dalton in a proposed rejection of the claims. However,
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`similar to Grounds 1-4, the description of Dalton on which New Bay bases those
`
`grounds contains scant citations to Dalton itself. (See Petition at 48-60.)
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`Accordingly, Grounds 5 and 6 also lack the requisite specificity to institute
`
`inter partes review.
`
`B.
`
`The Board Should Not Institute Based on the Petition’s
`Redundant Grounds
`
`The Board should also reject this Petition because it raises grounds of
`
`rejection that are internally redundant. The Board has held that it will not consider
`
`redundant grounds of rejection like New Bay’s because the Board must issue a
`
`final written decision in inter partes review proceedings within one year of
`
`institution (or 18 months for good cause). Liberty Mut., CBM2012-00003
`
`
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`9
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`

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`Paper No. 7.4 Redundant grounds place a significant burden on the Board and the
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`Case No. IPR2013-00376
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`patent owner, and they cause unnecessary delay that jeopardizes completing the
`
`inter partes review by the statutory deadline. Id.
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`In Liberty Mutual, the Board identified two types of redundant rejections:
`
`(1) “horizontally” redundant rejections and (2) “vertically” redundant rejections.
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`Id. at 3. The Board explained that horizontally redundant rejections apply
`
`“a plurality of prior art references . . . not in combination to complement each other
`
`but as distinct and separate alternatives.” Id. In this type of redundancy, the
`
`references “provide essentially the same teaching to meet the same claim
`
`limitation, and the associated arguments do not explain why one reference more
`
`closely satisfies the claim limitation at issue in some respects than another
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`reference, and vice versa.” Id.
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`Vertical redundancy “exists when there is assertion of an additional prior art
`
`reference to support another ground of unpatentability when a base ground already
`
`has been asserted against the same claim without the additional reference and the
`
`
`4 Although Liberty Mutual is a decision in a covered business method
`
`review, the Board has applied its reasoning to inter partes reviews based on the
`
`similar considerations that apply in both types of proceedings. See, e.g., LaRose
`
`Indus., LLC v. Capriola Corp., IPR2013-00120 (July 22, 2013) Paper No. 20 at 4
`
`(citing Liberty Mut., CBM2012-00003 Paper No. 7 at 2-12).
`
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`10
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`Case No. IPR2013-00376
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`
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`Petitioner has not explained what are the relative strength and weakness of each
`
`ground.” Id. at 12. Thus, an example of vertical redundancy is when a proposed
`
`rejection is based on one reference alone while another proposed rejection against
`
`the same claim is based on that same reference plus another reference. New Bay’s
`
`petition contains both types of redundancy.
`
`New Bay’s Petition proposes six (6) grounds of rejection:
`
` Ground 1. Kiuchi allegedly renders obvious claim 1.
`
` Ground 2. Kiuchi allegedly renders obvious claim 13.
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` Ground 3. Kiuchi allegedly anticipates claim 1.
`
` Ground 4. Kiuchi allegedly anticipates claim 13.
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` Ground 5. Dalton/Kiuchi allegedly render obvious
`claim 1.
`
` Ground 6. Dalton/Kiuchi allegedly render obvious
`claim 13.
`
`(See Petition at ii, 20-60.) As explained below, the proposed Grounds are
`
`horizontally and/or vertically redundant, and the Board should not consider them.
`
`1. Grounds 1 and 3 and Grounds 2 and 4 Are Horizontally
`Redundant
`
`Grounds 1 and 3 are horizontally redundant. In both Grounds, New Bay
`
`alleges that Kiuchi discloses the same features of claim 1. (Compare id. at 32-37
`
`with 42-46.) New Bay does not explain how Kiuchi more closely satisfies the
`
`features of claim 1 in Ground 1 than it does in Ground 3, and vice versa, so
`
`
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`11
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`
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`Grounds 1 and 3 are horizontally redundant and should not be considered. The
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`same is true for Grounds 2 and 4 addressing claim 13. (Compare id. at 37-38 with
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`Case No. IPR2013-00376
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`46-48.)
`
`2. Grounds 1, 3, and 5 Are Vertically Redundant and
`Grounds 2, 4, and 6 Are Vertically Redundant
`
`Grounds 1, 3, and 5 addressing claim 1 are vertically redundant, and
`
`Grounds 2, 4, and 6 addressing claim 13 are vertically redundant. Claims 1 and 13
`
`both recite, for example, a “secure server.” In Grounds 1/3 and 2/4, New Bay
`
`contends that Kiuchi discloses a secure server by its server-side proxy. (Id. at
`
`41-43, 47.) New Bay appears to take the position in Grounds 5/6 that Dalton
`
`(rather than Kiuchi) discloses the secure server of claims 1 and 13 by its “host on a
`
`LAN,” although the Petition devotes little attention to claim 13 in Ground 6.
`
`(See id. at 53, 58-60.)
`
`New Bay asserts that, “[i]f there is any question about whether such a World
`
`Wide Web server [in Kiuchi] constitutes a secure server, such question disappears
`
`when considering Dalton in combination with the closed virtual network of
`
`Kiuchi.” (Id. at 53-54.) But New Bay never explains why Dalton’s host on a LAN
`
`more closely satisfies the claimed secure server than Kiuchi’s client-side proxy, or
`
`vice versa. Thus, relative to Grounds 1/3 and 2/4, Grounds 5/6 are just an
`
`“assertion of an additional prior art reference to support another ground of
`
`unpatentability when a base ground already has been asserted against the same
`
`
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`12
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`Case No. IPR2013-00376
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`
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`claim without the additional reference,” and “the Petitioner has not explained what
`
`are the relative strength and weakness of each ground.” Liberty Mut., CBM2012-
`
`00003 Paper No. 7 at 12. As a result, Grounds 1, 3, and 5 (claim 1) are vertically
`
`redundant, and Grounds 2, 4, and 6 (claim 13) are vertically redundant.
`
`III. The Petition’s Claim Constructions Are Flawed and Should Be Rejected
`
`In inter partes review, claims are to be given their “broadest reasonable
`
`construction in light of the specification.” 37 C.F.R. § 42.100(b). In applying the
`
`“broadest reasonable construction” or interpretation (“BRI”) standard, the words of
`
`the claims must be given their plain meaning unless the plain meaning is
`
`inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
`
`The ordinary meaning of a term may be evidenced by a variety of sources,
`
`including “the words of the claims themselves, the remainder of the specification,
`
`the prosecution history, and extrinsic evidence concerning relevant scientific
`
`principles, the meaning of technical terms, and the state of the art.” Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (citation omitted).
`
`Additionally, the prosecution history is part of the intrinsic record and
`
`should be considered when construing the claims. Id. at 1317. In inter partes
`
`review proceedings, the Board has consistently considered the prosecution history
`
`when construing the claims. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`
`
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`13
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`

`
`
`IPR2012-00001 (Jan. 9, 2013) Paper No. 15 at 8; see also Motorola Solutions, Inc.
`
`v. Mobile Scanning Techs., LLC, IPR2013-00093 (Apr. 29, 2013) Paper 28 at 10.
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`Case No. IPR2013-00376
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`As explained below, New Bay proposes several defective claim
`
`constructions that do not represent the BRI of the claims. Because it is based on
`
`incorrect claim constructions, the Petition cannot demonstrate a reasonable
`
`likelihood of prevailing as to any claim of the ’151 patent.
`
`A. Overview of the ’151 Patent
`
`The ’151 patent discloses embodiments relating to initiating encrypted
`
`channels between a user’s computer 2601 and a target 2604 connected to a
`
`network.
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`14
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`Case No. IPR2013-00376
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`
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`(Ex. 1001, FIGS. 26 and 27.) One embodiment includes methods and systems for
`
`establishing encrypted channels between a user’s computer 2601—called a “client”
`
`in the claims—and a secure server when a domain name server (DNS) proxy
`
`module intercepts a DNS request sent by the client and determines that the DNS
`
`request corresponds to a secure server. (Id. at 37:50-38:21; FIG. 26.)
`
`As shown in Figures 26 and 27, a DNS proxy 2610 may intercept a DNS
`
`request from the user’s computer 2601. (Id. at 37:60-61.) The DNS proxy 2610
`
`determines whether the DNS request corresponds to a secure target site 2604, such
`
`as a secure server. (Id. at 37:61-62.) If the DNS request corresponds to a secure
`
`site, the DNS proxy 2610 may, in certain embodiments, determine whether the
`
`user’s computer 2601 is authorized to access the site. (Id. at 37:62-66.) If so, the
`
`DNS proxy 2610 may automatically initiate an encrypted channel between the
`
`user’s computer 2601 and the secure target site 2604. (Id. at 37:62-38:11; FIG. 27,
`
`step 2706.) If, on the other hand, the intercepted DNS request does not correspond
`
`to a secure target site 2604, DNS proxy server 2610 may forward the request to a
`
`conventional DNS server 2609, which may return the IP address of an unsecure
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`target site 2611. (Id. at 38:36-43.)
`
`
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`15
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`
`
`B.
`
`“DNS Request” (Claims 1 and 13)5
`
`VirnetX’s Proposed
`Construction
`A request for a resource
`corresponding to a
`domain name
`
`Apple’s Proposed
`Construction6
`--
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`Case No. IPR2013-00376
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`New Bay’s Proposed
`Construction
`A communication that
`contains a domain name
`and requests an IP address
`for the domain name
`
`
`The patent specification discloses that a “DNS request” may request an IP
`
`address or other, non-IP address resources, such as public keys for encryption.
`
`(See id. at 37:21-32, citing Ex. 2005, RFC 2535, D. Eastlake, “Domain Name
`
`System Security Extensions.”) In particular, the RFC cited by the specification
`
`
`5 VirnetX identifies only the claims New Bay challenges in its Petition that
`
`expressly recite the terms at issue.
`
`6
`
`In Apple’s
`
`inter partes
`
`review petition
`
`for
`
`the
`
`’151 patent
`
`(IPR2013-00354), Apple challenges additional claims that New Bay does not
`
`challenge. Thus, Apple has offered constructions for terms that appear exclusively
`
`in Apple-challenged claims. VirnetX has addressed or will address those
`
`Apple-only terms in its Preliminary Responses to Apple’s petitions, and does not
`
`address them here because they are not relevant to New Bay’s challenged claims.
`
`Where there is overlap in the terms proposed for construction by Apple and
`
`New Bay for the claims challenged by New Bay, VirnetX addresses all parties’
`
`proposed constructions in this Preliminary Response.
`
`
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`16
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`Case No. IPR2013-00376
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`
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`explains that a computer or resolver may make “[a]n explicit request for KEY
`
`RR’s [public key resource records] . . . .” (Ex. 2005 at 16.) That RFC also
`
`identifies other types of resources that may be requested by a DNS request, such as
`
`signature records (SIG RRs). (See id.) Thus, the BRI of the claimed “DNS
`
`request” is “a request for a resource corresponding to a domain name,” and should
`
`not be limited to a request for “an IP address,” as New Bay proposes.
`
`C.
`
`“Domain Name” (Construe as Part of “Domain Name Server
`(DNS) Proxy Module” or “Domain Name Server (DNS) Module”)
`
`Apple’s Proposed
`Construction
`A name corresponding to
`an IP address
`
`VirnetX’s Proposed
`Construction
`Not a separate claim term,
`construe as part of
`“Domain Name Server
`(DNS) Proxy Module” or
`“Domain Name Server
`(DNS) Module”;
`alternatively, a name
`corresponding to a
`network address
`
`New Bay proposes to construe “domain name,” yet that term is not recited in
`
`New Bay’s Proposed
`Construction
`’135 and ’151 patents: a
`name corresponding to an
`IP address or a group of
`IP addresses
`- - - - -
`’504 and ’211 patents: a
`name corresponding to a
`network address7
`
`the claims of the ’151 patent. The claims recite a “domain name server (DNS)
`
`proxy module” (Ex. 1001 at 46:55-48:44) and “domain name server (DNS)
`
`module” (id. at 48:18-19), but those terms are separately construed. (See infra
`
`
`7 New Bay has introduced inconsistent constructions for the same claim term
`
`across related VirnetX patents, as discussed in detail below.
`
`
`
`17
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`

`

`
`
`Sections III.F and III.G.) Thus, the Board need not separately construe “domain
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`Case No. IPR2013-00376
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`name.”
`
`If the Board deems a separate construction of “domain name” necessary,
`
`however, it should be construed to mean “a name corresponding to a network
`
`address.” Apple asserts that the BRI should include “a name corresponding to an
`
`IP address.” (Ex. 2006 at 8, Petition for Inter Partes Review in Case No.
`
`IPR2013-00354.) VirnetX’s proposed construction reciting a “network address” is
`
`consistent with Apple’s view because, as New Bay recognizes, the patent
`
`specification “uses the term ‘network addresses’ generically and often more
`
`specifically refers to ‘IP addresses.’” (Petition at 17.) Thus, VirnetX’s
`
`construction reciting a “network address” encompasses, as one example, an IP
`
`address.
`
`VirnetX’s construction is identical to New Bay’s proposed construction of
`
`“domain name” for related VirnetX U.S. Patent Nos. 7,418,504 (“the ’504 patent”)
`
`and 7,921,211 (“the ’211 patent”). New Bay proposes a different construction for
`
`VirnetX’s U.S. Patent No. 6,502,135 (“the ’135 patent”) and the ’151 patent—one
`
`that recites “an IP address or a group of IP addresses” instead of a “network
`
`address.” But a different construction is unnecessary because the ’151 patent
`
`claims themselves specify that the recited “network address” is an IP address.
`
`(See, e.g., Ex. 1001 at 46:62-64, “forwarding the DNS request to a DNS function
`
`
`
`18
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`

`
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`that returns an IP address . . . .”) In light of the claim language and the patent
`
`specification, the BRI of “domain name” should be “a name corresponding to a
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`Case No. IPR2013-00376
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`network address.”
`
`New Bay’s proposed construction for the ’151 patent should also be rejected
`
`because it unnecessarily complicates matters by adding “or a group of IP
`
`addresses.” The plain meaning of “an IP address” already encompasses one or
`
`more IP addresses. Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338,
`
`1342-43 (Fed. Cir. 2008); see also Ex. 1045 at 13, recognizing that “corresponding
`
`to an IP address” includes “corresponding to one or more IP addresses.”
`
`Additionally, the proposed “or a group of IP addresses” is vague and does not
`
`explain how the domain name may correspond to the group (i.e., whether it must
`
`correspond to each address or just one of the addresses in the group).
`
`D.
`
`“Domain Name Server” (Construe as Part of “Domain Name
`Server (DNS) Proxy Module” or “Domain Name Server (DNS)
`Module”)
`
`VirnetX’s Proposed
`Construction
`Not a separate claim term,
`construe as part of
`“Domain Name Server
`(DNS) Proxy Module” or
`“Domain Name Server
`(DNS) Module”;
`alternatively, a computer or
`program that responds to a
`DNS request
`
`
`
`
`New Bay’s Proposed
`Construction
`--
`
`Apple’s Proposed
`Construction
`A computer or computer-
`based process that will return
`an I