`
`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
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`
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`
`
`
`
`
`
`
`
`NEW BAY CAPITAL, LLC
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2013-00377
`Patent 7,418,504
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 7,418,504
`
`
`
`
`
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`Case No. IPR2013-00377
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`
`
`Table of Contents
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review ......................................................................................... 3
`
`III. The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected ........................................................................................................... 5
`
`A. Overview of the ’504 Patent .................................................................. 6
`
`B.
`
`C.
`
`“Domain Name” (Claims 1, 2, 16, and 21) .........................................10
`
`“Top-Level Domain Name” (Claim 2) ...............................................12
`
`D.
`
`“Domain Name Service” (Claim 1) ....................................................14
`
`E.
`
`F.
`
`G.
`
`“Domain Name Service System” (Claims 1, 5, 16, 21, and 27) .........16
`
`“Secure Communication Link” (Claims 1, 16, and 27) ......................18
`
`“Configured . . . to Comprise an Indication that the Domain
`Name Service System Supports Establishing a Secure
`Communication Link” (Claim 1) ........................................................23
`
`H.
`
`“Transparently” (Claim 27) .................................................................25
`
`IV.
`
`If Trial Is Instituted, VirnetX Requests an 18-Month Schedule ...................26
`
`V.
`
`Conclusion .....................................................................................................27
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`
`
`
`
`
`
`i
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`
`
`Table of Authorities
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`Case No. IPR2013-00377
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`Page(s)
`
`
`CASES
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001 (Jan. 9, 2013) Paper No. 15 .............................................. 5-6, 20
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 20
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) .............................................................................. 5
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093 (Apr. 29, 2013) Paper No. 28 ............................................... 6, 20
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 5
`
`Xilinx, Inc. v. Intellectual Ventures I LLC,
`IPR2013-00112 (June 27, 2013) Paper No. 14 ................................................... 20
`
`ZTE Corp. & ZTE (USA) Inc. v. ContentGuard Holdings Inc.,
`IPR2013-00134 (June 19, 2013) Paper No. 12 ................................................... 20
`
`FEDERAL STATUTES
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 316(a)(1) ............................................................................................... 26
`
`FEDERAL REGULATIONS
`
`37 C.F.R. § 42.100(b) ................................................................................................ 5
`
`37 C.F.R. § 42.100(c) ............................................................................................... 26
`
`37 C.F.R. § 42.104(b)(4) ........................................................................................ 3, 5
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`ii
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`Case No. IPR2013-00377
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`
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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.
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`4, the “Petition”) filed by New Bay Capital, LLC (“New Bay”).
`
`This Petition is one of eleven inter partes reviews requested recently by
`
`Apple Inc. (“Apple”) and New Bay against VirnetX’s patents. Three of the inter
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`partes review petitions challenge VirnetX’s U.S. Patent No. 7,418,504 (“the ’504
`
`patent”).
`
`New Bay’s Petition marks the seventh challenge to the validity of the ’504
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`patent. Apple and Cisco Systems, Inc. (“Cisco”) raised the first and second
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`challenges to the ’504 patent in district court. Neither succeeded. The cases were
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`tried before separate juries, and both juries upheld the validity of the asserted ’504
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`patent claims. (Ex. 2001, Jury Verdict Form Against Apple in VirnetX, Inc. v.
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`Apple Inc., Case No. 6:10-CV-417 (E.D. Tex. Nov. 6, 2012) (“the ’417
`
`Litigation”); Ex. 2002, Jury Verdict Form as to Cisco in the ’417 Litigation (E.D.
`
`Tex. Mar. 14, 2013). The court later entered judgments upholding the validity of
`
`the ’504 patent. (Ex. 2003, Final Judgment Against Apple in the ’417 Litigation
`
`(E.D. Tex. Feb. 28, 2013); Ex. 2004, Final Judgment as to Cisco in the ’417
`
`Litigation (E.D. Tex. Mar. 19, 2013).)
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`Case No. IPR2013-00377
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`In the third and fourth challenges, Apple and Cisco each requested inter
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`partes reexamination of the ’504 patent (Control Nos. 95/001,788 and 95/001,851).
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`Those reexaminations are ongoing.
`
`Apple recently sought the fifth and sixth challenges to the ’504 patent by
`
`filing two inter partes review petitions.1 (See Case Nos. IPR2013-00393, “the
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`’393 petition,” and IPR2013-00394, “the ’394 petition”). Those proceedings are
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`ongoing but not instituted. New Bay’s Petition represents the seventh challenge to
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`the ’504 patent, and is now one of the five pending post-grant challenges before the
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`Office concerning the ’504 patent (two reexaminations and three inter partes
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`review petitions).
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`These proceedings are largely duplicative of one another, and instituting
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`New Bay’s inter partes review will only serve to duplicate efforts already
`
`undertaken in litigation and in pending reexamination of the ’504 patent. Indeed,
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`each of New Bay’s proposed rejections is based in whole or part on Kiuchi. Kiuchi
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`is also asserted in the Cisco reexamination (Control No. 95/001,851). Further, in
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`the ’417 Litigation, Apple’s primary invalidity theory—and the only theory it
`
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`1 New Bay’s Petition should also not be joined with Apple’s petitions for the
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`’504 patent, if instituted, for the reasons discussed in VirnetX’s Opposition to
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`Apple’s Motion for Joinder, filed August 28, 2013, in matters IPR2013-00393 and
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`-00394.
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`elected to present at trial—was invalidity of the asserted ’504 patent claims based
`
`on Kiuchi. (Ex. 2005 at 4:4-7, Transcript of Trial Morning Session in the ’417
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`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
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`asserted claim was invalid. (Ex. 2001, Jury Verdict Form Against Apple in the
`
`’417 Litigation.) The court entered final judgment upholding (among other things)
`
`the validity of the asserted ’504 patent claims over Kiuchi, and Apple has appealed.
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`(Ex. 2003, Final Judgment Against Apple in the ’417 Litigation.)
`
`New Bay’s Petition is also defective in a number of ways described below.
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`As one example, New Bay proposes several defective claim constructions that do
`
`not represent the broadest reasonable interpretation of the claims in light of the
`
`specification. Because its proposed rejections are based on incorrect constructions,
`
`New Bay cannot demonstrate a reasonable likelihood of prevailing for any claim of
`
`the ’504 patent. Accordingly, the Board should not institute this proceeding.
`
`II. The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review
`
`For an inter partes review to be instituted, “the petition must specify where
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`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). New Bay has failed to
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`provide the requisite specificity in its Petition because it fails to apply its proposed
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`claim constructions to explain how Kiuchi and/or Broadhurst allegedly satisfies the
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`claim limitations. Inter partes review thus should not be instituted on the basis of
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`the Petition.
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`For example, New Bay proposes that “secure communication link” means “a
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`direct communication link that provides data security.” (Petition at 16, 21-22.)
`
`But New Bay never attempts to show how this construction is satisfied by Kiuchi
`
`or Broadhurst. With respect to independent claim 1, New Bay asserts that Kiuchi’s
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`C-HTTP server is used for “secure communications.” (Id. at 27-30, 35.) And New
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`Bay contends that Kiuchi “permits a ‘client-side proxy and server-side proxy [to]
`
`communicate with each other using a secure, encrypted protocol…’.” (Id. at 31.)
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`These statements do not explain how the purported “secure communication link” is
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`“a direct communication link,” as required by New Bay’s proposed construction,
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`and an explanation is not found anywhere else in New Bay’s Petition. Even New
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`Bay’s claim charts fail to address this aspect of its proposed construction. (Id. at
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`36-37, 40-41.)
`
`Claims 16 and 27 also recite a “secure communication link.” The Petition
`
`fails to apply New Bay’s construction for these claims as well. In particular,
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`nowhere does the Petition explain how Kiuchi or Broadhurst discloses “a direct
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`communication link” in accordance with New Bay’s proposed construction for
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`claim 16 or 27. (Id. at 45, 48-50.)
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`Accordingly, New Bay’s Petition fails to “specify where each element of the
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`claim is found in the prior art patents or printed publications relied upon,” because
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`it does not explain how Kiuchi or Broadhurst read on the claims under its own
`
`proposed construction. The Petition thus does not comply with 37 C.F.R.
`
`§ 42.104(b)(4) and a trial should not be instituted.
`
`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.” Id. § 42.100(b). In applying the
`
`“broadest reasonable construction” or interpretation (“BRI”) standard, the words of
`
`the claim 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,
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`including “the words of the claims themselves, the remainder of the specification,
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`the prosecution history, and extrinsic evidence concerning relevant scientific
`
`principles, the meaning of technical terms, and the state of the art.” Phillips v.
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`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
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`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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`Case No. IPR2013-00377
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`IPR2012-00001 (Jan. 9, 2013) Paper No. 15 at 8; see also Motorola Solutions, Inc.
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`v. Mobile Scanning Techs., LLC, IPR2013-00093 (Apr. 29, 2013) Paper No. 28 at
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`10.
`
`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 ’504 patent.
`
`A. Overview of the ’504 Patent
`
`The ’504 patent discloses several embodiments of a domain name service
`
`(“DNS”) system for establishing a secure communication link, such as a virtual
`
`private network (“VPN”) communication link, between devices connected to a
`
`network. In one embodiment, a novel, specialized DNS system receives a DNS
`
`request and automatically facilitates the establishment of a secure communication
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`link between two devices. (Ex. 1001 at 39:46-51.)
`
`The ’504 patent distinguishes the claimed DNS service system from a
`
`conventional DNS scheme that merely returns a requested IP address and/or public
`
`key:
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`
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`Conventional Domain Name Servers (DNSs) provide a look-up
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`function that returns the IP address of a requested computer or host.
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`For example, when a computer user types in the web name
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`“Yahoo.com,” the user’s web browser transmits a request to a DNS,
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`Case No. IPR2013-00377
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`which converts the name into a four-part IP address that is returned to
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`the user’s browser . . . .
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`. . .
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`One conventional scheme that provides secure virtual private
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`networks over the Internet provides the DNS server with the public
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`keys of the machines that the DNS server has the addresses for. This
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`allows hosts to retrieve automatically the public keys of a host that the
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`host is to communicate with so that the host can set up a VPN without
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`having the user enter the public key of the destination host. One
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`implementation of this standard is presently being developed as part
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`of the FreeS/WAN project (RFC 2535).
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`The conventional scheme suffers from certain drawbacks. For
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`example, any user can perform a DNS request. Moreover, DNS
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`requests resolve to the same value for all users.
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`According to certain aspects of the invention, a specialized DNS
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`server traps DNS requests and, if the request is from a special type of
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`user (e.g., one for which secure communication services are defined),
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`the server does not return the true IP address of the target node, but
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`instead automatically sets up a virtual private network between the
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`target node and the user.
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`(Id. at 39:7-51.)
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`Compared with a conventional DNS known at the time of filing the ’504
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`patentwhich is described as merely returning a requested IP address and/or
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`public keythe claimed DNS service system of the ’504 patent supports
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`establishing a secure communication link and provides an indication of the same.
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`(See, e.g., id. at 55:49-56, 57:48-58, 60:3-14.) For example, in FIGS. 26 and 27 of
`
`the ’504 patent, reproduced below, a DNS server 2602 including a DNS proxy
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`2610 supports establishing a VPN link between a computer 2601 and a secure
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`target site 2604. (Id. at 39:67-41:59.)
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`
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`Here, the DNS server 2602 receives a DNS request for a target site from computer
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`2601. (Id. at 40:49-52.) A DNS proxy 2610 at the DNS server 2602 determines
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`whether the target site is a secure site. (Id. at 40:6-8, 40:49-56.) If access to a
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`secure site has been requested, the DNS proxy 2610 determines whether the
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`computer 2601 is authorized to access the site. (Id. at 40:57-59.) If so, the DNS
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`Case No. IPR2013-00377
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`proxy 2610 transmits a message to gatekeeper 2603 to create a secure
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`communication link (e.g., a VPN link) between computer 2601 and secure target
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`site 2604. (Id. at 40:12-15.) In this example, the gatekeeper 2603 allocates
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`resources (in this case, IP hop blocks) for the secure communication link to the
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`computer 2601 and secure target site 2604. (Id. at 40:15-19.) The DNS proxy
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`2610 then responds to the computer 2601’s DNS request with an address received
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`from the gatekeeper 2604. (Id. at 40:19-22.) In this manner, the specialized DNS
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`service system supports establishing a secure communication link, doing more than
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`a conventional DNS server at the time of the invention.
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`Case No. IPR2013-00377
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`B.
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`“Domain Name” (Claims 1, 2, 16, and 21)2
`
`VirnetX’s Proposed
`Construction
`A name
`corresponding to a
`network address
`
`Apple’s Proposed
`Construction3
`A name
`corresponding to
`an IP address
`
`New Bay’s Proposed Construction
`
`’504 and ’211 patents: a name
`corresponding to a network address
`- - - - -
`’135 and ’151 patents: a name
`corresponding to an IP address or a
`group of IP addresses
`
`
`The BRI of “domain name” is “a name corresponding to a network address.”
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`New Bay agrees and proposes the same construction. (Petition at 16.)
`
`
`2 VirnetX identifies only the claims New Bay challenges in its Petition that
`
`expressly recite the terms at issue. Claims that depend from the identified claims
`
`may also implicitly contain the terms.
`
`3
`
`In Apple’s
`
`inter partes
`
`review petitions
`
`for
`
`the
`
`’504 patent
`
`(IPR2013-00393 and IPR2013-00394), 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
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`by Apple and New Bay for the claims challenged by New Bay, VirnetX addresses
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`all parties’ proposed constructions in this Preliminary Response.
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`Case No. IPR2013-00377
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`Apple asserts that the BRI “should encompass [VirnetX’s] contention that it
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`can be a ‘name corresponding to an IP address.’” (Ex. 2006 at 10, Petition for
`
`Inter Partes Review in Case No. IPR2013-00393.) VirnetX’s and New Bay’s
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`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.4
`
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`4 New Bay proposes a different construction of “domain name” for U.S.
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`Patent No. 6,502,135 (“the ’135 patent”) and U.S. Patent No. 7,490,151 (“the ’151
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`patent”). (Ex. 2019 at 11-13, Petition for Inter Partes Review in Case No.
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`IPR2013-00375; Ex. 2020 at 11-12, Petition for Inter Partes Review in Case No.
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`IPR2013-00376, construing “domain name” as “a name corresponding to an IP
`
`address or a group of IP addresses.”) As explained in VirnetX’s Preliminary
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`Responses in Case Nos. IPR2013-00375 and -00376, filed concurrently with this
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`response, a different construction for the ’135 and ’151 patents is unnecessary
`
`because their claims already specify that the network address is an IP address.
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`C.
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`“Top-Level Domain Name” (Claim 2)
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`Case No. IPR2013-00377
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`Apple’s Proposed
`Construction
`--
`
`VirnetX’s Proposed
`Construction
`Plain meaning—a name
`that
`identifies
`the
`top
`level in a domain naming
`system
`
`Claim 2 of the ’504 patent recites that “at least one of the plurality of domain
`
`New Bay’s Proposed
`Construction
`A name used as an ending
`component in a domain
`name
`
`names comprises a top-level domain name.” The BRI of “top-level domain name,”
`
`as used in that phrase, is “a name that identifies the top level in a domain naming
`
`system.” According to the dictionary on which New Bay relies for the definition
`
`of VPN, “top-level domain” means “the highest level domain category in the
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`Internet domain naming system.” (Ex. 2007 at 976, McGraw-Hill Computer
`
`Desktop Encyclopedia (9th ed. 2001).) Consistent with this definition, the BRI of
`
`“top-level domain name,” is simply “a name that identifies the top level in a
`
`domain naming system.”
`
`The claims and specification of the ’504 patent support this construction.
`
`For example, claim 4, which depends indirectly from claim 2, recites the
`
`exemplary secure top-level domain names “.scom, .sorg, .snet, .sgov, .sedu, .smil
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`and .sint.” (Ex. 1001 at 55:62-64; see also id. at 7:37-40, “Each secure computer
`
`network address is based on a non-standard top-level domain name, such as .scom,
`
`.sorg, .snet, .snet, .sedu, .smil and .sint.”) These exemplary secure domain names
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`identify the highest level in their domain naming system. The specification also
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`Case No. IPR2013-00377
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`identifies exemplary nonsecure top-level domain names: “In the situation when
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`computer network 3302 is the Internet, computer 3304 typically will have a
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`standard top-level domain name such as .com, .net, .org, .edu, .mil or .gov.” (Id. at
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`49:27-30.) The exemplary nonsecure domain names, likewise, represent the
`
`highest level in an Internet domain naming system. Accordingly, the claims and
`
`specification support that “top-level domain name” means “a name that identifies
`
`the top level in a domain naming system.”
`
`New Bay’s construction that “top-level domain name” means “a name used
`
`as an ending component in a domain name” is incorrect because it targets syntax
`
`over substance. Depending upon the particular type of domain naming system at
`
`issue, the “ending component” may not necessarily identify the top level or even
`
`identify the domain naming system at all. In a standard Internet domain naming
`
`system according to RFC 1034—which uses the suffixes .com, .net, .org, .edu,
`
`.mil, .gov, etc. to identify the top level of the domain naming system—it may be
`
`the case that the “ending component” identifies the top level. (See Ex. 2008,
`
`P. Mockapetris, RFC 1034, “Domain Names - Concepts and Facilities,” bearing
`
`date November 1987.) But in top-down domain naming schemes such as X.500,
`
`the prefix, not the ending component, specifies the top level. (See Ex. 2009 at 6-7,
`
`ITU-T Recommendation X.500, “Series X: Data Networks, Open System
`
`Communications and Security,” bearing date November 2008.)
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`Case No. IPR2013-00377
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`New Bay recognizes that the claims are not limited to the specific “domain
`
`name service” implementation promulgated by the Internet Engineering Task
`
`Force (IETF). (Petition at 20-21.) But its proposed construction for “top-level
`
`domain name” would do just that—limit the claims to the specific Internet domain
`
`naming syntax described in RFC 1034, in which the “ending component” identifies
`
`the top level. Thus, New Bay’s construction is incorrect and the Board should
`
`reject it.
`
`D.
`
`“Domain Name Service” (Claim 1)
`
`VirnetX’s Proposed
`Construction
`No construction
`necessary; alternatively, a
`lookup service that
`returns a resource for a
`requested domain name
`
`The term “domain name service” is plain on its face and does not require
`
`Apple’s Proposed
`Construction
`A lookup service that will
`return an IP address or an
`error code in response to a
`domain name resolution
`request
`
`New Bay’s Proposed
`Construction
`A lookup service that
`returns an IP address for a
`requested domain name
`
`construction. If the Board deems construction of “domain name service”
`
`necessary, however, it should be construed to mean “a lookup service that returns a
`
`resource for a requested domain name.” VirnetX’s alternative construction is
`
`consistent with New Bay’s, but recognizes that a domain name service may return
`
`resources other than IP addresses for domain names. (See Ex. 1001 at 39:34-42,
`
`citing Ex. 2010, D. Eastlake, RFC 2535, “Domain Name System Security
`
`Extensions,” bearing date March 1999.) For example, RFC 2535, cited in the
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`Case No. IPR2013-00377
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`patent specification, explains that a domain name service may store public key
`
`resource records (KEY RRs) and signature resource records (SIG RRs). (Ex. 2010
`
`at 16, RFC 2535.) Thus, “domain name service” should not be limited to a lookup
`
`service that returns an IP address for a requested domain name.
`
`Apple’s construction parallels New Bay’s but adds an additional requirement
`
`that the lookup service will return an IP address or an “error code.” (Ex. 2006 at
`
`10, Petition for Inter Partes Review in Case No. IPR2013-00393.) According to
`
`Apple, the “error code” limitation should be added to the claims because, under
`
`“standard procedures” (defined in RFC 1034 and RFC 1035), “either an IP address
`
`or an error may be returned.” (Id.) Apple is wrong because, as New Bay correctly
`
`points out, the claims are not limited to the conventional domain name service
`
`implementation defined by the IETF. (Petition at 20-21.) Moreover, the
`
`specification differentiates the type of conventional, standard DNS system relied
`
`on by Apple from those claimed. (See Ex. 1001 at 39:7-51, differentiating the
`
`claimed domain name service systems from the standard systems defined in RFC
`
`2535.) For these reasons, Apple’s argument limiting the claims to the standard
`
`procedures defined by the IETF (RFC 1034 and RFC 1035) should be rejected.
`
`
`
`15
`
`
`
`E.
`
`“Domain Name Service System” (Claims 1, 5, 16, 21, and 27)
`
`Case No. IPR2013-00377
`
`VirnetX’s Proposed
`Construction
`Plain meaning; no
`construction necessary
`
`Apple’s Proposed
`Construction
`A lookup service,
`comprising one or more
`applications or devices,
`that will return to a
`requester an IP address or
`an error code in response
`to a domain name
`resolution request
`
`New Bay’s Proposed
`Construction
`A system that performs a
`domain name service and
`which may include a
`single device or multiple
`devices5
`
`
`“Domain name service system” need not be construed. It is the subject of
`
`claim 1, and the claim already defines its characteristics: “a domain name service
`
`system configured[:] to be connected to a communication network, to store a
`
`plurality of domain names and corresponding network addresses, to receive a
`
`query for a network address, and to comprise an indication that the domain name
`
`service system supports establishing a secure communication link.” Since the
`
`claim itself defines the characteristics of the domain name service system, no
`
`further construction is necessary.
`
`
`5 New Bay proposes different constructions for the term “domain name
`
`service system” in the ’211 and ’504 patents. (Compare Petition at 16, 22 with Ex.
`
`2021 at 15, 19-21, Petition for Inter Partes Review in Case No. IPR2013-00378.)
`
`Nevertheless, New Bay does not explain why different constructions of this term
`
`are required.
`
`
`
`16
`
`
`
`Case No. IPR2013-00377
`
`Nonetheless, Apple and New Bay propose different constructions for the
`
`term. According to Apple, it means “a lookup service, comprising one or more
`
`applications or devices, that will return to a requester an IP address or an error
`
`code in response to a domain name resolution request.” (Ex. 2006 at 11, Petition
`
`for Inter Partes Review in Case No. IPR2013-00393.) New Bay, on the other
`
`hand, argues that “domain name service system” means “a system that performs a
`
`domain name service and which may include a single device or multiple devices.”
`
`(Petition at 16, 22.) Apple’s and New Bay’s constructions, however, at times are
`
`inconsistent with the language of claim 1, and at other times are redundant of other
`
`language in claim 1. Both constructions should be rejected.
`
`Applying its flawed reasoning for “domain name service,” Apple contends
`
`that an “error code” requirement should also be read into “domain name service
`
`system” in light of the IETF standards defined in RFC 1034 and RFC 1035. (Ex.
`
`2006 at 10-11, Petition for Inter Partes Review in Case No. IPR2013-00393; Ex.
`
`2011 at 10-11, Petition for Inter Partes Review in Case No. IPR2013-00397.) As
`
`discussed in the preceding section, Apple is incorrect because the plain meaning of
`
`the claims does not require returning an error code, and the ’504 patent
`
`distinguishes its claimed inventions from the conventional domain name services
`
`described in the IETF RFCs cited by Apple.
`
`
`
`17
`
`
`
`Case No. IPR2013-00377
`
`New Bay’s construction is no better, and adds no benefit beyond the words
`
`already in the claims. “A system that performs a domain name service” is merely a
`
`synonymous rewording of “domain name service system.” In addition, New Bay’s
`
`caveat that the claimed domain name service system “may include a single device
`
`or multiple devices” only confuses matters, because nothing in the claims requires
`
`the claimed domain name service system to have any particular distribution across
`
`devices.
`
`In light of the above, the Board need not construe “domain name service
`
`system.”
`
`F.
`
`“Secure Communication Link” (Claims 1, 16, and 27)
`
`VirnetX’s Proposed
`Construction
`A direct
`communication link
`that provides data
`security through
`encryption
`
`Apple’s Proposed Construction
`
`A communication link in which
`computers privately communicate
`with each other on insecure paths
`between the computers where the
`communication is both secure and
`anonymous, and where the data
`transferred may or may not be
`encrypted
`
`New Bay’s Proposed
`Construction
`A direct
`communication link
`that provides data
`security
`
`
`VirnetX agrees with New Bay that “secure communication link” means a
`
`direct communication link that provides data security. A “secure communication
`
`link,” however, also requires “encryption” to provide data security, as determined
`
`by the district court in the ’417 Litigation based on the prosecution history of the
`
`’504 patent. VirnetX’s construction is also supported by the intrinsic record.
`
`
`
`18
`
`
`
`Case No. IPR2013-00377
`
`New Bay states that its construction was “adopted by the district court in
`
`[the ’417 Litigation].” (Petition at 21.) New Bay neglects to mention that the
`
`district court later changed this construction based on arguments VirnetX made
`
`during a reexamination of the ’504 patent. New Bay also fails to note that
`
`VirnetX’s proposed construction of “secure communication link” is the same as
`
`that ultimately adopted by the district court in the ’417 Litigation. (See Ex. 2012 at
`
`1, Order in the ’417 Litigation (E.D. Tex. Oct. 4, 2012).) Like New Bay, Apple
`
`does not address the prosecution disclaimer regarding “encryption” in its petitions.
`
`(See Ex. 2006 at 12-15, Petition for Inter Partes Review in Case No. IPR2013-
`
`00393.)
`
`After the claim construction hearing in the ’417 Litigation, Apple and the
`
`other defendants filed a Motion for Reconsideration of the Construction of the
`
`Term “Secure Communication Link.” (See Ex. 2013, Motion for Reconsideration
`
`in the ’417 Litigation (E.D. Tex. June 21, 2012).) The defendantsincluding
`
`Appleargued that “VirnetX unequivocally disclaimed ‘secure communications
`
`links’ that are not encrypted.” (Id. at 1, 2.) In particular, the defendants cited
`
`arguments made by VirnetX in the inter partes reexamination of the ’504 patent
`
`
`
`19
`
`
`
`Case No. IPR2013-00377
`
`(Control No. 95/001,788), to the effect that the Beser6 reference does not disclose a
`
`“secure communication link” involving encryption. (See Ex. 2014 at 25, Patent
`
`Owner’s Response to Office Action of December 29, 2011.) VirnetX did not
`
`oppose the defendants’ motion. The district court granted the defendants’ motion
`
`in full. (See Ex. 2012 at 1, Order in the ’417 Litigation (E.D. Tex. Oct. 4, 2012).)
`
`This prosecution disclaimer of secure communication links without
`
`encryption is relevant under the BRI standard. See In re Bigio, 381 F.3d 1320,
`
`1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the
`
`PTO should only limit the claim based on the specification or prosecution history
`
`when those sources expressly disclaim the broader definition.”) (emphasis added).
`
`Indeed, in inter partes review proceedings, the Board considers the prosecution
`
`history when construing the claims. See Garmin Int’l, IPR2012-00001 Paper No.
`
`15 at 8; see also Motorola Solutions, IPR2013-00093 Paper No. 28 at 10; ZTE
`
`Corp. & ZTE (USA) Inc. v. ContentGuard Holdings. Inc., IPR2013-00134 (June
`
`19, 2013) Paper No. 12 at 16; Xilinx, Inc. v. Intellectual Ventures I LLC, IPR2013-
`
`00112 (June 27, 2013) Paper No
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