`Case 6:10—cv—OO417—LED Document 266
`Filed 04/25/12 Page 1 of 31 PageID #: 7521
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`§
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`VIRNETX INC.,
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`
`§ §
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`§ §
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`Plaintiff,
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`vs.
`§
`CASE NO. 6:10-CV-417
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`
`§
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`§ §
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`CISCO S¥STE1VIS, INC, et al.,
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`Defendants.
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`§ §
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`MEMORANDUM OPINION AND ORDER
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`This Mem9¥aHde—Qplfllefl—GGHS¥FHCS the disputed claim terms in US. Patent Nos.
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`6,502,135 (“the ‘135 Patent”), 6,839,759 (“the ‘759 Patent”), 7,188,180 (“the ‘180 Patent”),
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`74330—4 (“the ‘5071 Patent”), 7490151 (“the ‘ 151 Patent”), and 7,921,211 (“the ‘211 Patent”).
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`Further, as stated at the Mark/mm hearing and agreed by the parties, the Court ORDERS
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`that VirnetX Inc’s Motion to Compel from Apple a Complete Response to VirnetX’s Eighth
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`Common Interrogatory (Docket No. 179) is DENIED AS MOOT.
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`BA CKGRO UN D
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`VirnetX Inc. (“VirnetX”) asserts all six patents-in-suit against Aastra Technologies Ltd;
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`Aastra USA, Inc; Apple Inc; Cisco Systems, Inc; NEC Corporation; and NEC Corporation of
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`creating a virtual private network (“VPN”) between a client computer and a target computer. The
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`‘75‘7Patent discloses a method—for establishing a VPN w1thout a user entenng user 1dent1ficat10n
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`information. The ‘180 Patent discloses a method of establishing a secure communication link
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`—beM&anutemThe‘504md‘fllPaenmdi&loseammdomamnameseMceThe
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`‘151 Patent discloses a domain name service capable of handling both standard and non-standard
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`domain name service queries.
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`an ancestor application for every patent—in—suit. The ‘ 135 Patent issued on December 31, 2002,
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`from the ‘783 Application. The ‘151 Patent issued from a division of the ‘783 Application. The
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`‘180 Patent issued from a division of a continuation-in-part of the ‘783 Application. Both the
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`‘759 and ‘504 Patents issued frem a eontjnuatien of a centiniiatiQn-in-pant of the ‘783
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`Application. Finally, the ‘21] Patent is a continuation of the application that resulted in the ‘504
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`patent.
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`The Court has already construed many of the terms at issue in a previous case that
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`involved the ‘135, ‘759, and ‘ 180 Patents. Sec VirnetX, Inc. v. Microsoft Corp, 2009 US. Dist.
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`LEXIS 65667, No. 6:07cv80 (ED. TeX. July 30, 2009) (“Microsoft”).
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`APPLICABLE LAW
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
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`to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp, 415 F.3d 1303,
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`1312 (Fed. Cir. 2005) (en banc) (quoting lnnova/Pure Water Inc. v. Safari Water Filtration Svs.,
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`Inc, 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In claim construction, courts examine the patent’s
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`
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`flmrdencrtcrdefinrflrrpatentedmm scope. See id, CR. Bard, Inc.
`V. US.
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`Surgical Corp, 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad
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`Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). This intrinsic evidence includes
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`the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at
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`13b4, CRBardlnc, 388F3dat86l Courts giveclahntermstheirordinarrantbamrstomed—
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`meaning as understood by one of ordinary skill in the art at the time of the invention in the
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`Case 6:10—cv—00417—LED Document 266
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`context of the entire patent. Phillips, 415 F.3d at 1312—13; Alloc, Inc. v. Ini’l Trade Comm ’n,
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`342 F.3d 1361, 1368 (Fed. Cir. 2003).
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`
`Ibel'
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`3
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`particular claim terms Phillips, 415 F.3d at 1314. First. a term’s context in the asserted claim
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`can be very instructive. Id Other asserted or unasserted claims can also aid in determining the
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`claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
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`Differences amongthe lim rm
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`n l
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`i
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`in n
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`r
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`n in
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`rm’ m nin
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`Id.F r
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`example, when a dependent claim adds a limitation to an independent claim, it is presumed that
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`flmlependemfiamrdoesmfindudeflredmfitamn. Id at 1314—15.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.” 1d.
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`(quoting Marknzan V. Wesiview Instruments, Inc., 52 F .3d 967, 979 (Fed. Cir. 1995) (en banc)).
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`“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.” Id. (quoting Viironics
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`Corp. v. Concepironic, Inc, 90 F.3d 1576, 1582 (Fed. Cir. 1996)); see also Teleflex, Inc. v.
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`Ficosa N. Am. Corp, 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may
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`—defineMQMEms,gm&adahnwma-'
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`possess, or disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations,
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`the inventor s lexicography governs. Id Also, the specification may resolve ambiguous claim
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`terms “where the ordinary and accustomed meaning of the words used in the claims lack
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`—su£fimemdafi1ympemfimemopeofmedebeascefiamedfiommewordsalme”
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`Teleflex, Inc, 299 F.3d at 1325. But, “‘[a]1though the specification may aid the court in
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`interpreting the meaning of disputed claim language, particular embodiments and examples
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`appearing in the specification will not generally be read into the claims’” ('omark (Tommc’ns,
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`Filed 04/25/12 Page 4 of 31 PageID #: 7524
`Case 6:10—ov—OO417—LED Document 266
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`Inc. v. Harris Corp, 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced
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`ll/Iicro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)), see also Phillips, 415 F.3d at 1323.
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`wmnmmmwmwmmmmm—
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`because a patent applicant may also define a term in prosecuting the patent. Home Diagnostics,
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`Inc, v. Lifescan, Inc, 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification,
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`a patent applicant may define a term in prosecuting a patent”).
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`
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`in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317
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`—fquotingCR Bard, Inc, 388F3d at 862).?echmcahlrctronarreswrd1reatrsescmaydmtmurt—
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`understand the underlying technology and the manner in which one skilled in the art might use
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`claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
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`may not be indicative of how the term is used in the patent. 1d. at 1318. Similarly, expert
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`testimony may aid a court in understanding the underlying technology and determining the
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`particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
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`assertions as to a term’s definition is entirely unhelpful to a court. Id. Generally, extrinsic
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`claim terms.” Id.
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`Defendants also contend that some claims at issue are invalid for indefiniteness. A claim
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`is invalid under 35 U.S.C. § 112 11 2 if it fails to particularly point out and distinctly claim the
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`under 35 U.S.C. § 112 11 2 as indefinite must show by clear and convincing evidence that one
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`skilled in the art would not understand the scope of the claim when read in light of the
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`Case 6:10—cv—00417—LED Document 266
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`specification. Intellectual Prop. Dev, Inc. v. UA-Columbia Cablevision of Weslchester, Inc, 336
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`F.3d 1308, 1319 (Fed. Cir. 2003).
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`LEVELOFQRDINARLSKJLLINIHEART
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`The parties agree that a person of ordinary skill in the art would have a master’s degree in
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`computer networking and computer network security.
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`CLAIM TERMS
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`virtual private network
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`VimetX pmposesianetwolkeflcomputerwthichpnyatelsncommumcate with each other
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`by encrypting traffic on insecure communication paths between the computers.” Defendants
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`propose the following emphasized additions: “a network of computers which privately and
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`directly communicate with each other by encrypting traffic on insecure communication paths
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`between the computers where the communication is both secure and anonymous.”
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`secure and anonymous
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`VirnetX proposes the same construction adopted by this Court
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`in Microsoft. See
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`Microsoft, 2009 US. Dist. LEXIS 65667, at *8. Defendants seek to explicitly include the “secure
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`and anonymous” language that was implicitly included in the Court’s Microsoft construction. See
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`id. at >“16 (“lT he Count constnies ‘yintual private network’ as requiring both data 5301va and
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`anonymity”). Just as in Microsoft, the parties here dispute whether a virtual private network
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`See id. at * 14—17. For the same reasons stated in Microsoft, the Court finds that a virtual private
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`network requires both data security and anonymity. For clarity. this language is now explicitly
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`included in the Court’s construction of “virtual private network.”
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`Case 6:10—cv—OO417—LED Document 266
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`directly
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`Defendants propose that communication within a virtual private network is “direct” based
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`on arguments that VimetX made to the United States Patent and Trademark Office (“PTO”) to
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`overcome rejections based on the Aventail reference during reexamination of the ‘135 Patent,l
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`First, Aventail has not been shown to demonstrate that computers connected via
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`the Aventail system are able to communicate with each other as though they were
`on the same network. .
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`Second, according to Aventail, Aventail Connect’s fundamental operation
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`EmeempaHbE—wnh—usefi—Hansnnttmg—datathatissensitfietenetwerk
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`.
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`Third, Aventail has not been shown to disclose a VPN because computers
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`connected according to Aventail do not communicate directly with each other.
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`Docket No. 182 Attach. 16, at 5—7. Defendants argue that VirnetX‘s third distinction warrants a
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`finding that communication over a virtual private network must be direct.
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`VirnetX argues that its statements during reexamination are not a clear disavowal of
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`claim scope. Rather, VirnetX contends that it “overcame Aventail on the ground that Aventail
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`did not teach a VPN at all.” Docket No. 173, at 8. However, the statements made by VirnetX—
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`particularly points one and three—reveal that the reason Aventail did not disclose a VPN was
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`because it did not permit direct communication between the source and target computers.
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`—Vfirnd?6furfimrarguesmmfidmnmdeadydfiawm1fainrscop€reganfingmyoneof
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`the three distinctions between Aventail and a VPN. For support, VirnetX relies on Momentus
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`Golf, Inc. v. Swingn'te GolfCorp., 187 Fed. App’x 981 (Fed. Cir. 2006), which involved a patent
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`directed to a golf club swing aide. During prosecution of the Momemus Golf patent, the
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`—apphcanfifified“AhofiowdevfiethlG—“S%chb%wadweig%canmtmefifi
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`SOCKS server.
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`Case 6:10—ov—OO417—LED Document 266
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`requirement in applicant’s claims that the center of gravity of the trainer be substantially at the
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`center of a solid round stock.” Momentus Golf, 187 Fed. App’x at 984 (quoting prosecution
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`history) Thedistfificouflhddmmmisstammentmresentedwmsavowdfiflgdflumnfls—
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`with 10725% club head weight because they would not meet the center of gravity requirement.
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`Id. at 982. The Federal Circuit agreed that the district court‘s interpretation was a fathomable
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`one. Id. at 983—84. However, it reversed the district court because another interpretation was also
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`‘9, anll‘
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`clearly disavowed hollow clubs with 10—25% club head weight. Id. at 984 (emphasis added). The
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`mommmmmmmnywmmmmmmm
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`10—25% club head weight or (2) hollow clubs with 10—25% club head weight. In light of the
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`competing interpretations, the Federal Circuit determined that there was only a disclaimer of the
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`more narrow interpretation.
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`The instant case does not present such an ambiguous statement. VirnetX stated that
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`.“Aventail has not been shown to disclose the VPN . . for at least three reasons.” Docket No. 182
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`Attach. 16, at 5. VirnetX then proceeded to independently present and discuss each of the three
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`at 5—6 (discussing the first reason); id. at 6—7 (discussing the second reason); id. at 7 (discussing
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`the third reason). In Momentus Golf, the applicant combined two potential distinctions in a single
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`sentence, creating ambiguity as to whether the distinctions were independent or intertwined.
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`mvwwmmmmmmmmommmm—
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`alone, served to distinguish the claimed VPN from the Aventail reference. See Andersen Corp. v.
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`Fiber Composites, LLC, 474 F.3d 1361, 13721 (Fed. Cir. 2007) (“An applicant‘s invocation of
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`multiple grounds for distinguishing a prior art reference does not immunize each of them from
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`Filed 04/25/12 Page 8 of 31 PageID #: 7528
`Case 6:10—ov—OO417—LED Document 266
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`being used to construe the claim language”). Accordingly, the Court finds that the claimed
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`“Virtual private networ ” requires direct communication between member computers.
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`privately and directly communicate with each other by encrypting traffic on insecure paths
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`between the computers where the communication is both secure and anonymous.”
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`virtual private link
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`VirnetX proposes “a communication link that permits
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`computers
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`to privately
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`communicate with each other by encrypting traffic on insecure communication paths between the
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`—eompfiers;9efendanfi.exwfimemoAasfiaenfifimpmpese“aanmavfiuapmfie
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`network.” The Aastra entities propose “a link in a virtual private network that accomplishes data
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`security and anonymity through the use of hop tables.”
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`VirnetX’s proposed construction closely tracks its proposal for “virtual private network,”
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`replacing “a network of computers which” with “a communication link that permits computers
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`the computers are linked together;to.” “Network of computers” implies that likewise a
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`“communication link that permits computers [to communicate]” implies a computer network.
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`Defendants also note the similaritv between VirnetX’s proposed construction of “virtual
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`private network” and “virtual private link.” Defendants contend that VimetX’s proposal
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`is
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`.. .”.‘ti:
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`Jan. 5, 2012. As a simplification, Defendants propose “a link in a virtual private networ
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`The Aastra entities argue that a virtual private link should be limited to virtual private
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`network links that use hop tables to achieve data security and anonymity. An embodiment of
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`the Mar/(man hearingHIthat
`2 Defendants stipulated at
`they were not arguing “directly” requires a direct
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`conununication do not impede “direct" conununication between a client and target computer.
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`Case 6:10—cv—00417—LED Document 266
`Filed 04/25/12 Page 9 of 31 PageID #: 7529
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`claim 13 of the ‘135 Patent, which contains the term “virtual private link,” is depicted in Figure
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`31. A detailed description of this embodiment is also provided in the specification. See ‘135
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`Patent cols 4414—4535 ThisWSW tables; thus Aastra
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`argues that this limitation should be imported into the claims.
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`The Court rejects Aastra‘s attempt to incorporate limitations of a preferred embodiment
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`into the claims. See Falcma v. Kent State Univ, 669 F.3d 1349, 1355 (Fed. Cir. 2012) (cautioning
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`notes that the use of hopping is one option for accomplishing the data security and anonymity
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`W.tfiefifimm.W—13W,W3Wmamm
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`transport server 3102 to allocate a hopping table (or hopping algorithm or other regime) for the
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`"37
`purpose of creating a VPN with client 3103 (emphasis added)). Thus, the applicants envisioned
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`alternate methods of implementing data security and anonymity beyond hopping tables, and
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`importing the hopping limitation into the claims is inappropriate.
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`The patent specification, in the detailed description of Figure 31, uses the term virtual
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`private network and virtual private link interchangeably. Compare id. col. 44:3740 (“When a
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` mammmmnm
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`. .”), with id. col. 45: 10—13 (noting that the signaling
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`between the user and the transport server .
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`server requests the transport server to create a hopping table for the purpose of creating a VFN
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`with client 3103.”), and id. col. 45:32—35 (“After a VPN has become inactive for a certain time
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`pefiod®gmehmrl$eVENcanbewMaficaflgutomMManspofiserw3LQZm
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`signaling server 3101.”); see Nystrom v. Trex Co, Inc, 424 F.3d 1136, 1143 (Fed. Cir. 2005)
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`(“Different terms or phrases in separate claims may be construed to cover the same subject
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`matter where the written description and prosecution history indicate that such a reading of the
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`Case 6:10—cv—00417—LED Document 266
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`terms or phrases is proper”). Finally, VirnetX’s and Defendants’ proposed constructions of
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`virtual private link are very similar to their proposed constructions for virtual private network.
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`—Accmmngl¥4he_CmMJomtmes“wfiudpfivamhnk”u“awfiudpfivaRDen&oflng—
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`previously defined.”
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`secure communication link
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`VirnetX proposes “an encrypted communication link.” Defendants propose “virtual
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`private network communication link.” The parties in A/[icrosofl agreed that this term, as used in
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`the ‘759 Patent, did not require construction because the claims themselves provide a definition
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`efthe term. (W, ”999 US. Dist. LEXPS 65667, at >5-43. Forinstanee, claim 1 states: “the
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`secure communication link being a virtual private network communication link over the
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`computer network.” ‘759 Patent col. 57:20—22. Here, the parties also agree that, as to the ‘759
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`Patent, the term means “virtual private network communication link.” However, the claims of the
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`‘504 and ‘211 Patents use this term without further defining it. Thus, the parties dispute the
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`construction of the term as used in the ‘504 and ‘211 Patents.
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`VirnetX contends that “secure” means the link uses some form of data encryption,
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`highlighting the following passage from the ‘504 Patent specification: “Data securitv is usuallv
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`tackled using some form of data encryption.” ‘504 Patent col. 1:55—56. VirnetX argues that the
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`to limit “secure communication link” to that interpretation. VirnetX further argues Defendants’
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`proposal improperly imports a limitation from the preferred embodiment, which discloses a
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`secure communication link that is also a virtual private network communication link. VirnetX
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` Wmmmam
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`private network communication link for all possible embodiments of the claims.” Docket No.
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`10
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`Case 6:10—cv—00417—LED Document 266 Filed 04/25/12 Page 11 of31 PageID #: 7531
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`192, at 4. Finally, VirnetX argues that it did not narrow the interpretation of “secure
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`communication link” during the prosecution of the ‘504 and ‘211 Patents.
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`3|
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`I
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`"I'I'Iil'li
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`3|
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`Invention: “The secure communication link is a virtual private network communication link over
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`the computer network.“ ‘504 Patent col. 6:61—62. Defendants further argue that the detailed
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`description of the invention also uses the terms “secure communication link” and “virtual private
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`regarding “secure communication link” while prosecuting US. Patent No. 8,051,181 (“the ‘181
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`The ‘ 181 Patent is related to the patents-in-suit; it is a division of a continuation-in-part
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`of the ‘783 Application that serves as an ancestor application for all of the patents—in—suit. The
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`Federal Circuit has held that arguments to the PTO regarding one patent application are
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`applicable to related patent applications. See Microsoft Corp. v. Mulii-I'ech 532s, Inc, 357 F.3d
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`is relevant1340, 1349 (Fed. Cir. 2004) (“[T]he prosecution history of one patent to an
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`understanding of the scope of a common term in a second patent stemming from the same parent
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`may be applicable to a previously filed application. See Verizon Servs. Corp. v. Vonage Holdings
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`Corp, 503 F73d l295, I307 CF ed. Cir. 2007) (rejecting the argument that a disclaimer should not
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`apply because it occurred after the patent under consideration had issued). Here, the ‘181 Patent
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`issuedafterallofthepatents-in-wij Itsapplicanonsvasfilecflateuhanjheapphcanonsfofihe—
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`patents-in-suit except for the ‘211 Patent, which was filed approximately six months earlier.
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`When prosecuting the “181 Patent, VirnetX distinguished the Aventail reference from the
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`“secure communication link” limitation using arguments nearly identical
`to those discussed
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`
`ll
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`Case 6:10—cv—00417—LED Document 266
`Filed 04/25/12 Page 12 of 31 PageID #: 7532
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`earlier regarding Aventail and the “virtual private networ ” term. VirnetX argued that Aventail
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`failed to disclose a “secure communication link” for the same three reasons asserted in the ‘ 135
`
`
`—Leexamina1ion__CampazeDocketNo L82Attach LQMS—7Carg11mentLregardingjdfiuaJ—
`
`l. at 678 (arguments regarding
`private network” and Aventail), with Docket No. 202 Attach.
`
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`“secure communication link“ and Aventaib. Therefore” for the same reasons stated earlier
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`regarding “virtual private network,” a “secure communication link” also requires direct
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`
`
`mmni 1n
`
`nin
`
`“Secure communication link” was originally used in the claims of the ‘759 Patent, which
`
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`wasalmmmsuemhfiwmzyffirerejmepaniesageedmmfididnmmqmmnmion—
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`because the claim language itself defined the term as “being a virtual private network
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`communication link.” ‘759 Patent col. 57:20722. However, the later—filed applications that issued
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`as the ‘504 and ‘211 Patents removed this defining language from the claims. Accordingly the
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`term is not so limited in the ‘504 and ‘211 Patents as in the ‘759 Patent.
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`Defendants argue that the Summary of the Invention defined a secure communication
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`link as a virtual private network communication link. However, this discussion in the Summary
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`
`
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`invention, a user can conveniently
`According to one aspect of the present
`
`establish a VPN using a “one—click” .
`.
`. technique without being required to enter
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`[information] for establishing a V‘PlTThe advantages of the present invention are
`provrded by a method for establishing a secure communication link .
`.
`.
`.
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`‘504 Patent col. 6:36—42. Thus, the advantage of being able to seamlessly establish a one-click
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`VPN is provided by “a method for establishing a secure communication link.” The description
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`6:43—7 :10 (describing the one-click embodiment). It is within this description of the preferred
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`embodiment that the specification acknowledges that the “secure communication link is a virtual
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`12
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`Ex.1013-Page T2 of31
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`Filed 04/25/12 Page 13 of 31 PageID #: 7533
`Case 6:10—cv—00417—LED Document 266
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`private network communication link.” Id. col. 6:61—63. The patentee is not acting as his own
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`lexicographer here; rather, he is describing a preferred embodiment. The claims and specification
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`fiM‘so4M‘mmwmmpmmwmmmem
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`virtual private network limitation originally present in the ‘759 Patent claims. Thus, secure
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`communication link shall be interpreted without this limitation in the ‘304 and 711 Patents.
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`VirnetX proposes that a secure communication link is an encrypted link. However, claim
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`28 ofthe ‘504 Palent3 covqs “Itlhe system of claim 1, wherein the secure eemmunieatien link
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`uses encryption.” ‘504 Patent col. 57:17—18. VimetX’s proposal seeks to import a limitation
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`
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`differentiation. See Curtis‘s-Wright Flow Control Corp. v. Velan, 1110.7 438 F.3d 1374, 1380 (Fed.
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`Cir. 2006) (“‘[C]laim differentiation” refers to the presumption that an independent claim should
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`not be construed as requiring a limitation added by a dependent claim”). The specification notes
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`that “[d]ata security is usually tackled using some form of data encryption.” ‘504 Patent col.
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`1:55—56 (emphasis added). Therefore, encryption is not the only means of addressing data
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`security. Accordingly, a secure communication link is one that provides data security, which
`
`.
`
`l
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`l
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`.
`.
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`The Court construes “secure communication link” as “a direct communication link that
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`provides data security. 4
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`3 Claim 28 of the ‘211 Patent is similar.
`4 As the Court discussed earlier, the ‘7 59 Patent claims further limit the secure communication link recited therein.
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`. 1.11:1“
`.
`l
`.
`l
`.
`1
`.’l
`'
`recited in the “759 Patent claims is a “virtual private network conuuunication link."
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`"l'l”
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`l3
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`Ex.1013-Page 13 of31
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`Case 6:10—cv—00417—LED Document 266
`Filed 04/25/12 Page 14 of 31 PageID #: 7534
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`domain name service
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`VirnetX proposes “a lookup service that returns an IP address for a requested domain
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`name,” adopting the Court’s previous construction of this term in A/ficrosofi. Defendants propose
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`to append “to the requester” to VirnetX’s proposed construction.
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`
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`VirnetX provides an expert declaration stating that one of skill in the art, after reading the
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`specification, would understand that a domain name service does not necessarily return the
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`requested TP address to the requester, See Docket No, 173 Attach. 17 W 7—8 (stating that in the
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`eofiefiofaDNSprexy,$ePaddre%mayherfiumed%oWiginflwwesfingcfiefi,$e
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`proxy, or both). VirnetX also argues that the specification envisions a domain name service that
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`does not always return an address to the requester. For instance, the specification states:
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`According to certain aspects of the invention, a specialized DNS server traps DNS
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`—requestsand,ifthemquestisfiomaspeaalQLpeofuser...,thesemerdoesnm
`return the true IP address of the target node, but instead automatically sets up a
`virtual private network between the target node and the user.
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`O
`O
`Cu
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`Court’s Microsofi construction by arguing that a domain name service does not necessarily
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`return the requested TP address to the requester.
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`VirnetX’s expert explains that “in one mode, the domain name request can be received by
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`aBNSproxyerNSmoxymodfiejwfithhrmmrmarforwmdflwmmmafimercfion—
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`that can return an IP address” Docket No. 173 Attach. l7 1l 8. Thus, VirnetX argues, a domain
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`name request may cause an TP address to be returned “to the client, or to a DNS proxy .
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`.
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`.
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`, or
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`MVMVMetX’sexpenEefleaNewmscfibmgascenanoJaafledmme‘Bngemm
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`cited above by VirnetX. This scenario is further described in detail in the specification and
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`depicted in Figure 26. See T35 Patent col. 38zl3—42 (describing the operation of the system
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`l4
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`m-Page 14 of31
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`Filed 04/25/12 Page 15 of 31 PageID #: 7535
`Case 6:10—cv—00417—LED Document 266
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`depicted in Figure 26), VimetX asserts that Defendants’ proposed construction precludes this
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`preferred embodiment.
`
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`Contrary to VimetX’s argumenLJlefendantstLoposedJnnfianonudoeLnotuprechldLa—
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`preferred embodiment. The “specialized” or “modified” DNS server
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`referenced in the
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`specification is shown as 2602 in Figure 26. This modified DNS server contains a DNS proxy
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`function and a standard DNS server function. Requests for non-secure sites are passed through to
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`the D SS semer, and an IP address is returned te the requesting elient In this case two separate
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`domain name requests are effectively being made: (1) between the client computer 2601 and the
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`mmmmmmmmmmfi
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`the original client request is for a secure site, then the DNS Proxy 2610 establishes a VPN
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`connection between the client and the secure site. The specification explains the final stages of
`
`this process:
`
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`Thereafter, DN S proxy 2610 returns to user computer 2601 the resolved address
`passed to it by the gatekeeper (this address could be different from the actual
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`target computer) 2604, preferably using a secure administrative VPN. The address
`that is returned need not be the actual address of the destination computer.
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`Id. col. 383642. The DNS Proxy 2610, operating as an internal component of the modified
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`DNS server 2602, returns an address to the requester, the client computer 2601. Thus, viewing
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`the modified DNS server 2602 as a black box, it returned an address to the requesting client
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`computer,
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`For these reasons, the Court finds that a domain name service inherently returns the IP
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`address for a requested domain name to the requesting party. The Court construes “domain name
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`seMce”%“abekupseMcemMraurmmEaddregfmamqu%te¢W
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`requester.”
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`Case 6:10—cv—00417—LED Document 266
`Filed 04/25/12 Page 16 of 31 PageID #: 7536
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`domain name
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`VirnetX proposes the same construction adopted by the Court in Microsoft: “a name
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`corresponding to an IP address.” Defendants propose “a hierarchical sequence of words in
`
`decreasing order of specificity that corresponds to a numerical TP address.” In Microsoft, the
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`
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`that analysis is incorporated herein. See Microsoft, 2009 US. Dist. LEXIS 65667, at *24—25. For
`
`
`the same reasons stated in Zl/[icrosoft,
`the Court construes “domain name” as “a name
`
`corresponding to an IF address.”
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`BNSproxyserver
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`VirnetX proposes “a computer or program that responds to a domain name inquiry in
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`place of a DNS/”Defendants propose “a computer or program that responds to a domain name
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`inquiry in place of a DNS, and prevents destination servers from determining the identity of the
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`entity sending the domain name inquiry.” VirnetX’s proposal and the first portion of Defendants”
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`proposal reflect the construction adopted by this Court in Microsoft. Id. at *39. Here, the dispute
`
`is whether a DNS proxy server “prevents destination servers from determining the identity of the
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`entity sending the domain name inquiry.”
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`Defendants derive support for their proposed limitation directly from the Background of
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`,|.. :3I | I
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`
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`originating clients.” ‘ 135 Patent col. 1:49—50. VirnetX argues that this statement should be read
`
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`in the context of the sentence that precedes it: "To hide traffic from a local administrator or ISP,
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`a user can employ a local proxy server in communicating over an encrypted channel with an
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`eutsideprexysuchthatthelecal administratererISP enlJyLseesthe encrypted traffic.”ld cel.
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`lI46—49. VirnetX contends that these statements are not regarding all proxy servers, but merely
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`detail how proxy servers may be configured to achieve anonymity.
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`16
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`Ex.1013-Page T6 of31
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`Case 6:10—cv—00417—LED Document 266
`Filed 04/25/12 Page 17 of 31 PageID #: 7537
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`VirnetX also argmes that adopting Defendants’ construction would read out a preferred
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`embodiment disclosed in Figure 26 of the ‘135 Patent. In Figure 26, user computer 2601, after
`
`'IE
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`.
`
`I'I'IE
`
`I'
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`Unsecure Target Site 2611. In this configuration. the DNS Proxy does not prevent the destination
`
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`servers (secure and unsecure target websites) from learning the identity of the originating client
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`(user computer). Rather, the DNS Proxy enables direct communication between the originating
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`
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`rejected. See Globetrotter Software, Inc. v. Elan Computer Grp., Inc, 362 F.3d 1367, 1381 (Fed.
`
`
` orpzeezfimcm'rm'
`
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`claim ‘is rarely, if ever, correct.” (quoting lr’itronics Corp. v. Conceptronic, 90 F .3d 1576, 1583
`
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`(Fed. Cir. 1996)».
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`For these reasons and those stated in Microsoft, see 2009 US. Dist. LEXIS 65667, at
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`*39—42, the Court construes “DN S proxy server” as “a comput