IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Inter Parres Reexamination of
`
`U.S. Patent No. 7,418,504
`
`Larson et a1.
`
`Issued: August 26, 2008
`
`For:
`
`AGILE NETWORK PROTOCOL FOR
`SECURE COMMUNICATIONS
`
`USING SECURE DOMAIN NAMES
`
`vvvvvvv
`
`Control No.: 95f001,788
`
`Group Art Unit:
`
`3992
`
`Examiner: Roland Foster
`
`Confirmation No: 5823
`
`
`
`COMMENTS BY THIRD PARTY RE UESTER PURSUANT TO 37 C.F.R. 1.947
`
`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`Third Party Requester Apple Inc. (“Apple”) submits these comments responsive to Patent
`
`Owner’s Response dated December 26, 2012 (“Second Response”) and the Action Closing
`
`Prosecution (“ACP”) dated September 26, 20 l 2. For the convenience of the Office, a table of
`
`comments is provided at pages (i) to (v). Comments begin on page 1.
`
`Petitioner Apple - EX. 1070, p.i
`
`Petitioner Apple - Ex. 1070, p.
`
`

`

`Control No. 95f001,?88
`Comments of the Requester on the Patent Owner Response
`
`TABLE OF CONTENTS
`
`I.
`
`BACKGROUND .................................................................................................................. 1
`
`II. RESPONSE TO PATENT OWNER CONTENTIONS REGARDING CLAIM
`
`CONSTRUCTIONS ............................................................................................................ 1
`
`A. Patent Owner Does Not Understand the Purpose or Effects of the Office’s
`“Broadest Reasonable Construction” Policy................................................................2
`
`B. The Office’s Construction of “Domain Name Service System“ Is Correct ............... 3
`
`C. The Construction of “Indication” by the Office Was Correct.................................... 4
`
`III. THE REJECTIONS OF THE CLAIMS WERE PROPER ............................................. 6
`
`A. Response to Patent Owner’s Arguments Regarding Rejection of Claims 1, 2,
`5, 6, 8~9, and 14—60 as Anticipated by Selena (Issues 1—8) ...........................................6
`
`1.
`
`Independent Claims 1, 36, and 60 .............................................................................. 6
`
`.
`.
`a. Solana Discloses “a Domain Name Service System Configured to .
`Comprise an Indication that the Domain Name Service System Supports
`Establishing a Secure Communication Link.” ................................................... 6
`
`b. Soiana Describes DNS Systems that Store a Plurality of Domain Names and
`CorreSponding Network Addresses and That Receive Requests for a Network
`Address ............................................................................................................... 9
`
`2. Dependent Claims 5, 23, and 4? (Issue Nos. 1,2, 5,6) ........................................... 11
`
`3. Dependent Claims 8 and 9 (Ground Nos. 1, 5) ........................................................ l3
`
`4. Dependent Claims 16, I7, 27, 33, 40, 41, 51, and 57 (Ground Nos. 1, 5) ............... I4
`
`5. Dependent Claims 18 and 42 (Ground Nos. 1, 5) .................................................... l4
`
`6. Dependent Claims 24 and 48 (Ground Nos. I, 2, 5, 6) ............................................ l4
`
`7". Dependent Claims 26 and 50 (Ground Nos. 1, 5) .................................................... l6
`
`8. Dependent Claims 2, 6, 14-12, 19-22, 25, 22-35, 32-41, 43-46, 49, and 51-59
`(Ground Nos. 1-8) .................................................................................................... 16
`
`B. Rejection of Claims 2—5, 24, 25, 37, 48 and 49 Based on Salami in view of
`RFC 920 (Issue No. 2) ................................................................................................... 16
`
`C. Rejection of Claims 10-13 Based on Selena in view of Reed, or Selena in view
`of RFC 2504 and Reed (Issue No. 7) ............................................................................ 16
`
`D. Rejection of Claims 7, 32, and 56 Based on Selena in view of Beser (Issue No.
`4) 18
`
`E. Rejection of Claims 1, 2, 5, 6, 8, 9, and 14-60 Based on Selena in view of RFC
`2504 (Issue No. 5) .......................................................................................................... 18
`
`F. Rejection of Claims 2-5, 24, 25, 37, 48, and 49 Based on Selena in View of
`RFC 2504 and RFC 920 (Issue No. 6) ......................................................................... 18
`
`ii
`
`Petitioner Apple - EX. 1070, p. ii
`
`Petitioner Apple - Ex. 1070, p.
`
`

`

`Control No. 951001388
`Comments of the Requester on the Patent Owner Response
`
`G. Rejection of Claims 7, 32, and 56 Based on Selena in view of RFC 2504 and
`Beser (Issue No. 4) ......................................................................................................... 18
`
`IV.
`
`REJECTION OF CLAIMS 1—2, 5-6, 8-9, AND 14-60 UNDER 35 U.S.C.§102(B)
`BASED ON PRO VINO (ISSUE N0. 9). ........................................................................... 18
`
`A. Response Concerning Independent Claims 1, 36, and 60 ......................................... 18
`
`1. Provino’s “Firewall 30” is Plainly a Functional Component of the Proving DNS
`Systems .................................................................................................................... l9
`
`2. Proving Teaches DNS Systems that Comprise an “Indication” Specified in Claims
`1, 36 and 60 .............................................................................................................. 22
`
`B. Response Concerning Dependent Claims 5, 23, and 47............................................. 25
`
`C. Response Concerning Dependent Claims 8 and 9 (Ground Nos. 1, 5) ..................... 26
`
`D. Response Concerning Dependent Claims 24 and 48 (Ground Nos. 1, 2, 5, 6).........27
`
`E. Response Concerning Dependent Claims 2, 6, 14-17, 19—22, 25, 27-35, 37-41,
`43-46, 49, and 51-59 ...................................................................................................... 28
`
`F. Rejection of Claims 2—5, 24, 25, 37, 48 and 49 Based on Provino in view of
`RFC 920 (Issue No. 10) ................................................................................................. 28
`
`G. Rejection of Claims 10-13 Based on Provino in view of Reed (Issue No. 11) ...........28
`
`H. Rejection of Claims 7, 29-32, and 53—56 Based on Provino in view of Beser
`(Issue No. 12) .................................................................................................................29
`
`I. Rejection of Claims 1, 2, 5, 6, 8, 9 and 14-60 Based on Provino in view of RFC
`2230 (Issue No. 13) ........................................................................................................29
`
`J. Rejection of Claims 2-5, 24, 25, 37, 48 and 49 Based on Proving in view of
`RFC 2230, in further view of RFC 920 (Issue No. 14) ...............................................29
`
`K. The Rejection of Claims 10-13 Based on Praw'no in view of RFC 2230, and in
`further View of Reed (Issue No. 15) Was Proper ........................................................29
`
`L. The Rejection of Claims 7, 29-32, and 53-56 Based on Proving in View of RFC
`2230, and in further view of Beser (Issue No. 16) Was Proper .................................30
`
`M. Rejection of Claims 1, 2, 5, 6, 8, 9, and 14—60 Based on Provino in view of
`RFC 2504 (Issue No. 17) ...............................................................................................30
`
`N. Rejection of Claims 2—5, 24, 25, 37, 48, and 49 Based on Provino in view of
`RFC 2504 and RFC 920 (Issue No. 18) .......................................................................30
`
`0. The Rejection of Claims 10-13 Based on Provino in view of RFC 2504, and in
`further view of Reed (Issue No. 19) Was Proper ........................................................31
`
`REJECTION OF CLAIMS 1—2, 5—6, 8-9, AND 14-60 UNDER 35 U.S.C. § 102(3) AND
`§103 BASED ON BESER (GROUND N0. 21). ............................................................... 31
`
`A. Independent Claims 1, 36, and 60 ...............................................................................31
`
`iii
`
`Petitioner Apple - EX. 1070, p. iii
`
`Petitioner Apple - Ex. 1070, p.
`
`

`

`Control No. 95f001,?88
`Comments of the Requester on the Patent Owner Response
`
`1. Beser Teaches Its DNS Systems Can and Do Use Encryption, and Do Not “Teach
`Away” from the Claimed DNS Systems .................................................................. 32
`
`2. Beser Teaches a DNS System that Comprises an “Indication” Specified in Claims
`1, 36, and 60 ............................................................................................................. 35
`
`B. Dependent Claims 16, 17, 27, 33, 40, 41, 51 and 57 (Issue No. 21) ...........................36
`
`C. Dependent Claims 18 and 42 (Issue No. 21) ...............................................................36
`
`D. Dependent Claims 24 and 48(Issue Nos. 21 and 22) ..................................................37
`
`E. Dependent Claims 26 and 50 (Issue No. 21) ...............................................................37
`
`F. Dependent Claims 2, 5-7, 14, 15, 19-23, 25, 28-32, 34, 35, 37-39, 43-47, 49, 52-
`56, 58, and 59 (Issue No. 21) .........................................................................................38
`
`G. Dependent Claims 2-5, 24, 25, 37, 48, and 49 (Issue No. 22) .....................................38
`
`H. Dependent Claims 8 and 9 (Issue No. 23) ...................................................................38
`
`I. Dependent Claims 10-13 (Issue No. 24) ......................................................................38
`
`VI.
`
`RESPONSE TO PATENT OWNER’S ARGUMENTS REGARDING REJECTION
`
`OF CLAIMS 1-2, 5-6, 8-9, AND 14-60 BASED ON RFC 2230 (ISSUE N0. 25)......... 39
`
`A. Independent Claims 1, 36, and 60 ...............................................................................39
`
`1. RFC 2230’s Routers “R1” and “R2” Are Plainly A Functional Component ofthe
`RFC 2230 DNS Systems .......................................................................................... 39
`
`. Comprise
`.
`2. RFC 2230 Discloses “a Domain Name Service System Configured to .
`an Indication. . .” ....................................................................................................... 42
`
`B. Dependent Claims 16, 17, 27, 33, 40, 41, 51 and 57....................................................42
`
`C. Dependent Claims 18 and 42 ........................................................................................ 42
`
`D. Dependent Claims 24 and 48 ........................................................................................43
`
`E. Dependent Claims 26 and 50........................................................................................43
`
`F. Dependent Claims 2, 6, 14, 15, 19-23, 25, 27, 28-32, 34, 35, 37-39, 43-47, 49,
`50, 52—56, 58, and 59 ......................................................................................................44
`
`G. Rejection of Dependent Claims 2-5, 24, 25, 37, 48, and 49 Based on RFC 2230
`in View of RFC 920 (Issue No. 26) ...............................................................................45
`
`l. Dependent Claim 5 .................................................................................................. 45
`
`2. Dependent Claims 24 and48 45
`
`H. Rejection of Dependent Claims 8 and 9 Based on RFC 2230 in View of RFC
`2401 (Issue No. 27) ........................................................................................................46
`
`I. Rejection of Claims 10-13 based on RFC 2230 in View of RFC 240] and in
`Further View of Reed (Issue No. 28) ........................................................................... 46
`
`J. Rejection of Claims 29-32 and 53-56 Based on RFC 2230 in view of Beser
`(Issue No. 29) .................................................................................................................46
`
`iv
`
`Petitioner Apple - EX. 1070, p.
`
`iV
`
`Petitioner Apple - Ex. 1070, p.
`
`

`

`Control No. 95f001,?88
`Comments of the Requester on the Patent Owner Response
`
`VII. REJECTION OF CLAIMS 1, 2, 6, 14-22, 24-46, 48-52, AND 57-60 UNDER 35 U.S.C.
`§ 102(8) BASED ON RFC 2538 (ISSUE NO. 30) ........................................................... 47
`
`A. Independent Claims 1, 36, and 60 ...............................................................................47
`
`B. Dependent Claims 16, 17, 27, 33, 40, 41, 51, and 57...................................................47
`
`C. Dependent Claims 18 and 42........................................................................................48
`
`D. Dependent Claims 26 and 50........................................................................................48
`
`E. Rejection of Claims 3, 4, 24, 25, 48, and 49 Based on RFC 2538 in View of
`RFC 920 (Issue No. 31) .................................................................................................49
`
`F. Rejection of Claims 8 and 9 Based on RFC 2538 in View of RFC 2401 (Issue
`
`No. 32) ............................................................................................................................49
`
`G. Rejection of Claims 10-13 Based on RFC 2538 in view of RFC 2401 in
`Further View of Reed (Issue No. 33) ...........................................................................49
`
`H. Rejection of Claims 29-32 and 53—56 Based on RFC 2538 in View of Beser
`(Issue 34) ........................................................................................................................49
`
`I. Rejection of Claims 5, 23, and 47 based on RFC 2538 in View of RFC 2065
`(Issue 35) ........................................................................................................................49
`
`VIII.THERE ARE NO SECONDARY CONSIDERATIONS LINKED TO THE CLAIMS
`
`............................................................................................................................................. 50
`
`Petitioner Apple - EX. 1070, p. V
`
`Petitioner Apple - Ex. 1070, p.
`
`

`

`Control No. 95f001,?88
`Comments of the Requester on the Patent Owner Response
`
`1.
`
`Background
`
`On March 29 2012. Patent Owner filed an overlength reSponse (“First ReSponse”) to the
`
`
`December 29, 201 1 Office action (“First Action”). On June 25 2012, Requester filed a 50-page
`
`reSponse with comments (“Comments”) on Patent Owner‘s reSponse. On September 26, 2012,
`
`the Office issued an AC P that found claims 1-60 of US. Patent No. 7,418,504 (“the ’504
`
`
`patent”) unpatentable. On December 26 2012, the Patent Owner filed its Second ReSponse and
`
`a petition under 3? C.F.R. § 1.183 seeking to waive the page limit rule for that response.
`
`Although the Office has not acted on the page-limit waiver as of the date of this submission,
`
`Requester provides these comments now to expedite conclusion of this proceeding. Requester
`
`believes no fee is due for this response, but authorizes the Director to debit any fee determined to
`
`be necessary from Deposit Account No. 18-1260.
`
`Requester notes that Patent Owner submitted a Supplemental Declaration of Angelos D.
`
`Keromytis, Ph.D. with its Second Response, but did not establish good and sufficient reasons
`
`why this affidavit is necessary or could not have been presented earlier. On Januam 10, 2013,
`
`Requester petitioned the Director to not admit this Supplemental Declaration as it is barred by 37
`
`CFR § 1.1 16(6) (affidavit may not be admitted after an ACP without “good and sufficient
`
`reasons why the affidavit or other evidence is necessary and was not earlier presented”) As
`
`explained in that petition, nowhere in its Second Response does Patent Owner even attempt to
`
`comply with Rule 1.1 16(e). Indeed it cannot — the Second Response simply rehashes arguments
`
`Patent Owner and its expert presented earlier, advances unsupportable Iegat theories about its
`
`claims, or attempts, for the first time, to address issues that were ripe for response after the First
`
`Action. The Examiner consequently should not admit or consider the new evidence or
`
`arguments presented in the Supplemental Declaration.
`
`[1.
`
`Response to Patent Owner Contentions Regarding Claim Constructions
`
`On pages 1-8 of its Second Response, Patent Owner presents general challenges to the
`
`rejections in the ACP, contending the Office’s constructions of the claims are “defective” based
`
`on “incorrect positions on claim constructions,” and that constructions applied by the Office are
`
`“effectively new claim-constructions positions” for which the “Patent Owner has not had a
`
`chance to rebut.” Second Response at 1-2. Patent Owner is incorrect on each point. The
`
`“effectively new claim-constructions positions” are not new at all — they are the same ones
`
`proposed in the Request and used by the Office in the First Action. Moreover, contrary to Patent
`
`Petitioner Apple - EX. 1070, p. 1
`
`Petitioner Apple - Ex. 1070, p. 1
`
`

`

`Control No. 95i'001,?88
`Comments of the Requester on the Patent Owner Response
`
`Owner’s contentions, these constructions are technically accurate and reflect the broadest
`
`reasonable construction of the claims, as explained below.
`
`A.
`
`Patent Owner Does Not Understand the Purpose or Effects of the Office’s
`“Broadest Reasonable Construction" Policy
`
`Patent Owner repeatedly acknowledges that the claims must be given their “broadest
`
`reasonable construction” in this proceeding. Patent Owner’s comments, however, demonstrate it
`
`does not understand the implications in this case of this well-established Office policy.
`
`Specifically, Patent Owner asserts the Examiner has improperly interpreted the claims, and
`
`demands that the claims be read in a manner that would exclude from their actual scope — fl
`
`defined by the words used in the claims — subject matter which (i) Patent Owner has “clearly and
`
`unequivocally disclaims” or which the “specification repeatedly and explicitly disparages,” and
`
`(ii) which differs from specific embodiments described in the specification. Second Response at
`
`5. Patent Owner believes it is appropriate to read limitations into its claims based on the
`
`“unmistakable disavowal[s] of claim scope” that it made.
`
`id. at 8.
`
`Patent Owner’s criticisms reflect its fundamentally flawed understanding of the Office’s
`
`policy of giving the claims their broadest reasonable construction.
`
`In proceedings before the
`
`Office, a patent owner must amend the claims to effectively exclude subject matter actually
`
`encompassed by the claim language. See MPEP § 2] l
`
`l (explaining that under the broadest
`
`reasonable construction practice used in PTO proceedings,
`
`applicant has the opportunity to
`
`amend the claims during prosecution, [and that] giving a claim its broadest reasonable
`
`interpretation will reduce the possibility that the claim, once issued, will be interpreted more
`
`broadly than isjustified.”) (citing in re Yamamoto, 740 F.2d 1569, l57l (Fed. Cir. 1984). This
`
`practice is fiindamentally different than claim construction before a court, where a patent owner
`
`cannot amend its claims.
`
`In the latter process, courts may consider clear disclaimers and other
`
`statements made by the Patent Owner during prosecution of the patent to construe the claims.
`
`Those jpgigial claim construction mechanisms, however, have no role in proceedings before the
`
`Office, because in this proceeding, the words in the claims can simply be changed to match the
`
`meaning the Patent Owner contends they should have. See M.P.E.P. § 21 11 (construing In re
`
`Morris, 12? F.3d 1048, 1054-55, 44 USPQ2d 1023, 1021-28 (Fed. Cir. 199'?) as providing that
`
`“PTO is not required, in the course of prosecution, to interpret claims in applications in the same
`
`manner as a court would interpret claims in an infringement suit”)
`
`Petitioner Apple - EX. 1070, p. 2
`
`Petitioner Apple - Ex. 1070, p. 2
`
`

`

`Control No. 95f001,?88
`Comments of the Requester on the Patent Owner Response
`
`Patent Owner’s arguments in this case vividly demonstrate why this rule is followed — all
`
`of Patent Owner’s arguments seek to impermissibly import unclaimed limitations, requirements,
`
`meanings or “disclaimers” into the claims in order to narrow their scope and avoid the prior art,
`
`now that the claims have been found — based on their actual language — to encompass what is
`
`disclosed in or rendered obvious from the prior art. See M.P.E.P. § 2111.01(ll);1n re Prater,
`
`415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (“reading a claim in light ofthe
`
`specification, to thereby interpret limitations explicitly recited in the claim, is a quite different
`
`thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of
`
`the claim by implicitly adding disclosed limitations which have no express basis in the claim”);
`
`Superguide Corp. v. DirecTV Enterprises, Inc, 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed.
`
`Cir. 2004) (“Though understanding the claim language may be aided by explanations contained
`
`in the written description, it is important not to import into a claim limitations that are not part of
`
`the claim. For example, a particular embodiment appearing in the written description may not be
`
`read into a claim when the claim language is broader than the embodiment”).
`
`Indeed, by making these assertions, Patent Owner necessarily admits the claims actually
`
`encompass what the Office says they do. However, instead of seeking to amend the claims to
`
`correspond to the meaning(s) Patent Owner desires them now to have (and demonstrating there is
`
`written description support for these redefined methods and systems in its disclosure), Patent
`
`Owner asks the Office to simply ignore its well-established practices and do precisely what the
`
`MPEP and relevant rules state it should not — allow Patent Owner to import into the claims
`
`unclaimed limitations by reading the words as having special or narrow meanings, or by
`
`excluding from their actual scope subject matter Patent Owner putatively has “disparaged” or
`
`“disciaimed.” Allowing the Patent Owner to recast its claims without actually amending them
`
`would violate the Office’s well-established practice of requiring a patentee to expressly
`
`incorporate limitations in the claim language to effectively limit their scepe in these proceedings,
`
`and would prevent the Office and Requester from evaluating the newly claimed subject matter
`
`for compliance with 35 U.S.C. § I 12. Consequently, Patent Owner’s requests that the Office
`
`depart from its well-established practices must be uniformly rejected.
`
`B.
`
`The Office’s Construction of “Domain Name Service System” Is Correct
`
`In the ACP, the Office correctly found that a Domain Name Service (or DNS) “System”
`
`is “reasonably interpreted as comprising a single device or multiple devices.” ACP at 15. In
`
`Petitioner Apple - EX. 1070, p. 3
`
`Petitioner Apple - Ex. 1070, p. 3
`
`

`

`Control No. 95f001,?88
`Comments of the Requester on the Patent Owner Response
`
`support of this interpretation, the Office noted the ’504 patent itself describes the DNS system as
`
`comprising multiple components, including “gatekeeper 2603, DNS proxy 2610 and DNS server
`
`2609.” ACP at 15 (citing ’504 patent at col.40, 1135-48). The Office also agreed with Requester
`
`that the “DNS system according to the claim can be distributed across multiple computer
`
`systems.” ACP at 15 (citing Fratto Declaration, June 25, 2012, paragraph 30). In response,
`
`Patent Owner contends the Office improperly read this term to have “no bounds whatsoever.”
`
`Second Response at 3 (asserting Office “stretches th[e] understanding to contend that virtually
`
`any device—regardless of whether it has any DNS functionality—may be a ‘DNS device” as
`
`long as it is in the same network as at lease one device that actually has DNS functionality”).
`
`Patent Owner grossly misrepresents the Office’s statements, which were made in
`
`response to Patent Owner’s attempt in the First Response to improperly narrow the term “DNS
`
`system” to mean a “special and separate DNS device.” ACP at 16. The Office properly rejected
`
`that theory because nothing in the claim language or the ”504 disclosure supports Patent Owner’s
`
`contentions. First, the claims recite simply “Domain Name Service Sm,” not a “special and
`
`separate DNS device.” The claims also contain no language specifying which devices may or
`
`may not be included in a “DNS system” and do not expressly or implicitly define specific “DNS
`
`functionalities” that each device must possess (e.g., t0 thus possess some undefined “DNS
`
`functionality”) In fact, “DNS device” and “DNS functionality” appear nowhere in the claims.I
`
`Second, the specification does not use the terms “DNS System,” “DNS device” and “DNS
`
`functionality,” much less expressly define these terms to have the unique meanings advanced by
`
`Patent Owner (e.g., that a DNS system must consist of a particular set of components, all of
`
`which have “significant DNS functionality”). See Second Response at 4. Finally, Patent
`
`Owner’s argument is inconsistent with statements it made to the Court in concurrent litigation in
`
`Texas, where it asserted a “domain name service system” was simply “a computer system that
`
`includes a domain name service (DNS).” Markman Order, Ex. A to the Comments, at 19
`
`(emphasis added). Patent Owner’s improper attempt to import unclaimed limitations into the
`
`claims via the term “DNS system” should be flatly rejected.
`
`C.
`
`The Construction of “Indication” by the Office Was Correct
`
`1 Patent Owner also insists that the asserted references “contradict the Office’s overbroad
`
`construction of a ‘DNS device.” Second Response at 4. But the Office did not construe “DNS
`device” which is a term that appears nowhere in the claims.
`
`Petitioner Apple - EX. 1070, p. 4
`
`Petitioner Apple - Ex. 1070, p. 4
`
`

`

`Control No. 95f001,?88
`Comments of the Requester on the Patent Owner Response
`
`Patent Owner asserts the Office improperly construed the claim term “indication.” In the
`
`First Action, the Office found this term had a broad meaning, and encompassed a variety of types
`
`of events. First Action (Order) at 7, 10,
`
`l 1. In the ACP, the Office elaborated on its findings,
`
`stating that, as the term is used in the claims, “indication” “may be construed broadfy to mean a
`
`visible message or signal to a user.” ACP at 18 (emphasis added). The Office also pointed to
`
`examples in the specification of the ’504 patent that describe various methods of providing an
`
`“indication.” See, e.g., ACP at 18 (citing col.4l, 11.41-49) (observing a “request would result in
`
`an indication ofsecure communication (establishment ofa VPN).”) (emphasis added). The
`
`Office thus confirmed that “indication” in its broadest reasonable construction encompasses a
`
`variety of types of indications, and that neither the language in the claims nor the specification
`
`limited the meaning of this term to one or a handful of particular types of indications.
`
`Consequently, the Office correctly found the term “indication” encompassed (but was not limited
`
`to) “a visible message or signal to user” and that such a message or signal could include
`
`“establishment of a VPN.” ACP at 18. The Office’s conclusions were consistent with
`
`explanations provided in the Request, which the Office relied upon and incorporated into the
`
`First Action. Request at 38-45. And, critically, in the ACP, the Office did not change any aspect
`
`of the rejections imposed in the First Action based on its comments about this claim term.
`
`Despite this, Patent Owner complains that the Office has adopted a new construction for
`
`“indication” that is “inconsistent” with the specification. Specifically, Patent Owner asserts that
`
`an indication cannot reasonably be construed to be something “such as merely returning an IP
`
`address, a public key, or a certificate demonstrating authenticity of the source of the public key.”
`
`Id. at 5-6. Yet, here, Patent Owner is simply being duplicitous. Indeed, during the litigation,
`
`Patent Owner first contended that no construction was necessary for “indication” and,
`
`significantly, that the term should not be limited to “visible messages or signals to a user.” Id.
`
`Patent Owner also contended that an “indication” could be conveyed by provision of a
`
`certificate, stating that “in preparing devices for the FaceTime call, Apple’s Server(s) ensure that
`
`the participant devices have local iPhone security certificates. .
`
`VirnetX Amended
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`Infringement Contentions ’21 l patent at 8 (emphasis added).
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`Indeed, Patent Owner took the
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`position that the term should not be limited or restricted by the patent Specification, relying on
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`Judge Davis’s general admonition that “[t]he specification’s disclosure or omission of examples
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`does not create limitation on claims.” See Reply Markman Br. at 9. Against this backdrop, Patent
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`Petitioner Apple - EX. 1070, p. 5
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`Petitioner Apple - Ex. 1070, p. 5
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`

`

`Control No. 95001388
`Comments of the Requester on the Patent Owner Response
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`Owner cannot now argue (absent a claim amendment) that the broadest reasonable interpretation
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`for “indication” excludes use of certificates, encryption keys, or similar security parameters that
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`are returned to the requester, or that only an indication “visible to a user” can satisfy the broadest
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`reasonable construction of the claims.
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`Patent Owner also responds with a number of irrelevant and unfounded criticisms. For
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`example, Patent Owner suggests it has been prejudiced because the Office did not use only one
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`of the possible meanings of an “indication” in every rejection that was imposed. This, Patent
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`Owner complains, requires it to “guess as to the true basis of the rejection.” Patent Owner’s
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`complaint is baseless. The Office employed its constructions in a manner dictated by the prior
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`art being applied to the claims in each instance, and clearly explained how the prior art in each
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`instance met the “indication” limitation in the claims. The rejections thus were clear and precise,
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`and only through studied ignorance can Patent Owner contend otherwise.
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`III.
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`The Rejections 0f the Claims Were Proper
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`A.
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`Response to Patent Owner’s Arguments Regarding Rejection of Claims 1, 2,
`5, 6, 8—9, and 14—60 as Anticipated by Sohma (Issues 1~8)
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`1.
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`Independent Claims 1, 36, and 60
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`Soiana describes domain name service systems (“DNS systems") that establish secure
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`communication links between an initiator (the source domain) and a responder (the destination
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`domain). See Request at 39-46; ACP at ?. Soiana also explains that its DNS systems are
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`connected to a communication network, store a plurality of domain names and corresponding
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`network addresses, receive queries for a network address and comprises an indication that it (i.e.,
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`the “domain name service system") supports establishing secure communication links. Solana at
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`43-44. Consequently, the Office found that Solana describes “DNS systems” that anticipate
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`independent claims I, 36 and 60.
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`In its Second Response, Patent Owner asserts the Sotana DNS
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`systems do not: (1) “comprise an indication that the domain name service system supports
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`establishing a secure communication link or (2) “store domain names and corresponding network
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`addresses” and “receive a query for network address.” Each assertion is incorrect.
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`a.
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`Selena Discloses “a Domain Name Service System Configured
`to .
`. . Comprise an Indication that the Domain Name Service
`System Supports Establishing a Secure Communication Link.”
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`In the ACP, the Office correctly found that Solana discloses “a Domain Name Service
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`System configured to .
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`.
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`. comprise an indication that the domain name service system supports
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`Petitioner Apple - EX. 1070, p. 6
`
`Petitioner Apple - Ex. 1070, p. 6
`
`

`

`Control No. 95001388
`Comments of the Requester on the Patent Owner Response
`
`establishing a secure communication link.” ACP at 22. This was consistent with the Office’s
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`finding in the First Action that Soiana satisfied the claimed “indication” in part through “the
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`public keys and signatures (encryption keys) provide[d] by the DNSsec direction service.” First
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`Action (Order) at 7. 1n the ACP, the Office also pointed out that Patent Owner had not
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`specifically contested this finding about the “indication” in the first Office Action, but had
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`simply stood by its incorrect position that the systems described in Solana are not “DNS
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`systems.” See, e.g., ACP at 22 (“[P]atent Owner’s arguments .
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`.
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`. appear premised on the notion
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`that Solana fails to disclose a DNS system storing domain names and corresponding network
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`addresse[s] and configured to receive a query for a network address, which is incorrect for the
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`reasons previously explained”). See aiso First Response at 16-18 (showing Patent Owner did
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`challenged only whether such “indication[s]” were provided by a “DNS system”).
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`Patent Owner now, in an untimely fashion, contends tha