Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`Paper No. 1
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION INTERNATIONAL
`CORPORATION,
`Patent Owner
`
`Patent No. 7,418,504
`Issued: August 26, 2008
`Filed: November 18, 2003
`Inventors: Victor Larson, et al.
`Title: AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS
`USING SECURE DOMAIN NAMES
`____________________
`
`Inter Partes Review No. IPR2013-00394
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW ............................................................................ 1
`A.
`Certification the ’504 Patent May Be Contested by Petitioner ............ 1
`B.
`Fee for Inter Partes Review (§ 42.15(a)) .............................................. 3
`C. Mandatory Notices (37 CFR § 42.8(b)) ............................................... 3
`1.
`Real Party in Interest (§ 42.8(b)(1)) ........................................... 3
`2.
`Other Proceedings (§ 42.8(b)(2)) ............................................... 4
`3.
`Designation of Lead and Backup Counsel ................................. 5
`4.
`Service Information (§ 42.8(b)(4)) ............................................ 5
`Proof of Service (§§ 42.6(e) and 42.105(a)) ........................................ 6
`D.
`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§ 42.104(B)) .................................................................................................. 6
`III. RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT ......................................................................................................... 6
`A.
`Effective Filing Date and Prosecution History of the ’504 patent ....... 6
`B.
`Person of Ordinary Skill in the Art ...................................................... 8
`C.
`Construction of Terms Used in the Claims .......................................... 8
`1.
`Domain Name (Claims 1-3, 5-8 and 14-60) .............................. 9
`2.
`Domain Name Service System (Claims 1-3, 5-8 and 14-
`60) .............................................................................................. 9
`Indication (Claims 1-3, 5-8 and 14-60) ................................... 11
`3.
`Secure Communication Link (Claims 1-3, 5-8 and 14-60) ..... 12
`4.
`Secure Name (Claims 3, 24, 25, 48, and 49) ........................... 15
`5.
`IV. PRECISE REASONS FOR RELIEF REQUESTED ................................... 16
`A.
`Claims 1-3, 5-8, and 14-60 Are Anticipated by Beser ....................... 16
`1.
`Beser Anticipates Claim 1 ....................................................... 16
`2.
`Beser Anticipates Claim 36 ..................................................... 19
`3.
`Beser Anticipates Claim 60 ..................................................... 19
`4.
`Beser Anticipates Claims 2 and 37 .......................................... 20
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`5.
`Beser Anticipates Claim 3 ....................................................... 20
`Beser Anticipates Claim 5 ....................................................... 21
`6.
`Beser Anticipates Claim 6 ....................................................... 21
`7.
`Beser Anticipates Claim 7 ....................................................... 22
`8.
`Beser Anticipates Claim 8 ....................................................... 22
`9.
`10. Beser Anticipates Claims 14 and 38 ........................................ 22
`11. Beser Anticipates Claims 15 and 39 ........................................ 23
`12. Beser Anticipates Claims 16 and 40 ........................................ 24
`13. Beser Anticipates Claims 17 and 41 ........................................ 25
`14. Beser Anticipates Claims 18 and 42 ........................................ 26
`15. Beser Anticipates Claims 19 and 43 ........................................ 26
`16. Beser Anticipates Claims 20 and 44 ........................................ 27
`17. Beser Anticipates Claims 21 and 45 ........................................ 27
`18. Beser Anticipates Claims 22 and 46 ........................................ 27
`19. Beser Anticipates Claims 23 and 47 ........................................ 28
`20. Beser Anticipates Claims 24 and 48 ........................................ 28
`21. Beser Anticipates Claims 25 and 49 ........................................ 29
`22. Beser Anticipates Claims 26 and 50 ........................................ 29
`23. Beser Anticipates Claims 27, 33, 51, and 57 ........................... 30
`24. Beser Anticipates Claims 28 and 52 ........................................ 31
`25. Beser Anticipates Claims 29, 30, 31, 32, 53, 54, 55, and
`56 .............................................................................................. 31
`26. Beser Anticipates Claims 34 and 58 ........................................ 32
`27. Beser Anticipates Claims 35 and 59 ........................................ 33
`Beser Considered with RFC 2401 Renders Obvious Claims 1-3,
`5-8, and 14-60 ..................................................................................... 35
`1.
`Claims 1, 36, and 60 Would Have Been Obvious ................... 36
`2.
`Dependent Claims 8, 28, and 52 .............................................. 38
`3.
`Dependent Claims 16, 17, 22, 24, 26, 27, 35, 40, 41, 46,
`48, 50, 51, and 59 ..................................................................... 38
`
`ii
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`B.
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`4.
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`Dependent Claims 2, 3, 5-7, 14, 15, 18-21, 23, 25, 29-34,
`37-39, 42-45, 47, 49, and 53-58 ............................................... 39
`Claims 1-3, 5-8, and 15-60 Are Unpatentable Over Provino ............ 39
`1.
`Provino Anticipates Claims 1 .................................................. 39
`2.
`Provino Anticipates Claims 36 ................................................ 42
`3.
`Provino Anticipates Claims 60 ................................................ 43
`4.
`Provino Anticipates Claims 2 and 37 ...................................... 44
`5.
`Provino Anticipates Claim 5 .................................................... 45
`6.
`Provino Anticipates Claim 6 .................................................... 45
`7.
`Provino Anticipates Claim 7 .................................................... 45
`8.
`Provino Anticipates Claim 8 .................................................... 46
`9.
`Provino Anticipates Claims 14 and 38 .................................... 46
`10.
`Provino Anticipates Claims 15 and 39 .................................... 47
`11.
`Provino Anticipates Claims 16 and 40 .................................... 47
`12.
`Provino Anticipates Claims 17 and 41 .................................... 48
`13.
`Provino Anticipates Claims 18 and 42 .................................... 48
`14.
`Provino Anticipates Claims 19 and 43 .................................... 49
`15.
`Provino Anticipates Claims 20 and 44 .................................... 49
`16.
`Provino Anticipates Claims 21 and 45 .................................... 50
`17.
`Provino Anticipates Claims 22 and 46 .................................... 50
`18.
`Provino Anticipates Claims 23 and 47 .................................... 51
`19.
`Provino Anticipates Claims 24 and 48 .................................... 51
`20.
`Provino Anticipates Claims 25 and 49 .................................... 52
`21.
`Provino Anticipates Claims 26 and 50 .................................... 52
`22.
`Provino Anticipates Claims 27, 33, 51, and 57 ....................... 53
`23.
`Provino Anticipates Claims 28 and 52 .................................... 53
`24.
`Provino Anticipates Claims 34 and 58 .................................... 54
`25.
`Provino Anticipates Claims 35 and 59 .................................... 54
`Provino in View of Beser Renders Obvious Claims 3, 25, 29-
`32, 49, and 53-56 ................................................................................ 55
`
`C.
`
`D.
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`1.
`
`2.
`
`Provino in view of Beser Renders Obvious Claims 3, 25,
`and 49 ....................................................................................... 57
`Provino in View of Beser Renders Obvious Claims 29,
`30, 31, 32, 53, 54, 55, and 56 ................................................... 58
`CONCLUSION ............................................................................................. 60
`
`
`V.
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`Attachment A. Proof of Service of the Petition
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`Attachment B. List of Evidence and Exhibits Relied Upon in Petition
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`
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`
`
`iv
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`I.
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`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`A. Certification the ’504 Patent May Be Contested by Petitioner
`Petitioner certifies that U.S. Patent No. 7,418,504 (the ’504 patent) (Ex.
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`1001) is available for inter partes review. Petitioner certifies that it is not barred or
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`estopped from requesting inter partes review of the claims of the ’504 patent on
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`the grounds identified in this Petition. Neither Petitioner, nor any party in privity
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`with Petitioner, has filed a civil action challenging the validity of any claim of the
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`’504 patent. The ’504 patent has not been the subject of a prior inter partes review
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`by Petitioner or a privy of Petitioner.
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`Petitioner also certifies this petition for inter partes review is filed within
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`one year of the date of service of a complaint alleging infringement of a patent.
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`Petitioner was served with a complaint alleging infringement of the ’504 patent on
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`December 31, 2012, which led to Civil Action No. 6:12-cv-00855-LED in the
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`Eastern District of Texas. Ex. 1050. Because the date of this petition is less than
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`one year from December 31, 2012, this petition complies with 35 U.S.C. § 315(b).
`
`Petitioner notes it was served with a complaint asserting infringement of the
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`’504 patent prior to December 31, 2012. Specifically, in Civ. Act. No: 6:10-cv-
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`417 (the “2010 Litigation”), Petitioner was served on February 4, 2011 with an
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`amended complaint asserting infringement of the ’504 patent. Petitioner was
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`served with the original complaint leading to the 2010 Litigation in August of
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`2010. Also, on February 26, 2013, the Court established an additional civil action
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`(Civ. Act. No. 6:13-cv-00211-LED) arising out of the 2010 Litigation. The
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`February 2011 amended complaint does not foreclose the present petition, as
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`Patent Owner served a new complaint on Petitioner asserting infringement of the
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`’504 patent in December of 2012.
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`Petitioner submits this conclusion is compelled by the plain language of
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`§ 315(b). Notably, § 315(b) does not specify a one-year deadline that runs from
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`the date of the first complaint served on a petitioner. Rather, it states “[a]n inter
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`partes review may not be instituted if the petition requesting the proceeding is filed
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`more than 1 year after the date on which the petitioner, real party in interest, or
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`privy of the petitioner is served with a complaint alleging infringement of the
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`patent.” Thus, a petition filed within 1 year of the date any complaint alleging
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`infringement of the patent is served on a petitioner is timely under the plain
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`statutory language of § 315(b). This is also the only reading of § 315(b) consistent
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`with the statutory design. Congress designed the IPR authority to be an option to
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`contest validity of a patent concurrently with district court proceedings involving
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`the same patent. A timely filed IPR proceeding in any action a patent owner elects
`
`to commence is perfectly consistent with this statutory design.
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`Reading § 315(b) in this manner also is the only way to effectively foreclose
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`gaming of the system by a Patent Owner. Indeed, if § 315(b) were read to
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`foreclose IPR proceedings in a second, independent action for infringement a
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`patent owner elected to commence, it would unfairly foreclose use of the IPR
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`system. For example, a patent owner could assert irrelevant claims in a first action,
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`wait a year, and then assert different claims in a new action that do present risks to
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`a third party. In this scenario, the patent owner would foreclose legitimate use of
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`an IPR to contest validity of the patent claims asserted in the second action based
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`on the third party’s reasonable business decision to not dispute validity of
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`irrelevant claims in the first action. Rather than attempting to decipher which
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`scenarios would be improper, the Board should follow the plain meaning of
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`§ 315(b), and find a petition timely if it is filed within 1 year of the date any
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`complaint alleging infringement of the patent is served on a Petitioner.
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`Finally, reading § 315(b) to foreclose this petition based on the August 2010
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`complaint would be particularly unjust in this case. The 1-year period following
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`service of the August 2010 complaint expired before it was possible to submit an
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`IPR petition – petitions could only be filed on or after September 16, 2012.
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`Fee for Inter Partes Review (§ 42.15(a))
`
`B.
`The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)
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`to Deposit Account No. 50-1597.
`
`C. Mandatory Notices (37 CFR § 42.8(b))
`Real Party in Interest (§ 42.8(b)(1))
`1.
`The real party of interest of this petition pursuant to § 42.8(b)(1) is Apple
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`Inc. (“Apple”) located at One Infinite Loop, Cupertino, CA 95014.
`
`2. Other Proceedings (§ 42.8(b)(2))
`The ’504 patent is the subject of a number of civil actions including: (i) Civ.
`
`Act. No. 6:13-cv-00211-LED (E.D. Tex.), filed February 26, 2013; (ii) Civ. Act.
`
`No. 6:12-cv-00855-LED (E.D. Tex.), filed November 6, 2012; (iii) Civ. Act. No.
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`6:10-cv-00417-LED (E.D. Tex.), filed August 11, 2010 (the “2010 litigation”);
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`(iv) Civ. Act. No. 6:11-cv-00018-LED (E.D. Tex), (iv) Civ. Act. No. 6:13-cv-
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`00351-LED (E.D. Tex), filed April 22, 2013. Actions (i) to (iii) name Petitioner as
`
`a defendant.
`
`The ’504 patent is also the subject of two inter partes reexamination, Nos.
`
`95/001,788 and 95/001,851. Petitioner is the real party of interest in the ’788
`
`proceeding. On June 25, 2013, the Office issued a Right of Appeal Notice in the
`
`’788 proceeding maintaining rejections of all 60 claims in the ’504 patent,
`
`including on prior art references relied upon in this Petition. Similarly, on June 25,
`
`2013, the Office issued a Right of Appeal Notice in the ’851 proceeding
`
`maintaining rejections of all 60 claims (with the exception of claim 11) in the ’504
`
`patent.
`
`The ’504 patent is also the subject of IPR2013-00393 being filed
`
`concurrently by Petitioner. In addition, the ’504 patent is the subject of IPR2013-
`
`00377 filed by New Bay Capital LLC. Petitioner has no relationship to and is not
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`in privity with New Bay Capital LLC.
`
`Petitioner notes that multiple proceedings involve the ’504 patent are
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`pending before the Board. Petitioner may request authorization from the Board to
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`move to transfer or consolidate the ’788 proceeding with the present proceeding.
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`The ’788 proceeding has established all claims in the ’504 patent are unpatentable.
`
`Petitioner observes, however, that if a final unappealable decision is rendered in
`
`litigation involving the ’504 patent finding certain claims of the ’504 patent not
`
`invalid, the Office may not be authorized to maintain the ’788 proceeding for those
`
`claims on issues that were or could have been raised in that litigation. No such
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`limitations would apply to an inter partes review proceeding of the ’504 patent.
`
`Given the past findings of the Office that all of the ’504 claims are unpatentable,
`
`there is a strong public interest in completing review of the patentability of these
`
`claims, which can be achieved by instituting the present IPR review, and taking
`
`appropriate actions regarding the ’788 proceeding.
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`Designation of Lead and Backup Counsel
`
`3.
`Lead Counsel
`Jeffrey P. Kushan
`Reg. No. 43,401
`jkushan@sidley.com
`(202) 736-8914
`4.
`Service on Petitioner may be made by mail or hand delivery to: Sidley
`
`Backup Lead Counsel
`Joseph A. Micallef
`Reg. No. 39,772
`jmicallef@sidley.com
`(202) 736-8492
`Service Information (§ 42.8(b)(4))
`
`Austin LLP, 1501 K Street, N.W., Washington, D.C. 20005. The fax number for
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`lead and backup counsel is (202) 736-8711.
`
`Proof of Service (§§ 42.6(e) and 42.105(a))
`D.
`Proof of service of this petition is provided in Attachment A.
`
`II.
`
`Identification of Claims Being Challenged (§ 42.104(b))
`Claims 1-3, 5-8 and 14-60 of the ’504 patent are unpatentable as being
`
`anticipated under 35 U.S.C. § 102(a) & (e), and/or for being obvious over the prior
`
`art under 35 U.S.C. § 103. Specifically:
`
` (i) Claims 1-3, 5-8 and 14-60 are anticipated under § 102(e) by Beser;
`and
`
`(ii) Claims 1-3, 5-8 and 14-60 are obvious under § 103 based on Beser in
`view of RFC 2401; and
`
`(iii) Claims 1-2, 5-8 and 14-28, 33-52, 57-60 are anticipated under
`§ 102(e) by Provino
`
`(iv) Claims 3, 25, 29-32, 49, and 53-56 are obvious under § 103 based on
`Provino in view of Beser
`
`Petitioner’s proposed construction of the contested claims, the evidence relied
`
`upon, and the precise reasons why the claims are unpatentable are provided in
`
`§ IV, below. The evidence relied upon in support of this petition is listed in
`
`Attachment B.
`
`III. Relevant Information Concerning the Contested Patent
`A. Effective Filing Date and Prosecution History of the ’504 patent
`The ’504 patent issued from U.S. Application No. 10/714,849, filed
`
`November 18, 2003. The ’849 application is a continuation of application
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`09/558,210, filed on April 26, 2000, which is a continuation-in-part of application
`
`09/504,783, filed on February 15, 2000, which is a continuation-in-part of U.S.
`
`Application No. 09/429,643, filed on October 29, 1999. The ’210, ’783 and ’643
`
`applications each claim priority to Provisional Application Nos. 60/106,261, filed
`
`October 30, 1998 and 60/137,704, filed June 7, 1998.
`
`Claims 1, 36 and 60 of the ’504 patent are independent claims. Claims 2-35
`
`depend directly or indirectly from claim 1, and claims 37-59 depend directly or
`
`indirectly from claim 36. Claims 2-35 and 37-59 cannot enjoy an effective filing
`
`date earlier than that of claims 1 and 36, respectively, from which they depend
`
`(i.e., no earlier than February of 2000).
`
`Claims 1, 36 and 60 of the ’504 patent rely on information not found in the
`
`disclosure of any application filed prior to the ’783 application on February 15,
`
`2000. For example, claim 1 of the ’504 patent requires “[a] system for providing a
`
`domain name service for establishing a secure communication link” that is
`
`configured to “store a plurality of domain names and corresponding network
`
`addresses, to receive a query for a network address, and to comprise an indication
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`that the domain name service system supports establishing a secure
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`communications link.” Claim 36 requires the steps of “connecting the domain
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`name service system to a communication network” and “supporting an indication
`
`that the domain name service system supports establishing a secure communication
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`link.” Claim 60 likewise recites “[a] method of providing a domain name service
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`for establishing a secure communication link” and “connecting a domain name
`
`service system to a communication network.” No application filed prior to the
`
`’783 application even mentions the phrase “domain name service,” much less
`
`provides a written description of systems or processes corresponding to the ’504
`
`patent claims. The effective filing date of claims 1-3, 5-8 and 14-60 of the ’504
`
`patent thus is not earlier than February 15, 2000.
`
`Person of Ordinary Skill in the Art
`
`B.
`A person of ordinary skill in the art in the field of the ’504 patent would
`
`have been someone with a good working knowledge of networking protocols,
`
`including those employing security techniques, as well as computer systems that
`
`support these protocols and techniques. The person also would be very familiar
`
`with Internet standards related to communications and security, and with a variety
`
`of client-server systems and technologies. The person would have gained this
`
`knowledge either through education and training, several years of practical
`
`working experience, or through a combination of these. Ex. 1003 at ¶ 62.
`
`C. Construction of Terms Used in the Claims
`In this proceeding, claims must be given their broadest reasonable
`
`construction in light of the specification. 37 CFR § 42.100(b). The broadest
`
`reasonable construction generally should encompass subject matter that Patent
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`Owner contends literally infringes the claims, and should reflect constructions
`
`proposed by Patent Owner in past or concurrent litigation. Also, if Patent Owner
`
`contends terms in the claims should be read to have a special meaning, those
`
`contentions should be disregarded unless Patent Owner also amends the claims
`
`compliant with 35 U.S.C. § 112 to make them expressly correspond to those
`
`contentions. See 77 Fed. Reg. 48764 at II.B.6 (August 14, 2012); cf. In re Youman,
`
`679 F.3d 1335, 1343 (Fed. Cir. 2012). In the proposed constructions below,
`
`Petitioner identifies subject matter which falls within the scope of the claims, read
`
`in their broadest reasonable construction, which Petitioner submits is sufficient for
`
`the purposes of this proceeding.
`
`Domain Name (Claims 1-3, 5-8 and 14-60)
`1.
`The ’504 patent does not define the term “domain name.” A person of
`
`ordinary skill would understand that the ordinary meaning of a “domain name” is a
`
`hierarchical sequence of words in decreasing order of specificity that corresponds
`
`to a numerical IP address. Ex. 1003 at ¶¶ 89-91; see generally ¶¶ 86-94. Patent
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`Owner, however, has asserted a “domain name” is simply “a name corresponding
`
`to an IP address.” Ex. 1046 at 14-15. The broadest reasonable construction of
`
`“domain name” should encompass Patent Owner’s contention that it can be “a
`
`name corresponding to an IP address.” Ex. 1003 at ¶¶ 180-182.
`
`2.
`
`Domain Name Service System (Claims 1-3, 5-8 and 14-60)
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`The ’504 patent does not define the term “domain name service” or
`
`“domain name service system.” A domain name service would be understood to
`
`be a service that performs domain name resolution according to procedures defined
`
`by Internet standards, namely, RFC 1034 (Ex. 1016) and RFC 1035 (Ex. 1017).
`
`Ex. 1003 at ¶¶ 79-85, 95, 101-108. Under those standard procedures, either an IP
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`address or an error may be returned. Ex. 1003 at ¶¶ 109-118.
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`During litigation, Petitioner advocated, and the Court agreed, that a person
`
`of ordinary skill would understand the ordinary meaning of a “domain name
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`service” to be “a lookup service that returns an IP address for a requested domain
`
`name to the requester.” (emphasis added) Ex. 1049 at 14-15. The Court found
`
`this was how domain name services inherently function. Id. Patent Owner
`
`asserted, however, that a “domain name service” is “a lookup service that returns
`
`an IP address for a requested domain name.” Ex. 1046 at 13-14. Based on Patent
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`Owner’s contentions, the broadest reasonable construction of “domain name
`
`service” should encompass “a lookup service that will return an IP address or an
`
`error code in response to a domain name resolution request.”
`
`The ’504 patent also does not define or attach any special meaning to the
`
`term “system.” In litigation, Patent Owner asserted no construction of “domain
`
`name service system” was necessary, and alternatively proposed it is “a computer
`
`system that includes a domain name service (DNS).” Ex. 1046 at 19-20. One of
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`ordinary skill in the art would understand the broadest reasonable construction of
`
`“system” could include one or more discrete computers or devices that individually
`
`or together perform specified functions, and which can also perform other
`
`functions. Ex. 1003 at ¶¶ 188-189. Thus, the broadest reasonable construction of
`
`“domain name service system” encompasses “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. 1003 at ¶ 189.
`
`This construction is consistent with the Examiner’s findings in the ’788
`
`reexamination of the broadest reasonable construction (i.e., that a “DNS system is
`
`reasonably interpreted as comprising a single device or multiple devices.”) Ex.
`
`1071 at 16-18.
`
`Indication (Claims 1-3, 5-8 and 14-60)
`3.
`The ’504 patent does not define the term “indication.” In fact, there is no
`
`discussion of “indications” anywhere in the portion of the ’504 disclosure
`
`discussing DNS systems. See, e.g., Ex. 1001 at 40:51-43:38. In litigation, Patent
`
`Owner asserted no construction of this term was necessary, and the Court agreed.
`
`Ex. 1046 at 24-25. In the ’788 proceeding, the Examiner found the term broadly
`
`encompassed:
`
`... the ability of the user to communicate using a secure link after
`boot-up.” If the user attempts to establish a secure communication
`link using a DNS system after booting and is able to do so, then the
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`11
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`user has been provided a broadly recited and discernible “indication”
`that the DNS in some manner supports establishing a communication
`link.
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`Ex. 1071 at 22 (emphasis original). The broadest reasonable construction of
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`“indication” thus, could encompass anything that indicates the domain name
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`service system supports secure communications, including a visible or audio
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`signal, or the establishment of a secure communication link itself. Ex. 1003 at
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`¶¶ 190-192.
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`Secure Communication Link (Claims 1-3, 5-8 and 14-60)
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`4.
`The ’504 patent explains a “secure communication link” is “a virtual private
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`communication link over the computer network.” Ex. 1001 at 8:51-54. A “secure
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`communication link” therefore must encompass virtual private networks. Ex. 1003
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`at ¶¶ 193-195. In the 2010 litigation involving the’504 patent and a related patent
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`(U.S. Patent No. 6,502,135) (the ’135 patent) which has an identical disclosure,
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`Patent Owner made specific representations as to what a VPN constitutes, which
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`are relevant to construction of “secure communication link” in the ’504 patent
`
`claims.
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`First, Patent Owner contended the ordinary meaning of a VPN requires
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`network traffic sent over the VPN to be encrypted. See Ex. 1046 at 3-8; Ex. 1003
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`at ¶ 197. The District Court agreed, and held a VPN is “a network of computers
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`which privately and directly communicate with each other by encrypting traffic
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`on insecure paths between the computers where the communication is both secure
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`and anonymous.” Ex. 1049 at 8 (emphasis added). The ’504 patent, however,
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`states “Data security is usually tackled using some form of data encryption” (Ex.
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`1001 at 1:55-56) and refers to a technique that does not use encryption to protect
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`the anonymity of the VPN. Ex. 1001 at 2:42-52; see also Ex. 1003 at ¶¶ 193-200.
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`Also, while the ’504 patent shows a particular type of VPN – one using “TARP”
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`routers – that does use encryption (Ex. 1001 at 3:14-3:44), it does not state this
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`scheme is mandatory for DNS-based VPN schemes. See, e.g., Ex. 1001 at 39:52-
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`56 (“The VPN is preferably implemented using the IP address “hopping” features
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`of the basic invention described above . . .”) (emphasis added). The ’504 patent
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`also does not show any explicit encryption steps being used in DNS-related VPN
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`schemes. See Ex. 1001 at 39:1-41:59. In February of 2000, it was understood a
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`VPN could be established without encryption; namely, by using “obfuscation” or
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`hiding techniques to ensure the security and anonymity of the network traffic over
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`the public network. See Ex. 1003 at ¶ 200. The broadest reasonable construction
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`of a “secure communication link” thus would not require the network traffic in a
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`VPN to be encrypted.
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`Second, Patent Owner disputed in the 2010 litigation that the ’135 claims
`
`require computers in a VPN to “directly communicate with each other.” See, e.g.,
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`Ex. 1046 at 1-3. The Court disagreed, and found that the Patent Owner had
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`disclaimed from the literal scope of the ’135 claims VPNs that do not involve
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`“direct communications” between the involved computers. Ex. 1047 at 5-9; see
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`also Ex. 1049 at 6-8. The Court specifically relied on Patent Owner’s
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`representations to the Office during the ’269 reexamination proceeding involving
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`the ’135 patent; namely, Patent Owner’s contention that the Aventail systems did
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`not show a VPN because “computers connected according to Aventail do not
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`communicate directly with each other.” Ex. 1049 at 6-8. The Court also
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`observed “…routers, firewalls, and similar servers that participate in typical
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`network communication do not impede ‘direct’ communication between a client
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`and target computer.” Ex. 1049 at 8 (FN2). The Court thus determined that a
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`portion of the literal scope of the ’135 patent claims has been disclaimed (i.e.,
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`that covering VPNs in which computers do not “directly” communicate). The
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`logical consequence of that determination is that the ’504 claims (like the ’135
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`claims) in their broadest reasonable construction also encompass this
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`disclaimed subject matter. Patent Owner’s prosecution disclaimer – which is
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`plainly effective in a district court proceeding to limit the claims because the
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`claims cannot be amended in that proceeding – should not be given weight in this
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`proceeding under the broadest reasonable construction standard. See, e.g.,
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`M.P.E.P. § 2111; id. at § 2111.01(I). Instead, in this proceeding, Patent Owner
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`must amend the claims to exclude subject matter it has disclaimed.
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`The broadest reasonable construction of “secure communication link” thus
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`encompasses “a communication link in which computers privately and directly
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`communicate with each other on insecure paths between the computers where the
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`communication is both secure and anonymous, and where the data transferred may
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`or may not be encrypted.” See Ex. 1003 at ¶¶ 193-200. Petitioner observes that
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`the claims (disregarding Patent Owner’s disclaimer) necessarily encompass what
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`the Office found to be described in Aventail (Ex. 1007), and that Aventail actually
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`does describe VPNs in which computers communicate “directly” with each other
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`pursuant to the Court’s construction.
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`Secure Name (Claims 3, 24, 25, 48, and 49)
`5.
`During prosecution of a related patent in the family of the ’504 patent, (i.e.,
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`U.S. Patent No. 7,188,180 patent), Ex. 1073 at 9, Patent Owner argued that a
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`“‘secure name’ can be a secure non-standard domain name, such as a secure non-
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`standard top-level domain name (e.g., .scom) or a telephone number.” The only
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`location in the ’504 disclosure where the term “secure name” appears is in the
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`claims (i.e., claims 25 and 49). This term was first introduced by a claim
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`amendment, and has no written description support in the ’504 disclosure. The
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`broadest reasonable construction of the term “secur