Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`Paper No. 1
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`
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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. 7,921,211
`Issued: April 5, 2011
`Filed: August 17, 2007
`Inventors: Victor Larson, et al.
`Title: AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS
`USING SECURE DOMAIN NAMES
`____________________
`
`Inter Partes Review No. IPR2013-00397
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`
`

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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW ............................................................................ 1
`A.
`Certification the ’211 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)) ............................................ 6
`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 ......................................................................................................... 7
`A.
`Effective Filing Date and Prosecution History of the ’211 patent ....... 7
`B.
`Person of Ordinary Skill in the Art ...................................................... 8
`C.
`Construction of Terms Used in the Claims .......................................... 9
`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) ............................................................................................ 10
`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 Aventail .................. 16
`1.
`Aventail Anticipates Claim 1 ................................................... 16
`2.
`Aventail Anticipates Claim 36 ................................................. 20
`3.
`Aventail Anticipates Claim 60 ................................................. 21
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`4.
`Aventail Anticipates Claims 2, 3, and 37 ................................ 22
`Aventail Anticipates Claim 5 ................................................... 23
`5.
`Aventail Anticipates Claim 6 ................................................... 23
`6.
`Aventail Anticipates Claim 7 ................................................... 23
`7.
`Aventail Anticipates Claim 8 ................................................... 24
`8.
`Aventail Anticipates Claims 14 and 38 ................................... 25
`9.
`10. Aventail Anticipates Claims 15 and 39 ................................... 25
`11. Aventail Anticipates Claims 16 and 40 ................................... 27
`12. Aventail Anticipates Claims 17 and 41 ................................... 30
`13. Aventail Anticipates Claims 18 and 42 ................................... 30
`14. Aventail Anticipates Claims 19 and 43 ................................... 31
`15. Aventail Anticipates Claims 20 and 44 ................................... 32
`16. Aventail Anticipates Claims 21 and 45 ................................... 33
`17. Aventail Anticipates Claims 22 and 46 ................................... 33
`18. Aventail Anticipates Claims 23 and 47 ................................... 34
`19. Aventail Anticipates Claims 24 and 48 ................................... 35
`20. Aventail Anticipates Claims 25 and 49 ................................... 35
`21. Aventail Anticipates Claims 26 and 50 ................................... 36
`22. Aventail Anticipates Claims 27 and 51 ................................... 37
`23. Aventail Anticipates Claims 28 and 52 ................................... 38
`24. Aventail Anticipates Claims 29 and 53 ................................... 39
`25. Aventail Anticipates Claims 30 and 54 ................................... 40
`26. Aventail Anticipates Claims 31 and 55 ................................... 41
`27. Aventail Anticipates Claims 32 and 56 ................................... 42
`28. Aventail Anticipates Claims 33 and 57 ................................... 42
`29. Aventail Anticipates Claims 34 and 58 ................................... 43
`30. Aventail Anticipates Claims 35 and 59 ................................... 44
`Aventail In View of Beser Renders Obvious Claims 3, 31, 32,
`55, and 56 ........................................................................................... 46
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`ii
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`B.
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`1.
`Dependent Claim 3 Would Have Been Obvious ..................... 47
`Dependent Claims 31 and 55 Would Have Been Obvious ...... 47
`2.
`Dependent Claims 32 and 56 Would Have Been Obvious ...... 48
`3.
`Aventail In View of a Person of Ordinary Skill Renders
`Obvious Claims 31, 32, 55, and 56 .................................................... 49
`CONCLUSION ............................................................................................. 50
`
`
`C.
`
`V.
`
`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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`iii
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`I.
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`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`A. Certification the ’211 Patent May Be Contested by Petitioner
`Petitioner certifies that U.S. Patent No. 7,921,211 (the ’211 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 ’211 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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`’211 patent. The ’211 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 ’211 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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`’211 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 ’211 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. 7,921,211
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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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`’211 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 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
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`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. 7,921,211
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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. 7,921,211
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`Inc. (“Apple”) located at One Infinite Loop, Cupertino, CA 95014.
`
`2. Other Proceedings (§ 42.8(b)(2))
`The ’211 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.
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`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
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`a defendant.
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`The ’211 patent is also the subject of two inter partes reexamination, Nos.
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`95/001,789 and 95/001,856. Petitioner is the real party of interest in the ’789
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`proceeding. On June 25, 2013, the Office issued a Right of Appeal Notice in the
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`’789 proceeding maintaining rejections of all 60 claims in the ’211 patent,
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`including on prior art references relied upon in this Petition. Similarly, on October
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`June 25, 2013, the Office issued a Right of Appeal Notice in the ’856 proceeding
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`rejecting all 60 claims (with the exception of claim 11) of the ’211 patent. None
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`the rejections maintained in either of these proceedings rest on the references relied
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`upon in this petition.
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`The ’211 patent is also the subject of IPR2013-00398 being filed
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`concurrently by Petitioner. In addition, the ’211 patent is the subject of IPR2013-
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`00378 filed by New Bay Capital LLC. Petitioner has no relationship to and is not
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`in privity with New Bay Capital LLC.
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`Petitioner notes that multiple proceedings involve the ’211 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 ’789 proceeding with the present proceeding.
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`The ’789 proceeding has established all claims in the ’211 patent are unpatentable.
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`Petitioner observes, however, that if a final unappealable decision is rendered in
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`litigation involving the ’211 patent finding certain claims of the ’211 patent not
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`invalid, the Office may not be authorized to maintain the ’789 proceeding for those
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`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 ’211 patent.
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`Given the past findings of the Office that all of the ’211 claims are unpatentable,
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`there is a strong public interest in completing review of the patentability of these
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`claims, which can be achieved by instituting the present IPR review, and taking
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`appropriate actions regarding the ’789 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
`
`Backup Lead Counsel
`Joseph A. Micallef
`Reg. No. 39,772
`jmicallef@sidley.com
`(202) 736-8492
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`Service Information (§ 42.8(b)(4))
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`4.
`Service on Petitioner may be made by mail or hand delivery to: Sidley
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`Austin LLP, 1501 K Street, N.W., Washington, D.C. 20005. The fax number for
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`lead and backup counsel is (202) 736-8711.
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`Proof of Service (§§ 42.6(e) and 42.105(a))
`D.
`Proof of service of this petition is provided in Attachment A.
`
`II.
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`Identification of Claims Being Challenged (§ 42.104(b))
`Claims 1-3, 5-8 and 14-60 of the ’211 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(b) by Aventail
`Connect v 3.01/2.5 Administrator’s Guide (“Aventail”) (Ex. 1007);
`
` (ii) Claims 3, 31-32, and 55-56 are obvious under § 103 based on
`Aventail (Ex. 1007) in view of Beser (Ex. 1008);
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`(iii) Claims 31, 32, 55, and 56 are obvious under§ 103 based Aventail (Ex.
`1007) in view of a Person of Ordinary Skill in the Art
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`Petitioner’s proposed construction of the contested claims, the evidence relied
`
`upon, and the precise reasons why the claims are unpatentable are provided in
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`§ IV, below. The evidence relied upon in support of this petition is listed in
`
`Attachment B.
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`III. Relevant Information Concerning the Contested Patent
`A. Effective Filing Date and Prosecution History of the ’211 patent
`The ’211 patent issued from U.S. Application No. 11/840,560. The ’560
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`application was a continuation of U.S. Application No. 10/714,849, filed
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`November 18, 2003, which became U.S. Patent No. 7,418,504. The ’849
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`application is a continuation of application 09/558,210, filed on April 26, 2000,
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`which is a continuation-in-part of application 09/504,783, filed on February 15,
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`2000, which is a continuation-in-part of U.S. Application No. 09/429,643, filed on
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`October 29, 1999. The ’210, ’783 and ’643 applications each claim priority to
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`Provisional Application Nos. 60/106,261, filed October 30, 1998 and 60/137,704,
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`filed June 7, 1998.
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`Claims 1, 36 and 60 of the ’211 patent are independent claims. Claims 2-35
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`depend directly or indirectly from claim 1, and claims 37-59 depend directly or
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`indirectly from claim 36. Claims 2-35 and 37-59 cannot enjoy an effective filing
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`date earlier than that of claims 1 and 36, respectively, from which they depend
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`(i.e., no earlier than February of 2000).
`
`Claims 1, 36 and 60 of the ’211 patent rely on information not found in the
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`disclosure of any application filed prior to the ’783 application on February 15,
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`2000. For example, claim 1 of the ’211 patent requires “[a] system for providing a
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`domain name service for establishing a secure communication link” that is
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`configured and arranged to “store a plurality of domain names and corresponding
`
`network addresses, to receive a query for a network address, and indicate in
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`response to the query whether the domain name service system supports
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`establishing a secure communications link.” Claim 36 requires the steps of
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`“connecting the domain name service system to a communication network” and
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`indicating that “domain name service system supports establishing a secure
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`communication link.” Claim 60 likewise recites “[a] method of providing a
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`domain name service for establishing a secure communication link” and
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`“connecting a domain name service system to a communication network.” No
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`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 ’211 patent claims. The effective filing date of claims 1-3, 5-
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`8 and 14-60 of the ’211 patent thus is not earlier than February 15, 2000.
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`Person of Ordinary Skill in the Art
`
`B.
`A person of ordinary skill in the art in the field of the ’211 patent would
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`have been someone with a good working knowledge of networking protocols,
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`including those employing security techniques, as well as computer systems that
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`support these protocols and techniques. The person also would be very familiar
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`with Internet standards related to communications and security, and with a variety
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`of client-server systems and technologies. The person would have gained this
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`knowledge either through education and training, several years of practical
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`working experience, or through a combination of these. Ex. 1003 at ¶ 62 .
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`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
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`reasonable construction generally should encompass subject matter that Patent
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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
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`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
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`compliant with 35 U.S.C. § 112 to make them expressly correspond to those
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`contentions. See 77 Fed. Reg. 48764 at II.B.6 (August 14, 2012); cf. In re Youman,
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`679 F.3d 1335, 1343 (Fed. Cir. 2012). In the proposed constructions below,
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`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 ’211 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
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`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
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`to an IP address.” Ex. 1046 at 14-15. The broadest reasonable construction of
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`“domain name” should encompass Patent Owner’s contention that it can be “a
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`name corresponding to an IP address." See Ex. 1003 at ¶¶ 180-182.
`
`Domain Name Service System (Claims 1-3, 5-8 and 14-60)
`2.
`The ’211 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 “a lookup service that returns an IP address for a requested domain
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`name to the requester.” (emphasis added) Ex. 1049 at 14-15. The Court found
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`this was how domain name services inherently function. Id. Patent Owner
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`asserted, however, that a “domain name service” is “a lookup service that returns
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`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
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`service” should encompass “a lookup service that will return an IP address or an
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`error code in response to a domain name resolution request.”
`
`The ’211 patent also does not define or attach any special meaning to the
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`term “system.” In litigation, Patent Owner asserted no construction of “domain
`
`name service system” was necessary, and alternatively proposed it is “a computer
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`system that includes a domain name service (DNS).” Ex. 1046 at 19-20. One of
`
`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
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`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
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`error code in response to a domain name resolution request.” Ex. 1003 at ¶ 189.
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`This construction is consistent with the Examiner’s findings in the ’789
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`reexamination of the broadest reasonable construction (i.e., that a “DNS system is
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`reasonably interpreted as comprising a single device or multiple devices.”) Ex.
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`1071 at 16-18.
`
`Indication (Claims 1-3, 5-8 and 14-60)
`3.
`The ’211 patent does not define the term “indication.” In fact, there is no
`
`discussion of “indications” anywhere in the portion of the ’211 disclosure
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`discussing DNS systems. See, e.g., Ex. 1001 at 38:52-41:43. In litigation, Patent
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`Owner asserted no construction of this term was necessary, and the Court agreed.
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`Ex. 1046 at 24-25. In the ’789 proceeding, the Examiner found the term broadly
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`encompassed:
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`... 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
`user has been provided a broadly recited and discernible “indication”
`that the DNS in some manner supports establishing a communication
`link.
`
`Ex. 1071 at 22 (emphasis original). The broadest reasonable construction of
`
`“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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`¶ 192
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`Secure Communication Link (Claims 1-3, 5-8 and 14-60)
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`4.
`The ’211patent explains a “secure communication link” is “a virtual private
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`communication link over the computer network.” Ex. 1001 at 6:56-59. 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 ’211 patent and a related patent
`
`(U.S. Patent No. 6,502,135) (the ’135 patent) which has an identical disclosure,
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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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 ’211 patent
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`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
`
`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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`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 ’211 patent, however,
`
`states “Data security is usually tackled using some form of data encryption” (Ex.
`
`1001 at 1:34-35) and refers to a technique that does not use encryption to protect
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`the anonymity of the VPN. Ex. 1001 at 2:21-32; see also Ex. 1003 at ¶¶ 193-200.
`
`Also, while the ’211 patent shows a particular type of VPN – one using “TARP”
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`routers – that does use encryption (Ex. 1001 at 2:62-3:25), it does not state this
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`scheme is mandatory for DNS-based VPN schemes. See, e.g., Ex. 1001 at 37:53-
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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 ’211 patent also
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`does not show any explicit encryption steps being used in DNS-related VPN
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`schemes. Ex. 1001 at 37:4-39:64. In February of 2000, it was understood a VPN
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`could be established without encryption; namely, by using “obfuscation” or hiding
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`techniques to ensure the security and anonymity of the network traffic over the
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`public network. See Ex. 1003 at ¶ 200. The broadest reasonable construction of a
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`“secure communication link” thus would not require the network traffic in a VPN
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`to be encrypted.
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`Second, Patent Owner disputed in the 2010 litigation that the ’135 claims
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`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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`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; Ex.
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`1049 at 6-8. The Court specifically relied on Patent Owner’s representations to the
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`Office during the ‘269 reexamination proceeding involving the ‘135 patent;
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`namely, Patent Owner’s contention that the Aventail systems did not show a VPN
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`because “computers connected according to Aventail do not communicate
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`directly with each other.” Ex. 1049 at 6. The Court also observed “…routers,
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`firewalls, and similar servers that participate in typical network communication do
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`not impede ‘direct’ communication between a client and target computer.” Ex.
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`1049 at 8 (FN2). The Court thus determined that a portion of the literal scope of
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`the ’135 patent claims has been disclaimed (i.e., that covering VPNs in which
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`computers do not “directly” communicate). The logical consequence of that
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`determination is that the ’211 claims (like the ’135 claims) in their broadest
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`reasonable construction also encompass this disclaimed subject matter. Patent
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`Owner’s prosecution disclaimer – which is plainly effective in a district court
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`proceeding to limit the claims because the claims cannot be amended in that
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`proceeding – should not be given weight in this proceeding under the broadest
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`reasonable construction standard. See, e.g., M.P.E.P. § 2111; id. at § 2111.01(I).
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`Instead, in this proceeding, Patent Owner must amend the claims to exclude
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`subject matter it has disclaimed.
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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. See § V.A.1, below.
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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 ’211 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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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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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 ’211 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 ’211 disclosure. The
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`broadest reasonable construction of the term “secure name” should encompass
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`what Patent Owner contends is within its scope, and thus should encompass “a
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`secure non-standard domain name, including a non-standard top level domain (e.g.,
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`.scom) or a telephone number.”
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`IV.
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` Precise Reasons for Relief Requested
`A. Claims 1-3, 5-8, and 14-60 Are Anticipated by Aventail
`Aventail was published at least by January 1999, and is prior art under at
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`least under §102(b). A concise summary of the systems and processes described in
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`Aventail is provided at ¶¶ 226-320 of Ex. 1003.
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`Aventail Anticipates Claim 1
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`1.
`Aventail describes systems that include client computers running Aventail
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`Connect and a proxy server/gateway computer running Aventail Extranet Server
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`(“Extranet Server”). Ex. 1003 at ¶¶ 227-231, 235-237, 276-280. Aventail shows
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`that DNS requests generated on a client computer could be evaluated and resolved
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`in two different ways. First, Aventail Connect could be configured to evaluate
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`requests. In this configuration, if the hostname in a request matched a redirection
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`rule, the connection request would be flagged as requiring secure communications,
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`Petition for Inter Partes Review of U.S. Patent No. 7,921,211
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`and would be proxied to the Extranet Server. Ex. 1003 at ¶¶ 231-250, 254-260,
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`268-270, 276-280. Alternatively, Aventail shows client computers running
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`Aventail Connect could be configured to send all DNS requests containing
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`hostnames other than those that could be resolved locally to the Extranet Server for
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`handling. Ex. 1003 at ¶¶ 233, 251-252, 268-269, 276-282. In the latter
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`configuration, the Extranet Server would determine if the hostname specified a
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`host requiring secure communications. Ex. 1003 at ¶¶ 233, 251-252, 268-269,
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`276-282. In either configuration, the client computer running Aventail Connect
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`would establish a connection with the Extranet Server, authenticate itself with the
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`server, and, if successful, send the hostname from the original DNS request to the
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`Extranet Server. Ex. 1003 at ¶¶ 228-237, 272-278, 282-288. The Extranet Server
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`would then establish a secure connection between the client computer running
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`Aventail Connect and the target specified in the request. Ex. 1003 at ¶¶ 228-237,
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`249-250, 261, 278-282, 286-289, 268. If a secure connection was required, the
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`Extranet Server would facilitate