Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`Paper No. 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`
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`RPX Corporation,
`Petitioner,
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`v.
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`VirnetX, Inc. and Science Application International Corporation,
`Patent Owner
`
`Patent No. 6,502,135
`Issued: Dec. 31, 2002
`Filed: Feb. 15, 2000
`Inventors: Edmund C. Munger, et al
`Title: Agile Network Protocol For Secure Communications With Assured System
`Availability
`____________________
`
`Inter Partes Review No. IPR2014-00172
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`TABLE OF CONTENTS
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`I.
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`IDENTIFICATION OF CLAIMS BEING CHALLENGED
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`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
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`INTER PARTES REVIEW .......................................................................... 1
`A. Certification the ’135 Patent May Be Contested by Petitioner .............. 1
`B.
`Fee for Inter Partes Review (§ 42.15(a)) ................................................ 1
`C. Mandatory Notices (37 CFR § 42.8(b)) ................................................. 1
`1. Real Party in Interest (§ 42.8(b)(1)) ................................................. 1
`2. Other Proceedings (§ 42.8(b)(2)) ..................................................... 4
`3. Designation of Lead and Backup Counsel ....................................... 5
`4. Service Information (§42.8(b)(4)) .................................................... 5
`D. Proof of Service (§§ 42.6(e) and 42.105(a)) .......................................... 5
`II.
`(§ 42.104(B)) ................................................................................................... 6
`III. RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT ......................................................................................................... 7
`A. Effective Filing Date and Prosecution History of the ’135
`patent ....................................................................................................... 7
`B.
`Person of Ordinary Skill in the Art......................................................... 8
`C. Construction of Terms Used in the Claims ............................................ 8
`1. Virtual Private Network (VPN) (Claims 1, 10, 13, 18) ................... 9
`2. Virtual Private Link (Claim 13) .....................................................14
`3. Domain Name (Claims 1, 10, 18) ..................................................14
`4. Domain Name Service (Claims 1, 10, 13, 18) ...............................15
`5. DNS Request (Claims 1, 3-5, and 18) ............................................16
`6. DNS Server (Claims 18, 2 and 8) ..................................................16
`7. DNS Proxy Server (Claims 10, 8) ..................................................16
`8. Secure Web Site/Target Web Site (Claims 1, 8, 10, 18) ...............17
`9. Web Site (Claims 1, 10, 18) ...........................................................17
`10. Secure Web Computer (Claim 10) ...............................................17
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`11. Target Computer (Claims 1, 10, 18) .............................................17
`12. IP Address Hopping Scheme (Claim 6)........................................18
`13. Determining (Claims 1, 3-5, and 18) ............................................19
`14. Client Computer (Claims 1-7, 9-13, 17, and 18) ..........................19
`15. Transparently (Claims 1, 10, and 18) ...........................................20
`16. Automatically Initiating the VPN (Claims 1, 4, 5, and 18) ..........21
`17. Passes Through the DNS Request (Claim 8) ................................21
`18. Gatekeeper Computer (Claims 7 and 10-12) ................................21
`19. Allocates VPN Resources (Claims 7, 10, and 13) ........................21
`IV. PRECISE REASONS FOR RELIEF REQUESTED ...............................22
`A. Claims 1-10, 12-15 and 18 Are Anticipated By U.S. Patent No.
`6,496,867 to Beser et al. (Beser). ......................................................... 22
`1. Beser Anticipates Claim 1 ..............................................................22
`2. Beser Anticipates Claim 10 ............................................................24
`3. Beser Anticipates Claim 13 ............................................................27
`4. Beser Anticipates Claim 18 ............................................................29
`5. Beser Anticipates Claim 2 ..............................................................32
`6. Beser Anticipates Claim 3 ..............................................................33
`7. Beser Anticipates Claims 4 and 12 ................................................33
`8. Beser Anticipates Claim 5 ..............................................................34
`9. Beser Anticipates Claims 6 and 14 ................................................35
`10. Beser Anticipates Claim 7 ............................................................36
`11. Beser Anticipates Claim 8 ............................................................36
`12. Beser Anticipates Claim 9 ............................................................37
`13. Beser Anticipates Claim 15 ..........................................................37
`B. Beser In View Of RFC 2401 Renders Obvious Claims 1-10,
`12-15, and 18 ........................................................................................ 38
`1. Claims 1, 10, 13 and 18 Would Have Been Obvious ....................40
`2. Dependent Claims 2-9, 12, 14 and 15 ............................................42
`3. Dependent Claims 6 and 14 ...........................................................43
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`C. Beser In View Of Blum Renders Obvious Claims 3, 5, 8, 10,
`12, and 18.............................................................................................. 44
`1. Claim 10, and Claims 3 and 8 Would Have Been Obvious ...........45
`2. Claim 18 and Claim 5 Would Have Been Obvious .......................48
`3. Dependent Claim 12 .......................................................................50
`D. Beser In View Of RFC 2401, and Further in View of Blum
`Renders Claims 3, 5, 8, 10, and 18 Obvious ........................................ 51
`E. Beser In View Of Aventail Renders Claims 18 and 5 Obvious ........... 52
`V. CONCLUSION ............................................................................................54
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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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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`I.
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`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`A. Certification the ’135 Patent May Be Contested by Petitioner
`Petitioner certifies that U.S. Patent No. 6,502,135 (the ’135 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 ’135 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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`’135 patent. As explained in § C.1, below, the ’135 patent has not been the subject
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`of a prior inter partes review by Petitioner or a privy of Petitioner, and neither
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`Petitioner, nor any party in privity with Petitioner, has been served with a
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`complaint alleging infringement of any claim of the ’135 patent.
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`Fee for Inter Partes Review (§ 42.15(a))
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`B.
`The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)
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`to Deposit Account No. 20-0780.
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`C. Mandatory Notices (37 CFR § 42.8(b))
`Real Party in Interest (§ 42.8(b)(1))
`1.
`The real party in interest of this petition pursuant to § 42.8(b)(1) is RPX
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`Corporation (“RPX”) located at One Market Plaza, Steuart Tower, Suite 800, San
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`Francisco, CA 94105.
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`RPX is the leading provider of patent risk solutions, offering defensive
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`buying, acquisition syndication, patent intelligence, insurance services, and
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`advisory services. RPX has over 160 clients who have availed themselves of its
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`services, which include, inter alia, market intelligence, patent strategy services,
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`and defensive patent acquisition and licensing.1
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`As part of its mission to achieve a more rational patent marketplace, RPX
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`pursues efforts to improve patent quality and reduce patent litigation. For
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`example, RPX has established a Research & Development program (“RPX R&D”)
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`through which it advances a variety of initiatives to address and improve patent
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`quality. The initiatives under this program include increasing transparency by
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`collecting information regarding enforcement activities of entities or patents,
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`tracking patent sales, collecting and evaluating prior art, and compiling databases
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`of this information, which RPX makes available to its clients. In addition, as part
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`of its RPX R&D program, RPX contests patents of questionable validity by filing
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`requests for post-issuance review with the PTO. See http://www.rpxcorp.com/rpx-
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`researchanddevelopment.
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`
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`1
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`RPX observes that the ’135 patent has been asserted against some of its
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`clients.
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`2
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`RPX has solicited contributions from its clients to help fund its RPX R&D
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`service through an addendum agreement which is being filed under seal with this
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`petition. Ex. 1072.2 As reflected in the addendum agreement, RPX has sole
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`discretion over and controls the decision of which patents to contest through PTO
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`post-issuance proceedings, the grounds that are raised in any petition filed by RPX
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`requesting initiation of such proceedings, the conduct of RPX in such proceedings
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`and the decision to continue or terminate the participation of RPX in any such
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`proceeding. RPX also is solely responsible for payment of any expenses of
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`preparing and filing petitions seeking post-issuance review of patents, and for any
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`expenses associated with any proceedings that result from such petitions.
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`RPX has exercised its sole discretion in deciding to file the present petition
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`concerning the ’135 patent and was solely responsible for selecting the claims of
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`the ’135 patent being challenged and the grounds presented in it. RPX alone shall
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`control the participation of RPX in any proceeding initiated on the basis of this
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`petition, and alone shall control any decision by RPX to continue or terminate its
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`participation in any proceeding established on the basis of this petition. In
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`addition, RPX alone is responsible for paying the costs of preparing and filing this
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`petition, and for any subsequent costs in connection with any proceeding
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`2 An executed copy of the agreement is also being filed under seal. Ex. 1073.
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`established on the basis of this petition. RPX, thus, is the sole real party in interest
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`of the present petition and is not in privity with any other entity in connection with
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`this petition.
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`2. Other Proceedings (§ 42.8(b)(2))
`The ’135 patent is the subject of a number of civil actions including: (i) Civ.
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`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; (iv) Civ. Act. No. 6:11-cv-
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`00018-LED (E.D. Tex), (iv) Civ. Act. No. 6:13-cv-00351-LED (E.D. Tex), filed
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`April 22, 2013; (v) Civ. Act. No. 6:10-cv-00094 (E.D. Tex); and (vi) Civ. Act. No.
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`6:07-cv-00080 (E.D. Tex).
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`The ’135 patent is also the subject of merged inter partes reexamination nos.
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`95/001,679 and 95/001,682. In the merged proceedings, the Office recently issued
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`a Non-Final Action rejecting all 18 claims of the ’135 patent, including rejections
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`based on Ex. 1007 (Aventail), Ex. 1009 (Beser), and Ex. 1066 (Kiuchi), as well as
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`on other prior art references. The ’135 patent also was the subject of
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`reexamination no. 95/001,269, which is concluded.
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`The ’135 patent also is the subject of IPR petitions No. IPR2013-00348 and
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`IPR2013-00349 filed by Apple Inc., and IPR2013-00375 filed by New Bay Capital
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`LLC. Finally, the ’135 patent is the subject of IPR petition No. IPR2014-00171
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`being filed concurrently with the present Petition. Petitioner observes that the
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`grounds presented in this petition, and in IPR petition IPR2014-00171 closely
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`parallel the grounds presented in the petitions filed by Apple and New Bay Capital.
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`Designation of Lead and Backup Counsel
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`3.
`Lead Counsel
`Greg Howison
`Reg. No. 30646
`ghowison@dalpat.com
`972-680-6050
`
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`Backup Lead Counsel
`Peter J Thoma
`Reg. No. 28121
`pthoma@dalpat.com
`972-680-6053
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`Service Information (§42.8(b)(4))
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`4.
`Service on Petitioner may be made by mail to:
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`Howison & Arnott, L.L.P.
`P.O. Box 741715
`Dallas, Texas 75374-1715.
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`Service on Petitioner may be made by hand delivery to:
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`Howison & Arnott, L.L.P.
`Lincoln Centre II
`5420 LBJ Freeway, Suite 660
`Dallas, Texas 75240-2318.
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`The fax number for lead and backup counsel is 972-479-0464.
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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.
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`II.
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`Identification of Claims Being Challenged (§ 42.104(b))
`Claims 1-10, 12-15, and 18 of the ’135 patent are unpatentable as being
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`anticipated under 35 U.S.C. § 102(a), (b), & (e), and/or for being obvious over the
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`prior art under 35 U.S.C. § 103. Specifically:
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`(i)
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`Claims 1-10, 12-15, and 18 are anticipated under § 102(e) by U.S.
`Patent No. 6,496,867 to Beser et al. (Beser) (Ex. 1009);
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`(ii) Claims 1-10, 12-15, and 18 are obvious under § 103 based on Beser
`(Ex. 1009) in view of RFC 2401 (Ex. 1010);
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`(iii) Claims 3, 5, 8, 10, 12, and 18 are obvious under § 103 based on Beser
`(Ex. 1009) in view of Blum (Ex. 1011);
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`(iv) Claims 3, 5, 8, 10, and 18 are obvious under § 103 based on Beser
`(Ex. 1009) in view of RFC 2401 (Ex. 1010) and Blum (Ex. 1011);
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`(v) Claims 18 and 5 are obvious under § 103 based on Beser (Ex. 1009)
`in view of RFC 2401 (Ex. 1010) and Aventail (Ex. 1007).
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`Petitioner’s proposed construction of the contested claims, the evidence relied
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`upon, and the precise reasons why the claims are unpatentable are provided in
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`§ IV, below. The evidence relied upon in this petition is listed in Attachment B.
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`Petitioner requests expedited briefing during the preliminary proceedings.
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`The grounds of Petitioner’s challenge are substantially identical to the grounds
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`advanced by the petitioners in IPR2013-00348, IPR2013-00349, and IPR2013-
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`00375. Patent Owner already has filed a preliminary response in each of those
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`proceedings that addresses the claim constructions, prior art references, and
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`grounds of invalidity advanced in this petition. Petitioner observes the Board has
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`discretion to set the deadline for any preliminary response. 35 U.S.C. § 313.
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`III. Relevant Information Concerning the Contested Patent
`A. Effective Filing Date and Prosecution History of the ’135 patent
`The ’135 patent issued from U.S. Application No. 09/504,783, filed
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`February 15, 2000. The ’783 application is a continuation-in-part of U.S.
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`Application No. 09/429,653, filed on October 29, 1999. The ’783 and ’653
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`applications each claim priority to Provisional Application Nos. 60/106,261, filed
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`October 30, 1998 and 60/137,704, filed June 7, 1998.
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`Claims 1, 10, 13 and 18 are the independent claims. Claims 1, 10 and 18
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`rely on information first presented in the ’783 CIP application. For example, claim
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`1 specifies “generating from the client computer a Domain Name Service (DNS)
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`request …” and subsequent steps involving that DNS request, while claim 10
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`specifies “[a] system … comprising … a DNS proxy server…”
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`Applications filed prior to the ’783 application do not contain the term “domain
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`name service” much less describe systems using DNS requests or DNS proxy
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`servers to establish VPNs. Ex. 1003 at ¶¶ 54-61. Claim 13 likewise relies on
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`information first presented in the’783 application. For example, it specifies
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`“…receiving from one of the plurality of client computers a request to establish a
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`connection…” and “…authenticating, with reference to one of the plurality of
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`authentication tables, that the request received in step (1) is from an authorized
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`client.” Neither step is described in any application filed before the ’783
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`application. Ex. 1003 at ¶¶ 54-61. Accordingly, the effective filing date of claims
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`1-10, 12-15 and 18 is no earlier than February 15, 2000. Ex. 1003 at ¶ 61
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`Person of Ordinary Skill in the Art
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`B.
`A person of ordinary skill in the art in the field of the ’135 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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`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 ¶ 68.
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`C. Construction of Terms Used in the Claims
`In an IPR, claims must be given their broadest reasonable construction in
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`light of the specification. 37 CFR 42.100(b). To do this, the Board should
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`consider subject matter that Patent Owner contends infringes the claims, and
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`constructions Patent Owner has advanced in litigation. Petitioner also notes the
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`specification has not expressly defined any of the claim terms. Consequently, the
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`words in the claims should be used to determine the broadest reasonable
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`construction. “[I]t is the Patent Owner’s burden to precisely define the invention
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`in the claims.” AirCraft Medical LTD. v. Verathon Inc., Reexam. Control No.
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`95/000,161, Appeal 2012-007851, p. 16 (PTAB Dec. 11, 2012) (citing In re
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`Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)). Of course, the specification must
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`also be consulted to determine the broadest reasonable construction of the claims.
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`Virtual Private Network (VPN) (Claims 1, 10, 13, 18)
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`1.
`Petitioner agrees with New Bay Capital that the broadest reasonable
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`construction of “virtual private network” or “VPN” is “a private network that is
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`configured within a public network.” This construction is consistent with the
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`construction proposed by Petitioner Apple (i.e., a VPN is “a network of computers
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`which privately communicate – directly or otherwise – with each other on insecure
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`paths between the computers where the communication is both secure and
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`anonymous, where the data transferred may or may not be encrypted.”). Petitioner
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`would also support the Apple construction, if the Board determines that is the
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`broadest reasonable construction of VPN.
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`Patent Owner proposes a construction of “VPN” that differs in two respects;
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`namely, that it requires (i) encryption, and (ii) computers in the VPN to directly
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`communicate with each other. Ex. 1069 at 22. Both positions are inconsistent
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`with the broadest reasonable construction of “VPN.”
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`Initially, the ’135 patent does not define the term “VPN.” Ex. 1003 at ¶ 194.
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`Also, before 2000, the term “VPN” did not have a single accepted meaning. For
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`example, two authors observed in a 1998 paper that “[t]he wonderful thing about
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`virtual private networks is that its myriad definitions give every company a fair
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`chance to claim that its existing product is actually a VPN.” Ex. 1067 at 2.
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`Despite this, these authors did recognize that VPNs create a private network using
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`encryption and/or tunneling techniques. Ex. 1067 at 2 (“But no matter what
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`definition you choose, the networking buzz-phrase doesn't make sense. The idea is
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`to create a private network via tunneling and/or encryption over the public
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`Internet.”). This reflects the commonly held view before 2000 that a VPN could
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`be established by using “obfuscation” or hiding techniques, by encryption, or both,
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`and that by doing so, one could ensure the security and anonymity of network
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`traffic over the public network. See Ex. 1003 at ¶¶ 193-198.
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`The ’135 patent also explains that one can provide data security using “IP
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`hopping” schemes, rather than solely by using encryption. As it states, “Data
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`security is usually tackled using some form of data encryption.” Ex. 1001 at 1:38-
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`39 (emphasis added). The ’135 patent also illustrates use of a quasi-random IP
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`hopping scheme to implement a VPN. See, e.g., Ex. 1001 at 23:10-14 (“In a
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`second mode referred to as “promiscuous per VPN” mode, a small set of fixed
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`hardware addresses are used, with a fixed source/destination hardware address
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`used for all nodes communicating over a virtual private network.” (Emphasis
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`added)). Nowhere in this section of the ’135 patent is there any mention of using
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`encryption to establish the VPN. Moreover, claim 6 seems to rely on this
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`particular embodiment, specifying that step 3 of the method of claim 1 “comprises
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`the step of establishing the VPN by creating an IP address hopping scheme
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`between the client computer and the target computer.” Id. at 47:53-55 (emphasis
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`added); see also Ex. 1001 at 2:25-36 (explaining use of anonymity techniques); Ex.
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`1003 at ¶¶ 193-198. Also, the ’135 patent explains that “TARP” routers (which do
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`encrypt traffic) are simply one way to implement VPNs. See, e.g., Ex. 1001 at
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`38:2-5 (“The VPN is preferably implemented using the IP address “hopping”
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`features of the basic invention described above…” (emphasis added); see also Ex.
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`1001 at 2:66-3:29). The ’135 patent also does not list any encryption steps in
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`describing its VPN processes. See Ex. 1001 at 37:17-40:13.
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`To support its contention that a VPN requires encryption Patent Owner
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`points to the term “FreeS/WAN” in one passage of the ’135 patent. Ex. 1001 at
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`37:50-57. That passage, however, does not define what a VPN is, but simply
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`explains that RFC 2535 (the “FreeS/WAN” protocol) can be used to implement
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`one type of a VPN. See id. Notably, Patent Owner does not cite to any passage of
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`RFC 2535 (Ex. 1068) – the publication actually cited in the ’135 patent – to
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`support its assertions. This is because RFC 2535 does not even mention the terms
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`“encryption” or “VPN,” much less state that a VPN must use encryption.
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`Patent Owner also points to the construction adopted by certain District
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`Courts that a VPN is “a network of computers which privately and directly
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`communicate with each other by encrypting traffic on insecure paths between the
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`computers where the communication is both secure and anonymous.” Ex. 1043 at
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`8. This construction, however, is not the broadest reasonable construction of the
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`term VPN, but reflects the ordinary meaning of the term used in district court
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`litigation, and is not controlling in this proceeding. The broadest reasonable
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`construction of “VPN” thus does not require network traffic to be encrypted, but
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`can establish a “private network” using either encryption or routing techniques
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`(e.g., “tunneling” or “obsfucation”), or both.
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`Patent Owner next contends that a “VPN” requires computers in a VPN to
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`“directly communicate with each other.” See, e.g., Ex. 1046 at 1-3 (emphasis
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`added). In the August 2010 litigation, the Court found that Patent Owner had
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`disclaimed VPNs that do not involve “direct communications” between the
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`involved computers. Ex. 1043 at 6; see also Ex. 1046 at 6-9; Ex. 1048 at 5-7. The
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`Court relied on Patent Owner’s statements to the Office during the ’269
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`reexamination proceeding involving the ’135 patent to make this determination;
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`specifically, that the ’135 claims were not anticipated by the Aventail systems
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`because “computers connected according to Aventail do not communicate directly
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`with each other.”3 (Emphasis added). The Court also observed that “…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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`1043 at 8 (FN2). As petitioner Apple has explained, the Court’s finding that Patent
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`Owner disclaimed a portion of the literal scope of the ’135 patent claims (i.e., that
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`covering VPNs in which computers do not “directly” communicate) means that the
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`’135 claims in their broadest reasonable construction must still encompass this
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`subject matter. IPR2013-00349, Petition at 9-11. Patent Owner’s prosecution
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`disclaimer is effective in a district court proceeding, but not in this proceeding.
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`See, e.g., M.P.E.P. § 2111; id. at § 2111.01(I) (“Although claims of issued patents
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`are interpreted in light of the specification, prosecution history, prior art and other
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`claims, this is not the mode of claim interpretation to be applied during
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`examination.”). The broadest reasonable construction of “VPN” therefore
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`3
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`As explained below, that belief rested on a mischaracterization of the
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`teachings of Ex. 1007 (Aventail) by Patent Owner during that reexamination
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`proceeding. In reality, Aventail clearly shows computers directly addressing other
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`computers within the VPNs it will establish, which means the computers will
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`directly communicate with each other per the claims. See § IV.A.1, below.
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`13
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`encompasses “a network of computers which privately communicate – directly or
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`otherwise – with each other on insecure paths between the computers where the
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`communication is both secure and anonymous, where the data transferred may or
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`may not be encrypted.”
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`Virtual Private Link (Claim 13)
`2.
`The ’135 patent does not define the term “virtual private link.” The district
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`court found this term means the same thing as a VPN. Ex. 1043 at 8-9. In the
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`pending IPRs, Patent Owner did not dispute this finding. Ex. 1069 at 26.
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`Consequently, Petitioner submits the same construction should be used for “virtual
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`private link” as is used for “virtual private network.”
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`Domain Name (Claims 1, 10, 18)
`3.
`The ’135 patent does not define the term “domain name.” A person of
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`ordinary skill in the art would understand that a “domain name” is “a name
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`corresponding to an IP address.” Ex. 1003 at ¶¶ 204-205. Petitioner therefore
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`agrees with Apple’s proposed construction. Also, Patent Owner has asserted that a
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`“domain name” means “a name corresponding to an IP address.” Ex. 1046 at 14-
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`15. The district court adopted Patent Owner’s construction, and therefore, Patent
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`Owner now is estopped from arguing for a different construction (as it attempts to
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`do in Ex. 1069 at 27-29). See Data General Corp. v. Johnson, 78 F.3d 1556, 1565
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`(Fed. Cir. 1996). Furthermore, claims 1, 10, and 18 expressly provide that the
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`domain name is used to access an IP address.
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`Domain Name Service (Claims 1, 10, 13, 18)
`4.
`The ’135 patent does not define the phrase “domain name service.” Patent
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`Owner has asserted a “domain name service” is “a lookup service that returns an IP
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`address for a requested domain name.” Ex. 1046 at 13-14. A person of ordinary
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`skill in the art also would recognize that a domain name service is a service that
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`performs domain name resolution according to Internet standards, namely, RFC
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`1034 (Ex. 1016) and RFC 1035 (Ex. 1017). Ex. 1003 at ¶¶ 116-117. Under these
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`standards, an IP address will not always be returned – an error also may be
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`returned. Ex. 1003 at ¶¶ 116-125. Thus, the broadest reasonable construction of
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`“domain name service” includes “a lookup service that will return an IP address or
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`an error code in response to a domain name resolution request.”
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`In its oppositions to the Apple and New Bay petitions, Patent Owner
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`contends a “domain name service” is not an independent term, but rather, is part of
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`the term “domain name service (DNS) request.” Ex. 1069 at 29-31. Patent
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`Owner’s assertion is inconsistent with the claim language. Claim 1 defines “DNS”
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`as an abbreviation for “domain name service.” Several other claims use “DNS” as
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`an adjective to describe other devices, e.g., a “DNS server” (claim 2) or “DNS
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`proxy server” (claim 8). The claims thus define DNS as a distinct term from DNS
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`15
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`request, and the Board should reject Patent Owner’s illogical proposed
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`construction which seeks to avoid construing DNS (see Ex. 1069 at 29).
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`DNS Request (Claims 1, 3-5, and 18)
`5.
`The ’135 patent does not explicitly define the term “DNS request.”
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`Consistent with the definition of domain name service, see § 4, above, a “DNS
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`request” is a request to resolve a domain name into an IP or a network address.
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`DNS Server (Claims 18, 2 and 8)
`6.
`The ’135 patent does not define the term “DNS Server.” However, the way
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`the term is used in the ’135 patent indicates a “DNS Server” is a “server” that
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`returns an IP address in response to a request containing a domain name. See Ex.
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`1003 at ¶¶ 210-216. As noted in § 4, a domain name service also may return an
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`error. Thus, Petitioner agrees with Apple that the broadest reasonable construction
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`of “DNS server” includes “a computer or computer-based process that will return
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`an IP address or an error code in response to a domain name resolution request.”
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`DNS Proxy Server (Claims 10, 8)
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`7.
`Petitioner agrees with Patent Owner that the broadest reasonable
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`construction of a “DNS proxy server” is “a computer or program that responds to a
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`domain name inquiry in place of a DNS.” Ex. 1046 at 16-17; Ex. 1069 at 32-33.
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`Petitioner notes that Patent Owner has admitted that the DNS proxy server can be
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`distributed across different computers or processes. Ex. 1069 at 32-33.
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`16
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`Secure Web Site/Target Web Site (Claims 1, 8, 10, 18)
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`8.
`Petitioner agrees with Patent Owner and Apple that the broadest reasonable
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`construction a “secure web site” is “a computer associated with a domain name and
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`that can communicate in a virtual private network.” Ex. 1046 at 21-22; Ex. 1069 at
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`33-36. Petitioner also agrees with Patent Owner and Apple that broadest
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`reasonable construction a “secure target web site” is “a target computer associated
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`with a domain name and that can communicate in a virtual private network.” Ex.
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`1046 at 21-22; Ex. 1069 at 33-36.
`
`9. Web Site (Claims 1, 10, 18)
`The ’135 patent does not define the term “web site.” Patent Owner asserted
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`a “web site” means “a computer associated with a domain name and that can
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`communicate in a network.” Ex. 1046 at 21-22. Petitioner agrees that the broadest
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`reasonable construction of “web site” includes Patent Owner’s construction.
`
`10. Secure Web Computer (Claim 10)
`Petitioner agrees with Patent Owner and Apple that the broadest reasonable
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`construction of a “secure web computer” is “a computer that requires authorization
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`for access and that can communicate in a virtual private network.” Ex. 1046 at 22-
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`24; Ex. 1069 at 37-38.
`