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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`Apple Inc.
`Petitioner,
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`v.
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`VirnetX, Inc. and Science Application International Corporation,
`Patent Owner
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`Patent No. 6,502,135
`Issued: Dec. 31, 2002
`Filed: Nov. 29, 1999
`Inventors: Edmund C. Munger, et al
`Title: Agile Network Protocol For Secure Communications With Assured System
`Availability
`____________________
`
`Inter Partes Review No. 2013-00348
`__________________________________________________________________
`Declaration of Michael Fratto Regarding U.S. Patent No. 6,502,135
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`VIRNETX EXHIBIT 2017
`RPX v. VirnetX
`Trial IPR 2014-00173
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`Page 1 of 195
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`Declaration ofMichael Frarto Regarding. US. Patent No. 6,502,135
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`I, Michael Fratto, do hereby declare and state, that all statements made herein of
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`my own knowledge are true and that all statements made on information and belief
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`are believed to be true; and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States
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`Code.
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`Mike Fratto
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`Dated: June 12, 2013
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`I.
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`TABLE OF CONTENTS
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`INTRODUCTION ......................................................................................... 1
`A. Engagement ............................................................................................ 1
`B. Background and Qualifications .............................................................. 1
`C. Compensation and Prior Testimony ....................................................... 4
`D.
`Information Considered .......................................................................... 5
`II.
`LEGAL STANDARDS FOR PATENTABILITY ...................................... 5
`A. Anticipation ............................................................................................ 7
`B. Obviousness ............................................................................................ 8
`III. THE ’135 PATENT ..................................................................................... 14
`A. Effective Filing Date of the ’135 Patent ............................................... 14
`B.
`Prosecution History of The ’135 Patent ............................................... 17
`C. The Person of Ordinary Skill in the Art ............................................... 18
`D. Overview of the Claims of the ’135 Patent .......................................... 19
`E. Description of the Background Technology Relevant to the
`’135 Patent ............................................................................................ 19
`1. The Open Internet .......................................................................... 19
`2. Domain Names and the Domain Name System (DNS) ................. 21
`a. The DNS System ..................................................................... 22
`b. Domain Names and URIs ........................................................ 24
`c. Domain Name Resolution........................................................ 26
`3. Encryption, Tunnels, and Data Security ........................................ 32
`a. Encryption ................................................................................ 33
`b. Authentication .......................................................................... 34
`c. IPSec – RFC 2401 ................................................................... 38
`d. Tunneling ................................................................................. 40
`4. VPNs .............................................................................................. 43
`IV. GENERAL ISSUES RELATED TO MY PATENTABILITY
`ANALYSIS ................................................................................................... 49
`A. The Claims of the ‘135 Patent I Am Addressing in this Report .......... 49
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`B.
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`C.
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`Interpretation of Certain Claim Terms ................................................. 54
`1. Virtual Private Network (VPN) ..................................................... 55
`2. Virtual Private Link ........................................................................ 58
`3. Domain Name ................................................................................ 59
`4. Domain Name Service ................................................................... 59
`5. DNS Server .................................................................................... 60
`6. DNS Proxy Server .......................................................................... 63
`7. Web Site ......................................................................................... 66
`8. Secure Web Site / Secure Target Web Site .................................... 66
`9. Secure Web Computer ................................................................... 68
`10. Target Computer ........................................................................... 69
`11. Between a Client Computer and [target computer/secure web
`computer] ...................................................................................... 70
`Prior Art References ............................................................................. 71
`1. Exhibit 1007 – Aventail Connect v3.01/2.51 Administrator’s
`Guide (“Aventail”) ........................................................................ 72
`2. Exhibit 1008 - BinGO! User’s Guide incorporating by reference
`BinGO! Extended Feature Reference (collectively, “BinGO”). .. 73
`3. Request for Comment (RFC) Publications .................................... 75
`4. Exhibit 1014 – Reed et al., IEEE J. Sel. Areas Comm., 16(4): 482-
`494 (May 1998) (“Reed I”) ........................................................... 77
`5. Exhibit 1015 - Reed et al., “Proxies for Anonymous Routing,” 12th
`CA (December 9-13, 1996) (“Reed II”) ....................................... 78
`6. Exhibit 1022 – Aventail Connect v3.1/2.6 Administrator’s Guide
`(“Aventail Connect v3.1”) ............................................................ 80
`7. Exhibit 1021 – Aventail AutoSOCKS v2.1 Administrator’s Guide
`(“Aventail AutoSOCKS”) ............................................................. 81
`8. Exhibit 1024 – Ferguson, P. and Huston, G., “What Is a VPN”,
`(“Ferguson”) ................................................................................. 81
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`Annual Computer Security Applications Conference, San Diego,
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`The Internet Protocol Journal, Vol 1., No. 2 (Sept. 1998)
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`V.
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`PATENTABILITY ANALYSIS OF CLAIMS 1-10, 12-15 AND 18 OF
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`THE ’135 PATENT ..................................................................................... 82
`A. Overview of Beser ................................................................................ 82
`B. Overview of RFC 2401 ....................................................................... 109
`C. Overview of Hoke .............................................................................. 123
`D. Overview of Blum .............................................................................. 130
`E. Overview of Aventail ......................................................................... 134
`F. Beser Anticipates and/or Renders Obvious Claims 1-10, 12-15
`and 18 of the ’135 Patent .................................................................... 139
`1. Claim 1 .........................................................................................139
`2. Claim 2 .........................................................................................145
`3. Claim 3 .........................................................................................145
`4. Claim 4 .........................................................................................147
`5. Claim 5 .........................................................................................148
`6. Claim 6 .........................................................................................152
`7. Claim 7 .........................................................................................153
`8. Claim 8 .........................................................................................154
`9. Claim 9 .........................................................................................157
`10. Claim 10 ......................................................................................158
`11. Claim 12 ......................................................................................165
`12. Claim 13 ......................................................................................166
`13. Claim 14 ......................................................................................172
`14. Claim 15 ......................................................................................174
`15. Claim 18 ......................................................................................174
`VI. CONCLUSION ..........................................................................................184
`VII. APPENDIX A .............................................................................................185
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`TABLE OF APPENDICES
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`Appendix A:
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`List of Materials Considered
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`Declaration of Micheal Fratto Regarding U.S. Patent No. 6,502,135
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`I.
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`INTRODUCTION
`A. Engagement
`I have been retained by counsel for Apple Inc. as an expert witness in
`1.
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`the above-captioned proceeding. I have been asked to provide my opinion about
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`the state of the art of the technology described in U.S. Patent No. 6,502,135 (“the
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`’135 patent”) and on the patentability of claims 1-10, 12-15, and 18 of the ‘135
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`patent. The following is my written report on that topic.
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`Background and Qualifications
`B.
`2. My Curriculum Vitae is submitted herewith as Exhibit 1007.
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`3.
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`I received a Bachelor of Science Degree from Syracuse University in
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`2001 in Information Science and Technology.
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`4.
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`I began working in the field of computer science in 1987. Between
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`1987 and 1992, I was a consultant where I wrote software that would connect
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`remote offices and collect/process data for input into other programs.
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`5.
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`Between 1994 and 1997, I was a freelance editor for Network
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`Computing, where I covered remote access and telecommunications products and
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`technologies. I held this position while earning my B.S. in Information Science
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`and Technology from Syracuse University.
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`6.
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`Between June 1997 and June of 2004, I was a permanent employee of
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`Network Computing, starting as an Associate Technology Editor and rising to
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`Senior Technology Editor. In these capacities, I focused on network security
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`solutions and products, which was a rapidly evolving field at that time. I have
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`subsequently held a number of other positions with Network Computing, as well as
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`affiliated publications. For example, from July 2004 to April 2006, I served as
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`Editor of Secure Enterprise Magazine – which focused on security solutions
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`specific to enterprise systems. After April 2006, I returned to Network Computing,
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`where I served in a progression of senior positions, ultimately serving as Editor of
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`Network Computing between August 2009 and October of 2012.
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`7.
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`I am presently a Senior Analyst with Current Analysis. In this respect
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`I manage the Enterprise Networking practice within the business and technology
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`and software group. I also provide competitive analysis on trends and changes in
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`the enterprise networking markets as well as consult with network equipment
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`vendors on product messaging, marketing, and outreach.
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`8.
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`I presently serve as an adjunct faculty member of School of
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`Information Studies at Syracuse University.
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`9.
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`I have been studying, evaluating, testing and describing networking,
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`networking security and related technologies for more than 15 years. Since well
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`before 1999, I have had an extensive background and experience in network
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`systems, software and related technologies, with a particular focus on network
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`security.
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`10.
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`I also have extensive hands-on experience with wide range of
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`networking and networking security products developed and sold in the 1993 to
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`2002 time frame. This came from my various positions with Network Computing,
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`where I reviewed, tested and described these products in a technical publication
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`devoted to this field. I also wrote articles about network infrastructure, data center,
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`and network access control items that were published by Network Computing. I
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`also am very familiar with Internet standards governing networking and security,
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`which I discuss below.
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`11. A substantial amount of my extensive experience with networking and
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`security systems used in the late 1990s came from my work in reviewing these
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`products for Network Computing. When I performed a typical review of a new
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`product, I would first define a “problem set” the product was designed to address.
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`I would interview IT administrators and executives and speak with the developers
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`of the product. I also would study the standards relevant to the product or its
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`implementation, and would evaluate the technical documentation accompanying
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`the product. I would then create a set of comparative measures to assess the
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`ability of the product to execute. I would then test the product under a variety of
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`situations designed to evaluate these comparative measures. To do this, I would
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`set up a test network, verify its operation, conduct the tests, and ensure the results
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`were accurate. I would also often compare the product to other products in the
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`same class or category.
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`12.
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`In the 1997 to 2000 time frame, I was particularly focused on remote
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`access products including modems, ISDN, and virtual private networking products,
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`technologies, and standards as well as network and host-based firewalls.
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`13.
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`I am the author of several books and publications devoted to secure
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`networking technologies. I also have taught a number of courses on systems and
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`technologies used in networking security, particularly focused on Internet security
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`solutions. These books and courses are listed on my C.V. (Ex. 1004).
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`C. Compensation and Prior Testimony
`I am being compensated at a rate of $250 per hour for my study and
`14.
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`testimony in this matter. I am also being reimbursed for reasonable and customary
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`expenses associated with my work and testimony in this investigation. My
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`compensation is not contingent on the outcome of this matter or the specifics of my
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`testimony.
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`15.
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`16.
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`I have never testified in Federal District Court.
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`I have provided declarations that were submitted in inter partes
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`reexamination proceedings involving the ’135 patent and other patents owned by
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`Patent Owner. These proceedings include Control No. 95/001,682, 95/001,679 and
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`95/001,269.
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`Information Considered
`D.
`17. My opinions are based on my years of education, research and
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`experience, as well as my investigation and study of relevant materials. In forming
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`my opinions, I have considered the materials I identify in this report and those
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`listed in Appendix A.
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`18.
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`I may rely upon these materials and/or additional materials to respond
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`to arguments raised by the Patent Owner. I may also consider additional
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`documents and information in forming any necessary opinions — including
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`documents that may not yet have been provided to me.
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`19. My analysis of the materials produced in this investigation is ongoing
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`and I will continue to review any new material as it is provided. This report
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`represents only those opinions I have formed to date. I reserve the right to revise,
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`supplement, and/or amend my opinions stated herein based on new information
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`and on my continuing analysis of the materials already provided.
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`II. LEGAL STANDARDS FOR PATENTABILITY
`In expressing my opinions and considering the subject matter of the
`20.
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`claims of the ’135 patent, I am relying upon certain basic legal principles that
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`counsel has explained to me.
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`21. First, I understand that for an invention claimed in a patent to be
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`found patentable, it must be, among other things, new and not obvious from what
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`was known before the invention was made.
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`22.
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`I understand the information that is used to evaluate whether an
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`invention is new and not obvious is generally referred to as “prior art” and
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`generally includes patents and printed publications (e.g., books, journal
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`publications, articles on websites, product manuals, etc.).
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`23.
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`I understand in this proceeding Apple has the burden of proving the
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`’135 patent is anticipated by or obvious from the prior art by a preponderance of
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`the evidence. I understand that “a preponderance of the evidence” is evidence
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`sufficient to show that a fact is more likely true than it is not.
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`24.
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`I understand that in this proceeding, the claims must be given their
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`broadest reasonable interpretation consistent with the specification. The claims
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`after being construed in this manner are then to be compared to the information in
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`the prior art.
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`25.
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`I understand that in this proceeding, the information that may be
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`evaluated is limited to patents and printed publications. My analysis below
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`compares the claims to patents and printed publications that are prior art to the
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`claims.
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`26.
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`I understand that there are two ways in which prior art may render a
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`patent claim unpatentable. First, the prior art can be shown to “anticipate” the
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`claim. Second, the prior art can be shown to have made the claim “obvious” to a
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`person of ordinary skill in the art. My understanding of the two legal standards is
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`set forth below.
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`A. Anticipation
`I understand that the following standards govern the determination of
`27.
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`whether a patent claim is “anticipated” by the prior art.
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`28.
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`I have applied these standards in my evaluation of whether claims 1-
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`10, 12-15, and 18 of the ’135 patent would have been anticipated by the prior art.
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`29.
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`I understand that the “prior art” includes patents and printed
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`publications that existed before the earliest filing date (the “effective filing date”)
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`of the claim in the patent. I also understand that a patent will be prior art if it was
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`filed before the effective filing date of the claimed invention, while a printed
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`publication will be prior art if it was publicly available before that date.
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`30.
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`I understand that, for a patent claim to be “anticipated” by the prior
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`art, each and every requirement of the claim must be found, expressly or
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`inherently, in a single prior art reference as recited in the claim. I understand that
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`claim limitations that are not expressly described in a prior art reference may still
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`be there if they are “inherent” to the thing or process being described in the prior
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`art. For example, an indication that a prior art reference that a particular process
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`complies with a published standard would indicate that the process must inherently
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`perform certain steps or use certain data structures that are necessary to comply
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`with the published standard.
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`31.
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`I understand that it is acceptable to consider evidence other the
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`information in a particular prior art document to determine if a feature is
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`necessarily present in or inherently described by that reference.
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`B. Obviousness
`I understand that a claimed invention is not patentable if it would have
`32.
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`been obvious to a person of ordinary skill in the field of the invention at the time
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`the invention was made.
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`33.
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`I understand that the obviousness standard is defined in the patent
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`statute (35 U.S.C. § 103(a)) as follows:
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`A patent may not be obtained though the invention is not identically
`disclosed or described as set forth in section 102 of this title, if the
`differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the
`invention was made.
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`34.
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`I understand that the following standards govern the determination of
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`whether a claim in a patent is obvious. I have applied these standards in my
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`evaluation of whether claims 1-10, 12-15, and 18 of the ’135 patent would have
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`been considered obvious In February of 2000.
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`35.
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`I understand that to find a claim in a patent obvious, one must make
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`certain findings regarding the claimed invention and the prior art. Specifically, I
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`understand that the obviousness question requires consideration of four factors
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`(although not necessarily in the following order):
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`• The scope and content of the prior art;
`• The differences between the prior art and the claims at issue;
`• The knowledge of a person of ordinary skill in the pertinent art; and
`• Whatever objective factors indicating obviousness or non-obviousness
`may be present in any particular case.
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`36.
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` In addition, I understand that the obviousness inquiry should not be
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`done in hindsight, but must be done using the perspective of a person of ordinary
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`skill in the relevant art as of the effective filing date of the patent claim.
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`37.
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`I understand the objective factors indicating obviousness or non-
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`obviousness may include: commercial success of products covered by the patent
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`claims; a long-felt need for the invention; failed attempts by others to make the
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`invention; copying of the invention by others in the field; unexpected results
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`achieved by the invention; praise of the invention by the infringer or others in the
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`field; the taking of licenses under the patent by others; expressions of surprise by
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`experts and those skilled in the art at the making of the invention; and the patentee
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`proceeded contrary to the accepted wisdom of the prior art.
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`38.
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`I understand the combination of familiar elements according to known
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`methods is likely to be obvious when it does no more than yield predictable results.
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`I also understand that an example of a solution in one field of endeavor may make
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`that solution obvious in another related field. I also understand that market
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`demands or design considerations may prompt variations of a prior art system or
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`process, either in the same field or a different one, and that these variations will
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`ordinarily be considered obvious variations of what has been described in the prior
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`art.
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`39.
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`I also understand that if a person of ordinary skill can implement a
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`predictable variation, that variation would have been considered obvious. I
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`understand that for similar reasons, if a technique has been used to improve one
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`device, and a person of ordinary skill in the art would recognize that it would
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`improve similar devices in the same way, using that technique to improve the other
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`device would have been obvious unless its actual application yields unexpected
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`results or challenges in implementation.
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`40.
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`I understand that the obviousness analysis need not seek out precise
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`teachings directed to the specific subject matter of the challenged claim, but
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`instead can take account of the “ordinary innovation” and experimentation that
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`does no more than yield predictable results, which are inferences and creative steps
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`that a person of ordinary skill in the art would employ.
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`41.
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`I understand that sometimes it will be necessary to look to interrelated
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`teachings of multiple patents; the effects of demands known to the design
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`community or present in the marketplace; and the background knowledge
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`possessed by a person having ordinary skill in the art. I understand that all these
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`issues may be considered to determine whether there was an apparent reason to
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`combine the known elements in the fashion claimed by the patent at issue.
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`42.
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`I understand that the obviousness analysis cannot be confined by a
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`formalistic conception of the words “teaching, suggestion, and motivation.” I
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`understand that in 2007, the Supreme Court issued its decision in KSR Int'l Co. v.
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`Teleflex, Inc. where the Court rejected the previous requirement of a “teaching,
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`suggestion, or motivation to combine” known elements of prior art for purposes of
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`an obviousness analysis as a precondition for finding obviousness. It is my
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`understanding that KSR confirms that any motivation that would have been known
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`to a person of skill in the art, including common sense, or derived from the nature
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`of the problem to be solved, is sufficient to explain why references would have
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`been combined.
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`43.
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`I understand that a person of ordinary skill attempting to solve a
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`problem will not be led only to those elements of prior art designed to solve the
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`same problem. I understand that under the KSR standard, steps suggested by
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`common sense are important and should be considered. Common sense teaches
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`that familiar items may have obvious uses beyond the particular application being
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`described in a reference, that if something can be done once it is obvious to do it
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`multiple times, and in many cases a person of ordinary skill will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle. As such, the prior art
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`considered can be directed to any need or problem known in the field of endeavor
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`In February of 2000 and can provide a reason for combining the elements of the
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`prior art in the manner claimed. In other words, the prior art does not need to be
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`directed towards solving the same problem that is addressed in the patent. Further,
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`the individual prior art references themselves need not all be directed towards
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`solving the same problem.
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`44.
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`I understand that an invention that might be considered an obvious
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`variation or modification of the prior art may be considered non-obvious if one or
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`more prior art references discourages or leads away from the line of inquiry
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`disclosed in the reference(s). A reference does not “teach away” from an invention
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`simply because the reference suggests that another embodiment of the invention is
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`better or preferred. My understanding of the doctrine of teaching away requires a
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`clear indication that the combination should not be attempted (e.g., because it
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`would not work or explicit statements saying the combination should not be made.
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`45.
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`I understand that a person of ordinary skill is also a person of ordinary
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`creativity.
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`46.
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`I further understand that in many fields, it may be that there is little
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`discussion of obvious techniques or combination, and it often may be the case that
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`market demand, rather than scientific literature or knowledge, will drive design
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`trends. When there is such a design need or market pressure to solve a problem
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`and there are a finite number of identified, predictable solutions, a person of
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`ordinary skill has good reason to pursue the known options within their technical
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`grasp. If this leads to the anticipated success, it is likely the product not of
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`innovation but of ordinary skill and common sense. In that instance the fact that a
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`combination was obvious to try might show that it was obvious. The fact that a
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`particular combination of prior art elements was “obvious to try” may indicate that
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`the combination was obvious even if no one attempted the combination. If the
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`combination was obvious to try (regardless of whether it was actually tried) or
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`leads to anticipated success, then it is likely the result of ordinary skill and
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`common sense rather than innovation.
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`III. THE ’135 PATENT
`A. Effective Filing Date of the ’135 Patent
`I understand the ’135 patent issued from U.S. Application No.
`47.
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`09/504,783, filed February 15, 2000.
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`48.
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`I understand 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 under 35 U.S.C. 119(e) to Provisional Application
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`Nos. 60/106,261, filed October 30, 1998 and 60/137,704, filed June 7, 1998.
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`49.
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`I understand a “continuation-in-part” application is a patent
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`application that is related to an earlier filed patent application, but which adds to,
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`changes or deletes information relative to what was in the previous application.
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`50.
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`I understand that a “continuation-in-part” application may describe an
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`invention that is not described in the earlier application, and that this may result in
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`a patent claim being evaluated using the filing date of the continuation-in-part
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`application, rather than the earlier related application.
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`51.
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`I understand that claims 1, 10, 13 and 18 of the ’135 patent are
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`independent claims. I also understand that claims 2-9 depend from claim 1, claims
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`11 and 12 depend from claim 10, and claims 14-17 depend from claim 13.
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`52.
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`I understand that a dependent claim incorporates all of the
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`requirements of the independent claim from which it depends. So, in the case of
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`the ’135 patent, claims 2-9, 11-12 and 14-17 cannot enjoy an effective filing date
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`earlier than that of claims 1, 10 and 13, respectively, from which they depend.
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`53. Claims 1, 10 and 18 of the ’135 patent rely on information found only
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`in the disclosure of the ’783 application, and which is not found in any prior
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`application to which the ’135 patent claims “benefit” or “priority.” I understand
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`that the terms “benefit” and “priority” are legal terms referring to claims made
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`under 35 U.S.C. § 120 or 35 U.S.C. § 119(e), respectively.
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`54. For example, claim 1 of the ’135 patent specifies “generating from the
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`client computer a Domain Name Service (DNS) request that requests an IP address
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`corresponding to a domain name associated with the target computer” and
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`subsequent steps involving the DNS request.
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`55. Similarly, claim 10 makes reference to DNS requests (e.g., “A system
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`… comprising … a DNS proxy server…”).
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`56. There is no mention of DNS systems or requests in any of the
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`applications to which the ’135 patent claims benefit or priority prior that were filed
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`prior to the’783 application. In fact, the ’783 application is the first application
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`that mentions the phrase “domain name service.”
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`57. Because none of the ’653, ’261 application or ’704 applications
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`describes or even mentions use in any manner of DNS requests or proxy servers –
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`much less using them in a particular way to establish virtual private networks –
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`these earlier filed applications to which the ’135 patent claims benefit or priority
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`therefore do describe the subject matter defined by at least claims 1, 10 and 18 of
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`the ’135 patent.
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`58.
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`I also found nothing