IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In reInter Partes Reexaminations of:
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`Edmund Colby Munger et al.
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`For: AGILE NETWORK PROTOCOL FOR SECURE )
`COMMUNICATIONS WITH ASSURED
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`SYSTEM AVAILABILITY
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`U. S. Patent No. 6,502,135
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`Issued: December 31, 2002
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`Control Nos.: 95/001,679; 95/001,682
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`Group Art Unit: 3992
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`Examiner: Behzad Peikari
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`Confirmation Nos. 9786; 1074
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`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`DECLARATION OF DR. ROBERT DUNHAM SHORT III
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`I, Robert Dunham Short III, declare as follows:
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`1.
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`I have been the Chief Technology Officer of VirnetX Inc. ("VirnetX") since June
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`2010 and the Chief Scientist for VirnetX since May 2007. Prior to joining VirnetX, from 1994 to
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`April 2007, I held various positions including Assistant Vice President and Division Manager at
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`Science Applications International Corporation ("SAIC"). Prior to SAIC, I worked at ARCO Power
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`Technologies Inc., Sperry Corporate Technology Center, and Sperry Research Center. I have a Ph.D.
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`in Electrical Engineering from Purdue University as well as a M.S. in Mathematics and a B.S. in
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`Electrical Engineering from Virginia Tech.
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`2.
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`I am one of the named inventors of U.S. Patent No. 6,502,135 ("the '135 patent"),
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`which I understand is the subject of the above-identified reexamination proceedings. I am familiar
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`with the '135 patent, including its claims.
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`3.
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`Prior to and at the time of the inventions claimed in the '135 patent, there was a
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`significant and increasing concern with the security of computer network communication. The
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`widespread connectivity between computers that was enabled by the swift increase in network access
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`in homes and businesses also led to many security breaches as well as concerns regarding the safety of
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`confidential information sent over computer networks. This problem received significant attention
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`from the research and development community. Practical experience showed that there was a need
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`for a system that could be easily and correctly used to enable secure communications, because a
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`system that made it difficult for an end-user to enable secure communications would likely lead to a
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`Petitioner RPX Corporation - Ex. 1053, p. 1
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`Control Nos. 95/001,679; 95/001,682
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`lack of use or incorrect use. The inventions disclosed and claimed in the '13 5 patent and other patents
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`in this family met this need. For instance, the inventions disclosed and claimed in the '135 patent
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`include systems and methods of transparently creating a virtual private network (VPN) between two
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`computers. As an example, independent claim 1 recites "[a] method of transparently creating a virtual
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`private network (VPN) between a client computer and a target computer, comprising ... generating
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`from the client computer a Domain Name Service (DNS) request . . . and . . . in response to
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`determining that the DNS request ... is requesting access to a secure target web site, automatically
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`initiating the VPN between the client computer and the target computer." (' 135 patent 47:20-33.)
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`Likewise, independent claim 10 recites "[a] system that transparently creates a virtual private network
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`(VPN) between a client computer and a secure target computer, comprising: a DNS proxy server that
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`receives a request from the client computer to look up an IP address for a domain name, ... wherein
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`the DNS proxy server generates a request to create the VPN ... if it is determined that access to a
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`secure website has been requested; and a gatekeeper computer that allocates resources for the VPN
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`... in response to the request by the DNS proxy server." ('135 patent 48:3-19.) Further, dependent
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`claim 4, recites "determining whether the client computer is authorized to establish a VPN with the
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`target computer and, if not so authorized, returning an error from the DNS request." ('135 patent
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`47:47-52.) As another example, claim 9, which ultimately depends from claim 1, recites "transmitting
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`a message to the client computer to determine whether the client computer is authorized to establish
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`the VPN target computer." ('135 patent 47:66-48:2.) The inventions combine both ease-of-use and
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`security aspects without sacrificing one or the other.
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`4.
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`As one example of the manifestation of the long-felt need, the Defense Advanced
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`Research Projects Agency ("DARPA") funded various research programs to further the science and
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`technology of information assurance and survivability. DARPA programs, such as the "Information
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`Assurance" and "Dynamic Coalitions" programs, were focused on the need to provide easy-to-enable
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`secure communications. These projects received significant funding to be spent developing
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`technologies that could solve this need. For example, one such project entitled "Next Generation
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`Internet" received funding in fiscal year 1998 of approximately $39.3 million, in fiscal year 1999 of
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`approximately $49.5 million, and in fiscal year 2000 of approximately $40 million.
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`(Ex. B-1 at
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`VNET00219302, 319-321.) Another program funded by DARPA, "Dynamic Coalitions," was created
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`to address the ability of the Department of Defense to quickly and easily enable secure
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`communications over the Internet. (See, e.g., Ex. B-2 at VNET00219244, 284,298-299, 593, 625.)
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`5.
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`According to DARPA officials at the time, "existing group membership protocols
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`d[id] not support the security needs of multidimensional organizations. The overarching challenge
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`2
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`Petitioner RPX Corporation - Ex. 1053, p. 2
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`Control Nos. 95/001,679; 95/001,682
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`[wa]s creating secure groups rapidly. This [wa]s a significant issue when countries [we]re faced with
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`an operation that require[d] immediate multinational attention." (Ex. B-3 at 1.) DARPA contracted
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`with some of the most skilled organizations in the area of secured communications in an effort to meet
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`its security needs (e.g., NAI Labs, a division of PGP Security, Network Associates Incorporated, Los
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`Angeles, and the Microelectronics Center of North Carolina, Research Triangle Park, North Carolina,
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`as well as Johns Hopkins University, Baltimore; Northeastern University, Boston; and Veridian-PSR,
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`Arlington, Virginia).
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`(!d. at 1.) In all, more than 15 organizations were researching the various
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`components that made up the programs initiated by the Department of Defense. (!d.) However, none
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`of these prestigious institutions came up with a solution, during the relevant time frame, close to what
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`is disclosed and claimed in the '135 patent. (!d. at 1-4.) That is, they did not develop a solution that
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`transparently and automatically created a VPN in response to determining that a DNS request was
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`requesting access to a secure target web site.
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`6.
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`As a second example of the long-felt need for the inventions of the '135 patent,
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`In-Q-Tel, which is a venture capital firm that invests in companies developing cutting edge
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`technology aimed at supporting the United States intelligence community, including the Central
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`Intelligence Agency (CIA), funded the original development of the technology with approximately
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`$3.4 million. In-Q-Tel's willingness to enter into a relationship with SAIC (the original assignee of
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`the application that led to the '135 patent) for the development of this technology further evidences a
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`long-felt need for technology that made it easy and convenient to enable secure communications.
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`7.
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`A third example was the extent to which SAIC internally funded the research and
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`development of the technology. When I was employed at SAIC, its business model was to sell hours
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`to the federal government. SAIC was not structured to bring products to the market, which typically
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`requires significant internal investments in research and development. In an average year during the
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`development of the technology that led to the '135 patent, SAIC would spend approximately $2
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`million on internal research and development efforts. In the case of the technology claimed in the
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`'135 patent, SAIC invested $1.7 million, which represents almost the entirety of SAIC's internal
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`research and development budget for one whole year. A technology review committee also approved
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`our team's patent development efforts and costs on an ongoing basis. A third party (Cambridge
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`Strategic Management Group or CSMG) also substantiated the value of the technology. Moreover, a
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`significant percentage of all of SAIC's patent development efforts have focused on this technology. I
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`understand that SAIC spent one-third of its total patent portfolio efforts on our patent portfolio at that
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`time.
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`3
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`Petitioner RPX Corporation - Ex. 1053, p. 3
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`Control Nos. 95/001,679; 95/001,682
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`8.
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`In fact, as demonstrated in an article written before the claimed inventions ofthe '135
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`patent, it was widely recognized that providing secure remote access to a LAN or WAN was
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`extremely difficult for IT support desks. (Ex. B-4 at 1.) In that time period, remote access was "a
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`nightmare for support desks. Staffers never kn[ e ]w what combination of CPU, modem, operating
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`system and software configuration they [were] going to have to support," and adding the
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`commercially-available VPN software only made matters worse. (/d.)
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`9.
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`This article precisely captured the computer and Internet security industry's attitude
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`toward the tradeoff between the ease of use of a secure system, such as a VPN system, for the average
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`computer user and the security that the VPN system provided. The article recognized that the "ease of
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`installation isn't always a good thing: In many cases, the easier the client is to install, the less secure
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`it is." (/d. at 2.) The claimed inventions of the '135 patent, which provide systems and methods of
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`transparently creating a VPN between a client computer and a target computer, combine both ease of
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`use and security aspects without sacrificing one or the other.
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`10. Moreover, many others before and around the time of the inventions claimed in the
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`'135 patent have attempted to solve the need of easy-to-use methods of enabling secure
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`communications over the Internet. But, as discussed above, many of these attempts have failed. For
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`example, despite investing enormous amounts of money and enlisting the resources of numerous
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`prestigious institutions and their talented employees, DARPA's projects still fell far short of the
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`claimed inventions of the' 135 patent. (See~~ 4-5, supra.)
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`11.
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`Additionally, as discussed above, no one had yet achieved the results of the claimed
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`inventions of the '135 patent in that time period, because remote access was "a nightmare" for support
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`desks to handle, and adding the commercially-available VPN software was even more difficult. In
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`fact, at this time, the security industry generally viewed ease of use and VPN security as mutually
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`exclusive. (See~~ 8-9, supra.) By providing systems and methods of transparently creating a VPN
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`between a client computer and a target computer, the inventions ofthe '135 patent provided a solution
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`for easily establishing secure communication links without sacrificing security, thereby succeeding
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`where others failed.
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`12.
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`The claimed inventions of the '135 patent have been commercially successful, for
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`example, through the licensing revenues they have generated for VirnetX. In July 2002, SafeNet, a
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`leading provider of Internet security technology that is the de facto standard in the VPN industry,
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`entered into a portfolio license with SAIC to incorporate features into SafeNet's underlying VPNs.
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`SafeNet licensed the patents because of features disclosed and claimed in the patents, including those
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`in the '135 patent. Microsoft has also entered into a similar license that includes the '135 patent.
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`4
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`Petitioner RPX Corporation - Ex. 1053, p. 4
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`Control Nos. 95/001,679; 95/001,682
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`Microsoft entered into its license with VirnetX after it was found to have infringed the '135 patent and
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`one other VirnetX patent in the same family, resulting in a damages award of over one hundred
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`million dollars, leading ultimately to a license agreement of two hundred million dollars. And on May
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`3, 2012, Aastra USA, Inc. entered into a license with VirnetX that includes the' 135 patent.
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`13.
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`The claimed inventions of the ' 13 5 patent were also contrary to the accepted wisdom
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`at the time of the inventions. For example, there was a general understanding that reliable security
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`could only be achieved through difficult-to-provision VPNs and easy-to-set-up connections could not
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`be secure. This belief was reinforced by the IT offices of many large companies and institutions,
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`whose livelihood depended on the need for highly-trained specialists to arrange secure network
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`connections.
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`14.
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`The industry had long accepted as a fact that secure systems, such as VPN systems,
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`would be difficult to set up, and the secure communication modes could not be easily and
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`conveniently enabled. In a 1999 article entitled "CEOs Chew the VPN Fat" that predicted what the
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`future held for the start-up companies that developed VPNs, the wish list did not even address the type
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`of solutions provided by the '135 patent, such as systems and methods for transparently creating a
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`VPN between two computers. (Ex. B-5 at 1-2.)
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`15.
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`The technology of the '135 patent was also met with skepticism by those skilled in
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`the art who learned of our inventions. Sami Saydjari, a program manager for DARPA, informed
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`Edmund Munger, a co-inventor of the '135 patent, that our technology would never be adopted.
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`Moreover, the IT offices of many large companies and institutions expressed skepticism that secure
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`connections could ever be enabled easily by regular computer users.
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`16.
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`Several events also demonstrate praise for the inventions in the '13 5 patent by those
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`in the field. As discussed above, SAIC invested a disproportionately large percentage of its internal
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`resources in the technology. SafeNet, Microsoft, and Aastra have all licensed the technology of the
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`'135 patent. A study done by CSMG also praised the inventions. Jim Rutt at Network Solutions,
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`which was acquired by Verisign, praised and expressed significant interest in the technology and
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`would have invested but for a change in circumstances at his company.
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`5
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`Petitioner RPX Corporation - Ex. 1053, p. 5
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`Control Nos. 95/001,679; 95/001,682
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`17.
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`I declare that all statements made herein of my own knowledge are true and that all
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`statements made on information and belief are believed to be true, and further, that these statements
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`were made with the knowledge that willful false statements and the like so made are punishable by
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`fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code, and that such
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`willful false statements may jeopardize the validity of the '135 patent.
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`Dated: May 14, 2012
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`By: __ ~/R=o=b=e~rt~D=u=nh==am~S=h=ort~II=V~-----­
`Robert Dunham Short III
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`6
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`Petitioner RPX Corporation - Ex. 1053, p. 6
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