Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`Paper No. 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`
`RPX CORPORATION,
`Petitioner,
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION INTERNATIONAL
`CORPORATION,
`Patent Owner
`
`
`Patent No. 7,490,151
`Issued: Feb. 10, 2009
`Filed: Sep. 30, 2002
`Inventors: Edmund C. Munger, et al
`Title: Establishment of a Secure Communication Link Based Domain Name
`Service (DNS) Request
`____________________
`
`Inter Partes Review No. IPR2014-00173
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
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`
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`TABLE OF CONTENTS
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`I.
`
`Compliance With Requirements For A Petition For Inter
`Partes Review ...................................................................................................... 1
`A. Certification the ’151 Patent May Be Contested by Petitioner ....... 1
`B.
`Fee for Inter Partes Review (§ 42.15(a)) ........................................... 1
`II. Mandatory Notices (37 CFR § 42.8(b)) ........................................................ 1
`A. Real Party in interest (§ 42.8(b)(1)) ................................................... 1
`B. Other Proceedings (§ 42.8(b)(2)) ........................................................ 4
`C. Designation of Lead and Backup Counsel ........................................ 4
`D.
`Service Information (§42.8(b)(4)) ...................................................... 5
`E.
`Proof of Service (§§ 42.6(e) and 42.105(a)) ....................................... 5
`Identification of Claims Being Challenged (§ 42.104(b)) ..................... 5
`
`III.
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`IV. Relevant Information Concerning the Contested Patent ...................... 6
`A.
`Effective Filing Date and Prosecution History of the ’151 patent .. 6
`B.
`Person of Ordinary Skill in the Art ................................................... 8
`C. Construction of Terms Used in the Claims ....................................... 8
`1.
`Domain Name Server (Claims 1-16) .......................................... 9
`2.
`Domain Name ...........................................................................10
`3.
`Domain Name Server (DNS) Proxy Module (Claims 1, 7) ......10
`4.
`DNS Request (Claims 1-16) .....................................................10
`5.
`Domain Name Server Module (Claim 13) ................................11
`6.
`Secure Server (Claims 1-16) .....................................................11
`7.
`IP Address Hopping Scheme (Claims 5 and 11) ......................11
`8.
`Automatically Initiating/Creating an Encrypted Channel
`(Claims 1-16) ............................................................................12
`Client (Claims 1-16) .................................................................12
`9.
`10. Determining (Claims 1, 2, 7, 8, 13, and 14) .............................13
`11.
`Forwarding the DNS Request (Claims 1, 7, and 13) ................14
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`i
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`12.
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`Intercepting (Claims 1, 7, and 13) ............................................14
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`V.
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`B.
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`Precise Reasons for Relief Requested ...................................................... 14
`A. Claims 1-16 Are Anticipated By Aventail (Ex. 1007) ....................14
`1.
`Aventail Anticipates Claim 1 ....................................................14
`2.
`Aventail Anticipates Claim 7 ....................................................17
`3.
`Aventail Anticipates Claim 13 ..................................................20
`4.
`Aventail Anticipates Claim 2, 8 and 14 ....................................21
`5.
`Aventail Anticipates Claim 3, 9 and 15 ....................................23
`6.
`Aventail Anticipates Claims 4, 10 and 16 ................................24
`7.
`Aventail Anticipates Claim 5 and 11 ........................................24
`8.
`Aventail Anticipates Claim 6 and 12 ........................................25
`Aventail Connect In View of Aventail Extranet Center Renders
`Claims 1-16 Obvious .........................................................................25
`C. Aventail in View of RFC 1035 Render Claims 3, 9 and 15 Obvious
` 26
`D. Aventail In View of Reed I Renders Claims 5 and 11 Obvious ....28
`E.
`Claims 1-16 Are Anticipated by U.S. Patent No. 6,496,867 (Beser)
` 30
`Beser Anticipates Claim 1 ........................................................30
`1.
`Beser Anticipates Claim 7 ........................................................32
`2.
`Beser Anticipates Claim 13 ......................................................33
`3.
`Beser Anticipates Claims 2, 8, and 14 ......................................34
`4.
`Beser anticipates Claims 3, 9, and 15 .......................................35
`5.
`Beser Anticipates Claims 4, 10 and 16 .....................................36
`6.
`Beser Anticipates Claims 5 and 11 ...........................................36
`7.
`Beser Anticipates Claims 6 and 12 ...........................................37
`8.
`Beser in View of RFC 2401 Renders Obvious Claims 1-16 ...........38
`1.
`Claims 1, 7, and 13 Would Have Been Obvious ......................39
`2.
`Dependent Claims 2-6, 8-12, and 14-16 ...................................41
`3.
`Dependent Claims 5 and 11 ......................................................42
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`F.
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`ii
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`G.
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`H.
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`I.
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`Beser in View of Blum Renders Obvious Claims 1-16 ...................43
`1.
`Claims 1, 7, and 13 Would Have Been Obvious ......................43
`2.
`Claims 2-6, 8-12, and 14-16 Would Have Been Obvious ........45
`Beser in View of RFC 2401, and Further in View of Blum Renders
`Claims 1-16 Obvious .........................................................................46
`Claims 1-4, 7-10, and 13-16 Are Anticipated by Kiuchi ................47
`1.
`Kiuchi Anticipates Claim 1 .......................................................47
`2.
`Kiuchi Anticipates Claim 7 .......................................................53
`3.
`Kiuchi Anticipates Claim 13 .....................................................54
`4.
`Kiuchi Anticipates Claims 2, 8, and 14 ....................................55
`5.
`Kiuchi Anticipates Claims 3, 9, and 15 ....................................56
`6.
`Kiuchi Anticipates Claims 4, 10 and 16 ...................................57
`Claims 1-4, 7-10, and 13-16 Are Obvious Based on Kiuchi in View
`of RFC 1034 .......................................................................................58
`Conclusion ......................................................................................................... 60
`
`
`J.
`
`VI.
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`Attachment A. Proof of Service of the Petition
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`Attachment B. List of Evidence and Exhibits Relied Upon in Petition
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`
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`
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`iii
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`I.
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`Compliance With Requirements For A Petition For Inter Partes Review
`A. Certification the ’151 Patent May Be Contested by Petitioner
`Petitioner certifies that U.S. Patent No. 7,490,151 (the ’151 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 ’151 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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`’151 patent. As explained below, the ’151 patent has not been the subject of a
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`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 ’151 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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`II. Mandatory Notices (37 CFR § 42.8(b))
`A. Real Party in interest (§ 42.8(b)(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, California 94105.
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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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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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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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`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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`RPX observes that the ’151 patent has been asserted against some of its
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`1
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`clients.
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`2
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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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 ’151 patent and was solely responsible for selecting the claims of
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`the ’151 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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`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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`2 An executed copy of the agreement is also being filed under seal. Ex. 1073.
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`3
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`this petition.
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`B. Other Proceedings (§ 42.8(b)(2))
`The ’151 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. 6:13-cv-
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`00351-LED (E.D. Tex), filed April 22, 2013.
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`The ’151 patent is also the subject of merged inter partes reexamination
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`Nos. 95/001,697 and 95/001,714. In the merged proceedings, the Office issued a
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`Non-Final Action on April 20, 2012 rejecting all 16 claims of the ’151 patent,
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`including rejections based on several prior art references relied upon in this
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`Petition. In sum, the Office has rejected each of claims 1-16 as being anticipated
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`or obvious based on Ex. 1007 (Aventail), Ex. 1009 (Beser), and Ex. 1067 (Kiuchi)
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`as well as over several other prior art references.
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`The ’151 patent is the subject of IPR petitions No. IPR2013-00354 filed by
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`Apple Inc. and IPR2013-00376 filed by New Bay Capital LLC. Petitioner
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`observes that the grounds presented in this petition closely parallel the grounds
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`presented in the petitions filed by Apple and New Bay Capital.
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`C. Designation of Lead and Backup Counsel
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`4
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`Lead Counsel
`Greg Howison
`Reg. No. 30646
`ghowison@dalpat.com
`972-680-6050
`
`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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`D.
`Service on Petitioner may be made by mail to: Howison & Arnott, L.L.P.,
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`P.O. Box 741715, Dallas, Texas 75374-1715. By hand delivery to: Lincoln
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`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))
`E.
`Proof of service of this petition is provided in Attachment A.
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`III.
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`Identification of Claims Being Challenged (§ 42.104(b))
`Claims 1-16 of the ’151 patent are unpatentable for the following reasons:
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`(i)
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`Claims 1-16 are anticipated under § 102(b) by Aventail (Ex. 1007);
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`(ii) Claims 1-16 are obvious under § 103 based on Aventail (Ex. 1007);
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`(iii) Claims 3, 9 and 15 are obvious under § 103 based on Aventail (Ex.
`1007) in view of RFC 1035 (Ex. 1017);
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`(iv) Claims 5 and 11 are obvious under § 103 based on Aventail (Ex.
`1007) in view of Reed (Ex. 1014);
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`(v) Claims 1-16 are anticipated under § 102(e) by Beser (Ex. 1009);
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`(vi) Claims 1-16 are obvious under § 103 based on Beser (Ex. 1009) in
`view of RFC 2401 (Ex. 1010);
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`5
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`(vii) Claims 1-16 are obvious under § 103 based on Beser (Ex. 1009) in
`view of Blum (Ex. 1011);
`
`(viii) Claims 1-16 are obvious under § 103 based on Beser (Ex. 1009) in
`view of RFC 2401 (Ex. 1010), further in view of Blum (Ex. 1011);
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`(ix) Claims 1-4, 7-10, and 13-16 are anticipated under § 102(b) by
`(“Kiuchi”) (Ex. 1067);
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`(x) Claims 1-4, 7-10, and 13-16 are obvious under § 103 based on
`Kiuchi (Ex. 1067) in view of RFC 1034 (Ex. 1016).
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`Petitioner’s proposed construction of the contested claims, evidence relied upon,
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`and the precise reasons why the claims are unpatentable are provided in § IV, and
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`the evidence relied upon in support of 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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`IV. Relevant Information Concerning the Contested Patent
`A. Effective Filing Date and Prosecution History of the ’151 patent
`The ’151 patent issued from U.S. Application No. 10/259,494, filed
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`6
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`September 30, 2002. The ’494 application is a division of U.S. Application No.
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`09/504,783, filed on February 15, 2000, now U.S. Patent No. 6,502,135, which is a
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`continuation-in-part of U.S. Application No. 09/429,653, filed on October 29,
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`1999, now U.S. Patent No. 7,010,604. The ’494, ’783 and ’653 applications each
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`claim priority under 35 U.S.C. 119(e) to Provisional Application Nos. 60/106,261,
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`filed October 30, 1998 and 60/137,704, filed June 7, 1998.
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`Claims 1, 7 and 13 of the ’151 patent are independent claims. Claims 2-6
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`depend from claim 1, claims 8-12 depend from claim 7, and claims 14-16 depend
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`from claim 13. So, claims 2-6, 8-12, and 14-16 cannot enjoy an effective filing
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`date earlier than that of claims 1, 7 and 13, respectively, from which they depend.
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`Claims 1, 7 and 13 of the ’151 patent rely on information first presented in
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`the ’783 application. For example, claim 1 of the ’151 patent specifies
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`“determining whether the intercepted DNS request corresponds to a secure server”
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`and subsequent steps involving the DNS request. Similarly, claims 7 and 13
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`include limitations involving DNS requests (e.g., “intercepting a DNS request
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`sent by a client . . .” and “determining whether the intercepted DNS request
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`corresponds to a secure server . . .”, respectively). The first application that recites
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`the term “DNS” is the ’783 application. Because none of the ’653, ’261 or ’704
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`applications disclose or even suggest use in any manner of DNS requests or proxy
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`servers, these earlier filed applications do not describe or enable the subject matter
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`7
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`defined by at least claims 1, 7 and 13 of the ’151 patent. Accordingly, the effective
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`filing date of claims 1-16 of the ’151 patent is no earlier than February 15, 2000.
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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 ’151 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 ¶ 66.
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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., Ctrl No. 95/000,161,
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`8
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`Appeal 2012-007851, p. 16 (PTAB Dec. 11, 2012) (citing In re Morris, 127 F.3d
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`1048, 1056 (Fed. Cir. 1997)). Of course, the specification must also be consulted
`
`to determine the broadest reasonable construction of the claims.
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`Domain Name Server (Claims 1-16)
`1.
`The ’151 patent does not define the phrase “Domain Name Server” or
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`“DNS.” Patent Owner has asserted a “domain name service” is “a lookup service
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`that returns an IP address for a requested domain name.” Ex. 1046 at 13-14. A
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`person of ordinary skill in the art also would recognize that a domain name server
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`performs domain name resolution according to Internet standards, namely, RFC
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`1034 and RFC 1035 (Exs. 1016 & 1017). Under these standards an IP address will
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`not always be returned – an error also may be returned. Ex. 1003 ¶¶ 114-123.
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`Petitioner agrees with Apple that the broadest reasonable construction of “Domain
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`Name Server” includes “a computer or computer-based process that will return an
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`IP address or an error code in response to a domain name resolution request.”
`
`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. 1070 at 29-33. 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 server.” Several other claims use “DNS” as
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`an adjective to describe other devices, e.g., a “DNS proxy module” (claim 7) or a
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`9
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`“DNS function” (claims 7 & 13). The claims thus define DNS as a distinct term,
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`and the Board should reject Patent Owner’s illogical proposed construction which
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`seeks to avoid construing DNS. See Ex. 1070 at 29.
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`Domain Name
`2.
`The ’151 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 ¶¶ 191-193. Petitioner therefore agrees
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`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.” The district
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`court adopted Patent Owner’s construction, and therefore, Patent Owner now is
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`estopped from arguing for a different construction (as it attempts to do in Ex. 1070
`
`at 27). See Data General Corp. v. Johnson, 78 F.3d 1556, 1565 (Fed. Cir. 1996).
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`Domain Name Server (DNS) Proxy Module (Claims 1, 7)
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`3.
`Petitioner agrees with Patent Owner that the broadest reasonable
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`construction of a “DNS proxy module” is “a component that responds to a DNS
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`request in place of a DNS.” Ex. 1070 at 34-36. Petitioner notes that Patent Owner
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`has admitted that the DNS proxy module can be distributed across different
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`computers or processes. Ex. 1070 at 35.
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`DNS Request (Claims 1-16)
`4.
`The ’151 patent does not explicitly define the term “DNS request.”
`
`Consistent with the definition of domain name server, see § 1, above, a “DNS
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`request” is a request to resolve a domain name into an IP address.
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`Domain Name Server Module (Claim 13)
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`5.
`Petitioner agrees with Patent Owner and Apple that “domain name server
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`module” should be given its plain and ordinary meaning and requires no
`
`construction. Ex. 1070 at 36.
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`Secure Server (Claims 1-16)
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`6.
`Petitioner agrees with Patent Owner, Apple, and New Bay Capital that the
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`broadest reasonable construction of “secure server” is “a server that requires
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`authorization for access and that can communicate in an encrypted channel.” Ex.
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`1070 at 38-39; see Ex. 1046 at 24. Also, several claims recite a “secure sewer.”
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`While Petitioner believes this is a typographical error, Patent Owner has not, as of
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`the date of this petition, corrected this error in the claims.
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`IP Address Hopping Scheme (Claims 5 and 11)
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`7.
`The ’151 patent does not define the term “IP address hopping scheme.” It
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`does refer to a variety of schemes that route traffic through intermediary network
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`devices according to a pre-defined scheme as “IP hopping schemes.” See, e.g., Ex.
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`1001 at 5:36-6:3, 14:39-63. These schemes use a wide variety of routing concepts
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`and strategies that are used to obfuscate the IP address of the sender, receiver, or
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`both. The broadest reasonable construction of “IP address hopping scheme” thus
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`encompasses any type of scheme for routing IP traffic from a client to a destination
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`through intermediary devices. Also, claim 5 recites an “IF” hopping scheme,
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`11
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`which the Petitioner understands to be a typographical error. Patent Owner has
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`not, as of the date of this petition, corrected this error.
`
`Patent Owner’s proposed construction differs by adding the phrase “in a way
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`that creates a VPN.” Ex. 1070 at 39-41. This construction is illogical – the claims
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`that use “IP hopping scheme” clearly state that a VPN is being created which uses
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`that scheme. See, e.g., Ex. 1001 at claim 5 (“wherein automatically initiating the
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`encrypted channel between the client and the secure sewer comprises establishing
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`an IF address hopping scheme between the client and the secure server); id. at
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`claim 11 (“wherein automatically initiating the encrypted channel between the
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`client and the secure sewer comprises establishing an IP address hopping scheme
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`between the client and the secure server.”). Patent Owner’s additional terms are
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`unnecessary and would only cause confusion.
`
`8.
`
`Automatically Initiating/Creating an Encrypted Channel
`(Claims 1-16)
`
`Petitioner agrees with Patent Owner and New Bay Capital that the broadest
`
`reasonable construction of “automatically initiating an encrypted channel” in
`
`claims 1 and 7 is “initiating the encrypted channel without involvement of a user.”
`
`Ex. 1070 at 41-42. Petitioner agrees with Patent Owner and New Bay that the
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`broadest reasonable construction of “automatically creating a secure channel” in
`
`claim 13 is “creating the secure channel without involvement of a user.” Id.
`
`9.
`
`Client (Claims 1-16)
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`12
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`The ’151 patent does not define the term “client.” The claims user the term
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`“client” to refer to a computer that sends the request that initiates an encrypted
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`channel with a secure server – e.g., in claim 1 the client sends a DNS request, and
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`in claim 4 the client “comprises a web browsers into which a user enters a URL
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`resulting in a the DNS request.” The logical meaning of “client” from the claims is
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`simply the computer that sends the request that initiates the VPN.
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`Patent Owner, however, asserts a “client computer” is “the user’s computer.”
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`Ex. 1070 at 42-45. Patent Owner’s definition is inconsistent with the claim
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`language. First, the term used in the claims is not the “client’s computer” but
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`rather simply the “client.” Also, the District Court in concurrent litigation
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`recognized that intermediary computers participate in VPNs. See, e.g., Ex. 1049 at
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`8 n.2. Petitioner thus agrees with New Bay Capital that the broadest reasonable
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`construction of “client” is a computer that generates or sends the request that
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`initiates a secure or encrypted channel with a secure server.
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`10. Determining (Claims 1, 2, 7, 8, 13, and 14)
`Petitioner agrees with Patent Owner that the ordinary meaning of the term
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`“determining” should be used. Ex. 1070 at 45. Petitioner also agrees with Patent
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`Owner that the “determining” step can be made by a client computer or by another
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`computer participating in a VPN. See Ex. 1070 at 45 (“It is sufficient to note, as
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`the district court did, that nothing in claim 1 prevents the client computer from
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`performing the ‘determining’ step.”).
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`11. Forwarding the DNS Request (Claims 1, 7, and 13)
`Petitioner agrees with Patent Owner and Apple that “forwarding the DNS
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`request to a DNS function” should be given its plain and ordinary meaning and
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`requires no construction. Ex. 1070 at 46.
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`Intercepting (Claims 1, 7, and 13)
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`12.
`Petitioner agrees with Patent Owner and Apple that “intercepting” should be
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`given its plain and ordinary meaning and requires no construction. Ex. 1070 at 47.
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`V.
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`Precise Reasons for Relief Requested
`A. Claims 1-16 Are Anticipated By Aventail (Ex. 1007)
`Aventail (Ex. 1007) is a printed publication that was publicly distributed no
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`later than January 31, 1999. Ex. 1003 ¶¶ 215-222; Ex. 1005 at ¶¶ 11-36; Ex. 1006
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`at ¶¶ 11-24. Aventail is prior art to the ’151 patent at least under 35 U.S.C. §§
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`102(a) and (b). A concise summary of the systems and processes described in
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`Aventail is provided at ¶¶ 262 to 356 of Ex. 1003 and at ¶¶14 to 78 of Ex. 1005.
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`Aventail Anticipates Claim 1
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`1.
`Aventail shows a client computer running Aventail Connect will intercept a
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`connection request made on the client. Ex. 1003 ¶¶ 266-272, 276. This is the
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`same technique described in the ’151 patent. Ex. 1007 (Aventail) at ¶ 277. The
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`request will be evaluated at the client computer or at a DNS proxy server (e.g., the
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`Aventail Extranet Server or “AES”). Ex. 1003 ¶¶ 267, 272, 280-287 (client
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`computer); ¶¶ 286-287, 296-297 (Extranet Server). For example, the client
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`computer could be configured to proxy all connection requests to a DNS proxy
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`server for handling and resolution by enabling the “DNS Proxy Option” in the
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`Aventail Connect client. Ex. 1003 ¶¶ 286-287, 296-303, 311-321. The Aventail
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`Connect client can also evaluate connection requests locally. Ex. 1003 ¶¶ 279-284,
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`289-295, 307. A “DNS Proxy Module” per claim 1 can reside on the same or
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`different computer as the one where the DNS request originates. See § IV.C.2. It
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`also can be a “process” performed on a single or multiple computers. Id. Thus, a
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`client computer running Aventail Connect, the server computer running AES, or
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`both, comprise “a DNS proxy module.” Aventail thus describes “[a] data
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`processing device, comprising memory storing a domain name server (DNS) proxy
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`module that intercepts DNS requests sent by a client and, for each intercepted DNS
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`request, performs the steps.” Ex. 1003 ¶¶ 357-360; see id. at ¶¶ 75-78.
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`Aventail shows that redirection rules are used to identify DNS requests made
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`on a client computer containing a domain name or IP address on a private network
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`requiring secure communications. Ex. 1003 ¶¶ 267-268, 274, 279-287, 303-317,
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`321. If a domain name in a request matches a domain name in a redirection rule,
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`Aventail Connect would flag that request to be proxied to the proxy server for
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`handling. Ex. 1003 ¶¶ 267-268, 274, 279-287, 303-317, 321. Aventail thus
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`describes the step of “determining whether the intercepted DNS request
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`corresponds to a secure server.” Ex. 1003 ¶¶ 361-370.
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`Aventail shows that if a DNS request containing a domain name or an IP
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`address does not match a local name resolution rule or a redirection rule, it will be
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`handed off to client operating system for handling, which will perform a DNS
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`lookup and returns the IP address “as if Aventail Connect were not running.” Ex.
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`1003 ¶¶ 267, 272-273, 283-281, 314. Domain names and IP addresses that match a
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`redirection rule are “secure” destinations (e.g., hosts on a private network), while
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`other domains are “non-secure” (e.g., public websites). Ex. 1003 ¶ 313. Aventail
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`also shows Aventail Connect can be configured to perform local name resolution
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`on domain names in a request. Ex. 1003 ¶¶ 279-284, 289-295, 307. Locally
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`resolved domain name are not secure destinations because requests containing
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`them will not be forwarded to the proxy server (AES). Ex. 1003 ¶¶ 279-284, 289-
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`295, 307. Aventail thus shows “(ii) when the intercepted DNS request does not
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`correspond to a secure server, forwarding the DNS request to a DNS function that
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`returns an IP address of a nonsecure computer, and.” Ex. 1003 ¶¶ 371-377.
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`In the Aventail systems, if an intercepted DNS request contained a domain
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`name that matched a redirection rule, the request would trigger a sequence of steps
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`that would establish a VPN between the client computer and the secure destination.
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`Ex. 1003 ¶¶ 263, 267-269, 274, 304, 317-323, 343-350. Specifically, the request
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`would flagged for special handling by the Aventail Connect client by inserting a
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`Petition for Inter Partes Review of U.S. Patent No. 7,490,151
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`false entry (“HOSTENT”) into it. Ex. 1003 ¶¶ 278-279, 303, 311-313. Then, after
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`the name resolution, the request would be evaluated – if it contained the false entry
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`or an IP address matching a redirection rule, the client would know the request
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`would have to be sent (“proxied”) to the proxy server (AES) specified in the
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`redirection rule for that domain name or IP address. Ex. 1003 ¶¶ 267-268, 274-
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`287, 296-299, 303-317, 321. To do that, the client computer would open a
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`connection