`
`Paper No.
`Filed: September 27, 2013
`
`
`Filed on behalf of: VirnetX Inc.
`By:
`Joseph E. Palys
`
`Naveen Modi
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
`Telephone: 571-203-2700
`Facsimile: 202-408-4400
`E-mail: joseph.palys@finnegan.com
` naveen.modi@finnegan.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`NEW BAY CAPITAL, LLC
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2013-00378
`Patent 7,921,211
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 7,921,211
`
`
`
`
`
`
`
`Petitioner RPX Corporation - Ex. 1081, p.
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`
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`Case No. IPR2013-00378
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`
`
`Table of Contents
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review ......................................................................................... 3
`
`III. The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected ........................................................................................................... 5
`
`A. Overview of the ’211 Patent .................................................................. 6
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`“Domain Name” (Claims 36 and 37) ..................................................10
`
`“Top-Level Domain Name” (Claim 37) .............................................12
`
`“Domain Name Service System” (Claims 36 and 51) ........................14
`
`“Secure Communication Link” (Claims 36 and 51) ...........................17
`
`“Code for . . . Indicating” (Claim 36) .................................................21
`
`G.
`
`“Transparently” (Claim 51) .................................................................23
`
`IV.
`
`If Trial Is Instituted, VirnetX Requests an 18-Month Schedule ...................24
`
`V.
`
`Conclusion .....................................................................................................25
`
`
`
`
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`
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`i
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`Petitioner RPX Corporation - Ex. 1081, p.
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`
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`Table of Authorities
`
`Case No. IPR2013-00378
`
`Page(s)
`
`
`CASES
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001 (Jan. 9, 2013) Paper No. 15 .............................................. 5-6, 19
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 19
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) .............................................................................. 5
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093 (Apr. 29, 2013) Paper No. 28 ............................................... 6, 19
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................................ 5
`
`Xilinx, Inc. v. Intellectual Ventures I LLC,
`IPR2013-00112 (June 27, 2013) Paper No. 14 ................................................... 19
`
`ZTE Corp. & ZTE (USA) Inc. v. ContentGuard Holdings Inc.,
`IPR2013-00134 (June 19, 2013) Paper No. 12 ................................................... 19
`
`FEDERAL STATUTES
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 316(a)(1) ............................................................................................... 25
`
`FEDERAL REGULATIONS
`
`37 C.F.R. § 42.100(b) ................................................................................................ 5
`
`37 C.F.R. § 42.100(c) ............................................................................................... 25
`
`37 C.F.R. § 42.104(b)(4) ........................................................................................ 3, 5
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
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`ii
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`Petitioner RPX Corporation - Ex. 1081, p.
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`Case No. IPR2013-00378
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`
`
`I.
`
`Introduction
`
`Patent Owner VirnetX Inc. (“VirnetX” or “Patent Owner”) respectfully
`
`submits this Preliminary Response in accordance with 35 U.S.C. § 313 and
`
`37 C.F.R. § 42.107, responding to the Petition for Inter Partes Review (Paper No.
`
`4, the “Petition”) filed by New Bay Capital, LLC (“New Bay”).
`
`This Petition is one of eleven inter partes reviews requested recently by
`
`Apple Inc. (“Apple”) and New Bay against VirnetX’s patents. Three of the inter
`
`partes review petitions challenge VirnetX’s U.S. Patent No. 7,921,211 (“the ’211
`
`patent”).
`
`New Bay’s Petition marks the seventh challenge to the validity of the ’211
`
`patent. Apple and Cisco Systems, Inc. (“Cisco”) raised the first and second
`
`challenges to the ’211 patent in district court. Neither succeeded. The cases were
`
`tried before separate juries, and both juries upheld the validity of the asserted ’211
`
`patent claims. (Ex. 2001, Jury Verdict Form Against Apple in VirnetX Inc. v.
`
`Apple Inc., Case No. 6:10-CV-417 (E.D. Tex. Nov. 6, 2012) (“the ’417
`
`Litigation”); Ex. 2002, Jury Verdict Form as to Cisco in the ’417 Litigation (E.D.
`
`Tex. Mar. 14, 2012). The court later entered judgments upholding the validity of
`
`the ’211 patent. (Ex. 2003, Final Judgment Against Apple in the ’417 Litigation
`
`(E.D. Tex. Feb. 28, 2013); Ex. 2004, Final Judgment as to Cisco in the ’417
`
`Litigation (E.D. Tex. Mar. 19, 2013).)
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`1
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`Petitioner RPX Corporation - Ex. 1081, p. 1
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`Case No. IPR2013-00378
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`In the third and fourth challenges, Apple and Cisco each requested inter
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`partes reexamination of the ’211 patent (Control Nos. 95/001,856 and 95/001,789).
`
`Those reexaminations are ongoing.
`
`New Bay’s Petition represents the fifth challenge to the ’211 patent. Apple
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`recently sought the sixth and seventh challenges to the ’211 patent by filing two
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`inter partes review petitions.1 (See Case Nos. IPR2013-00397, “the ’397 petition,”
`
`and IPR2013-00398, “the ’398 petition”). Apple’s petitions are pending but not
`
`instituted. Accordingly, New Bay’s Petition is now one of the five pending
`
`post-grant challenges before the Office concerning the ’211 patent (two
`
`reexaminations and three inter partes review petitions).
`
`These proceedings are largely duplicative of one another, and instituting
`
`New Bay’s inter partes review will only serve to duplicate efforts already
`
`undertaken in litigation and in pending reexamination of the ’211 patent. Indeed,
`
`each of New Bay’s proposed rejections is based solely on Kiuchi. Kiuchi is also
`
`asserted in the Cisco reexamination (Control No. 95/001,856). Further, in the ’417
`
`Litigation, Apple’s primary invalidity theory—and the only theory it elected to
`
`
`1 New Bay’s Petition should also not be joined with Apple’s petitions for the
`
`’211 patent, if instituted, for the reasons discussed in VirnetX’s Opposition to
`
`Apple’s Motion for Joinder, filed August 28, 2013, in matters IPR2013-00397 and
`
`-00398.
`
`
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`2
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`Petitioner RPX Corporation - Ex. 1081, p. 2
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`Case No. IPR2013-00378
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`present at trial—was invalidity of the asserted ’211 patent claims based on Kiuchi.
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`(Ex. 2005 at 4:4-7, Transcript of Trial Morning Session in the ’417 Litigation (E.D.
`
`Tex. Nov. 5, 2012).) Despite focusing the jury on what Apple believed was its
`
`strongest reference, Apple failed to persuade the jury that any asserted claim was
`
`invalid. (Ex. 2001, Jury Verdict Form Against Apple in the ’417 Litigation.) The
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`court entered final judgment upholding (among other things) the validity of the
`
`asserted ’211 patent claims over Kiuchi, and Apple has appealed. (Ex. 2003, Final
`
`Judgment Against Apple in the ’417 Litigation.)
`
`New Bay’s Petition is also defective in a number of ways described below.
`
`As one example, New Bay proposes several defective claim constructions that do
`
`not represent the broadest reasonable interpretation of the claims in light of the
`
`specification. Because its proposed rejections are based on incorrect constructions,
`
`New Bay cannot demonstrate a reasonable likelihood of prevailing for any claim of
`
`the ’211 patent. Accordingly, the Board should not institute this proceeding.
`
`II. The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review
`
`For an inter partes review to be instituted, “the petition must specify where
`
`each element of the claim is found in the prior art patents or printed publications
`
`relied upon.” 37 C.F.R. § 42.104(b)(4) (emphasis added). New Bay has failed to
`
`provide the requisite specificity in its Petition because it fails to apply its proposed
`
`
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`3
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`Petitioner RPX Corporation - Ex. 1081, p. 3
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`claim constructions to explain how Kiuchi allegedly satisfies the claim limitations.
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`Inter partes review thus should not be instituted on the basis of the Petition.
`
`For example, New Bay proposes that “secure communication link” means “a
`
`direct communication link that provides data security.” (Petition at 15, 21.) But
`
`New Bay never attempts to show how this construction is satisfied by Kiuchi.
`
`With respect to independent claim 36, New Bay asserts that Kiuchi’s “C-HTTP
`
`name server enables a ‘client-side proxy and server-side proxy [to] communicate
`
`with each other using a secure, encrypted protocol. . .’.” (Id. at 30.) And New Bay
`
`contends that “[t]he C-HTTP server is thus programmed to respond to a query with
`
`public keys and Nonce values along with the IP address for use in establishing a
`
`secure communication link.” (Id. at 34-35.) These statements do not explain how
`
`the purported “secure communication link” is “a direct communication link,” as
`
`required by New Bay’s proposed construction, and an explanation is not found
`
`anywhere else in New Bay’s Petition. Even New Bay’s claim chart fails to address
`
`this aspect of its proposed construction. (Id. at 40-41.)
`
`Claim 51 also recites a “secure communication link.” The Petition fails to
`
`apply New Bay’s construction for this claim as well. In particular, nowhere does
`
`the Petition explain how Kiuchi discloses “a direct communication link” in
`
`accordance with New Bay’s proposed construction for claim 51. (Id. at 45-47.)
`
`
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`4
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`Petitioner RPX Corporation - Ex. 1081, p. 4
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`Accordingly, New Bay’s Petition fails to “specify where each element of the
`
`claim is found in the prior art patents or printed publications relied upon,” because
`
`it does not explain how Kiuchi read on the claims under its own proposed
`
`construction. The Petition thus does not comply with 37 C.F.R. § 42.104(b)(4) and
`
`a trial should not be instituted.
`
`III. The Petition’s Claim Constructions Are Flawed and Should Be Rejected
`
`In inter partes review, claims are to be given their “broadest reasonable
`
`construction in light of the specification.” Id. § 42.100(b). In applying the
`
`“broadest reasonable construction” or interpretation (“BRI”) standard, the words of
`
`the claim must be given their plain meaning unless the plain meaning is
`
`inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
`
`The ordinary meaning of a term may be evidenced by a variety of sources,
`
`including “the words of the claims themselves, the remainder of the specification,
`
`the prosecution history, and extrinsic evidence concerning relevant scientific
`
`principles, the meaning of technical terms, and the state of the art.” Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (citation omitted).
`
`Additionally, the prosecution history is part of the intrinsic record and
`
`should be considered when construing the claims. Id. at 1317. In inter partes
`
`review proceedings, the Board has consistently considered the prosecution history
`
`when construing the claims. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`
`
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`5
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`Petitioner RPX Corporation - Ex. 1081, p. 5
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`Case No. IPR2013-00378
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`IPR2012-00001 (Jan. 9, 2013) Paper No. 15 at 8; see also Motorola Solutions, Inc.
`
`v. Mobile Scanning Techs., LLC, IPR2013-00093 (Apr. 29, 2013) Paper No. 28 at
`
`10.
`
`As explained below, New Bay proposes several defective claim
`
`constructions that do not represent the BRI of the claims. Because it is based on
`
`incorrect claim constructions, the Petition cannot demonstrate a reasonable
`
`likelihood of prevailing as to any claim of the ’211 patent.
`
`A. Overview of the ’211 Patent
`
`The ’211 patent discloses several embodiments of a domain name service
`
`(“DNS”) system for establishing a secure communication link, such as a virtual
`
`private network (“VPN”) communication link, between devices connected to a
`
`network. In one embodiment, a novel, specialized DNS system receives a DNS
`
`request and automatically facilitates the establishment of a secure communication
`
`link between two devices. (Ex. 1001 at 39:30-35.)
`
`The ’211 patent distinguishes the claimed DNS service system from a
`
`conventional DNS scheme that merely returns a requested IP address and/or public
`
`key:
`
`
`
`Conventional Domain Name Servers (DNSs) provide a look-up
`
`function that returns the IP address of a requested computer or host.
`
`For example, when a computer user types in the web name
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`“Yahoo.com,” the user’s web browser transmits a request to a DNS,
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`6
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`Petitioner RPX Corporation - Ex. 1081, p. 6
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`which converts the name into a four-part IP address that is returned to
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`the user’s browser . . . .
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`. . .
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`One conventional scheme that provides secure virtual private
`
`networks over the Internet provides the DNS server with the public
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`keys of the machines that the DNS server has the addresses for. This
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`allows hosts to retrieve automatically the public keys of a host that the
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`host is to communicate with so that the host can set up a VPN without
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`having the user enter the public key of the destination host. One
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`implementation of this standard is presently being developed as part
`
`of the FreeS/WAN project (RFC 2535).
`
`The conventional scheme suffers from certain drawbacks. For
`
`example, any user can perform a DNS request. Moreover, DNS
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`requests resolve to the same value for all users.
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`According to certain aspects of the invention, a specialized DNS
`
`server traps DNS requests and, if the request is from a special type of
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`user (e.g., one for which secure communication services are defined),
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`the server does not return the true IP address of the target node, but
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`instead automatically sets up a virtual private network between the
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`target node and the user.
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`(Id. at 38:58-39:35.)
`
`Compared with a conventional DNS known at the time of filing the ’211
`
`patentwhich is described as merely returning a requested IP address and/or
`
`public keythe claimed DNS service system of the ’211 patent supports
`
`
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`7
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`Petitioner RPX Corporation - Ex. 1081, p. 7
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`establishing a secure communication link and provides an indication of the same.
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`(See, e.g., id. at 55:38-46, 57:38-46, 59:9-60:8.) For example, in FIGS. 26 and 27
`
`of the ’211 patent, reproduced below, a DNS server 2602 including a DNS proxy
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`2610 supports establishing a VPN link between a computer 2601 and a secure
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`target site 2604. (Id. at 39:51-41:43.)
`
`
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`
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`Here, the DNS server 2602 receives a DNS request for a target site from computer
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`2601. (Id. at 40:32-35.) A DNS proxy 2610 at the DNS server 2602 determines
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`whether the target site is a secure site. (Id. at 39:57-59, 40:32-39.) If access to a
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`secure site has been requested, the DNS proxy 2610 determines whether the
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`computer 2601 is authorized to access the site. (Id. at 40:40-42.) If so, the DNS
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`
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`8
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`Petitioner RPX Corporation - Ex. 1081, p. 8
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`proxy 2610 transmits a message to gatekeeper 2603 to create a secure
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`communication link (e.g., a VPN link) between computer 2601 and secure target
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`site 2604. (Id. at 39:63-66.) In this example, the gatekeeper 2603 allocates
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`resources (in this case, IP hop blocks) for the secure communication link to the
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`computer 2601 and secure target site 2604. (Id. at 39:66-40:3.) The DNS proxy
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`2610 then responds to the computer 2601’s DNS request with an address received
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`from the gatekeeper 2604. (Id. at 40:3-7.) In this manner, the specialized DNS
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`service system supports establishing a secure communication link, doing more than
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`a conventional DNS server at the time of the invention.
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`
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`9
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`Petitioner RPX Corporation - Ex. 1081, p. 9
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`Case No. IPR2013-00378
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`B.
`
`“Domain Name” (Claims 36 and 37)2
`
`VirnetX’s Proposed
`Construction
`A name
`corresponding to a
`network address
`
`Apple’s Proposed
`Construction3
`A name
`corresponding to
`an IP address
`
`New Bay’s Proposed Construction
`
`’211 and ’504 patents: a name
`corresponding to a network address
`- - - - -
`’135 and ’151 patents: a name
`corresponding to an IP address or a
`group of IP addresses
`
`
`The BRI of “domain name” is “a name corresponding to a network address.”
`
`New Bay agrees and proposes the same construction. (Petition at 15.)
`
`
`2 VirnetX identifies only the claims New Bay challenges in its Petition that
`
`expressly recite the terms at issue. Claims that depend from the identified claims
`
`may also implicitly contain the terms.
`
`3
`
`In Apple’s
`
`inter partes
`
`review petitions
`
`for
`
`the
`
`’211 patent
`
`(IPR2013-00397 and IPR2013-00398), Apple challenges additional claims that
`
`New Bay does not challenge. Thus, Apple has offered constructions for terms that
`
`appear exclusively in Apple-challenged claims. VirnetX has addressed or will
`
`address those Apple-only terms in its Preliminary Responses to Apple’s petitions,
`
`and does not address them here because they are not relevant to New Bay’s
`
`challenged claims. Where there is overlap in the terms proposed for construction
`
`by Apple and New Bay for the claims challenged by New Bay, VirnetX addresses
`
`all parties’ proposed constructions in this Preliminary Response.
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`
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`10
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`Petitioner RPX Corporation - Ex. 1081, p. 10
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`Apple asserts that the BRI “should encompass [VirnetX’s] contention that it
`
`can be ‘a name corresponding to an IP address.’” (Ex. 2006 at 10, Petition for
`
`Inter Partes Review in Case No. IPR2013-00397.) VirnetX’s and New Bay’s
`
`construction reciting a “network address” is consistent with Apple’s view because,
`
`as New Bay recognizes, the patent specification “uses the term ‘network addresses’
`
`generically and often more specifically refers to ‘IP addresses.’” (Petition at 16.)
`
`Thus, VirnetX’s construction reciting “a network address” encompasses, as one
`
`example, an IP address.4
`
`
`4 New Bay proposes a different construction of “domain name” for U.S.
`
`Patent No. 6,502,135 (“the ’135 patent”) and U.S. Patent No. 7,490,151 (“the ’151
`
`patent”). (Ex. 2016 at 11, Petition for Inter Partes Review in Case No. IPR2013-
`
`00375; Ex. 2017 at 11, Petition for Inter Partes Review in Case No. IPR2013-
`
`00376) (construing “domain name” as “a name corresponding to an IP address or a
`
`group of IP addresses.”) As explained in VirnetX’s Preliminary Responses in Case
`
`Nos. IPR2013-00375 and -00376, filed concurrently with this response, a different
`
`construction for the ’135 and ’151 patents is unnecessary because their claims
`
`already specify that the network address is an IP address.
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`
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`11
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`Petitioner RPX Corporation - Ex. 1081, p. 11
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`
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`C.
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`“Top-Level Domain Name” (Claim 37)
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`Case No. IPR2013-00378
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`Apple’s Proposed
`Construction
`--
`
`VirnetX’s Proposed
`Construction
`Plain meaning—a name
`that
`identifies
`the
`top
`level in a domain naming
`system
`
`Claim 37 of the ’211 patent recites “the plurality of domain names and
`
`New Bay’s Proposed
`Construction
`A name used as an ending
`component in a domain
`name
`
`corresponding network addresses including at least one top-level domain name.”
`
`The BRI of “top-level domain name,” as used in that phrase, is “a name that
`
`identifies the top level in a domain naming system.” According to the dictionary
`
`on which New Bay relies for the definition of VPN, “top-level domain” means “the
`
`highest level domain category in the Internet domain naming system.” (Ex. 2007
`
`at 976, McGraw-Hill Computer Desktop Encyclopedia (9th ed. 2001).) Consistent
`
`with this definition, the BRI of “top-level domain name,” is simply “a name that
`
`identifies the top level in a domain naming system.”
`
`The claims and specification of the ’211 patent support this construction.
`
`For example, dependent claim 4 recites the exemplary secure top-level domain
`
`names “.scom, .sorg, .snet, .sgov, .sedu, .smil and .sint.” (Ex. 1001 at 55:52-54;
`
`see also id. at 7:34-37, “Each secure computer network address is based on a
`
`non-standard top-level domain name, such as .scom, .sorg, .snet, .snet, .sedu, .smil
`
`and .sint.”) These exemplary secure domain names identify the highest level in
`
`their domain naming system. The specification also identifies exemplary
`
`
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`12
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`Petitioner RPX Corporation - Ex. 1081, p. 12
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`Case No. IPR2013-00378
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`nonsecure top-level domain names: “In the situation when computer network 3302
`
`is the Internet, computer 3304 typically will have a standard top-level domain
`
`name such as .com, .net, .org, .edu, .mil or .gov.” (Id. at 49:14-17.) The
`
`exemplary nonsecure domain names, likewise, represent the highest level in an
`
`Internet domain naming system. Accordingly, the claims and specification support
`
`that “top-level domain name” means “a name that identifies the top level in a
`
`domain naming system.”
`
`New Bay’s construction that “top-level domain name” means “a name used
`
`as an ending component in a domain name” is incorrect because it targets syntax
`
`over substance. Depending upon the particular type of domain naming system at
`
`issue, the “ending component” may not necessarily identify the top level or even
`
`identify the domain naming system at all. In a standard Internet domain naming
`
`system according to RFC 1034—which uses the suffixes .com, .net, .org, .edu,
`
`.mil, .gov, etc. to identify the top level of the domain naming system—it may be
`
`the case that the “ending component” identifies the top level. (See Ex. 2008,
`
`P. Mockapetris, RFC 1034, “Domain Names - Concepts and Facilities,” bearing
`
`date November 1987.) But in top-down domain naming schemes such as X.500,
`
`the prefix, not the ending component, specifies the top level. (See Ex. 2009 at 6-7,
`
`ITU-T Recommendation X.500, “Series X: Data Networks, Open System
`
`Communications and Security,” bearing date November 2008.)
`
`
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`13
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`Petitioner RPX Corporation - Ex. 1081, p. 13
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`Case No. IPR2013-00378
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`New Bay recognizes that the claims are not limited to the specific “domain
`
`name service” implementation promulgated by the Internet Engineering Task
`
`Force (IETF). (Petition at 20.) But its proposed construction for “top-level
`
`domain name” would do just that—limit the claims to the specific Internet domain
`
`naming syntax described in RFC 1034, in which the “ending component” identifies
`
`the top level. Thus, New Bay’s construction is incorrect and the Board should
`
`reject it.
`
`D.
`
`“Domain Name Service System” (Claims 36 and 51)
`
`VirnetX’s Proposed
`Construction
`Plain meaning; no
`construction necessary
`
`
`
`Apple’s Proposed
`Construction
`A lookup service,
`comprising one or more
`applications or devices,
`that will return to a
`requester an IP address or
`an error code in response
`to a domain name
`resolution request
`
`New Bay’s Proposed
`Construction
`A system that performs a
`lookup service that
`returns an IP address for a
`requested domain name
`and which may include a
`single device or multiple
`devices5
`
`
`5 New Bay proposes different constructions for the term “domain name
`
`service system” in the ’211 and ’504 patents. (Compare Petition at 15, 19 with Ex.
`
`2018 at 16, 22, Petition for Inter Partes Review in Case No. IPR2013-00377.)
`
`Nevertheless, New Bay does not explain why different constructions of this term
`
`are required.
`
`
`
`14
`
`Petitioner RPX Corporation - Ex. 1081, p. 14
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`
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`Case No. IPR2013-00378
`
`“Domain name service system” need not be construed. It is the subject of
`
`claims 36 and 51, and claim 36 already defines its characteristics: “a domain name
`
`service system . . . for: connecting the domain name service system to a
`
`communication network; storing a plurality of domain names and corresponding
`
`network addresses; receiving a query for a network address; and indicating in
`
`response to the query whether the domain name service system supports
`
`establishing a secure communication link.” Since the claim itself defines the
`
`characteristics of the domain name service system, no further construction is
`
`necessary.
`
`Nonetheless, Apple and New Bay propose different constructions for the
`
`term. According to Apple, it means “a lookup service, comprising one or more
`
`applications or devices, that will return to a requester an IP address or an error
`
`code in response to a domain name resolution request.” (Ex. 2006 at 11, Petition
`
`for Inter Partes Review in Case No. IPR2013-00397.) New Bay, on the other
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`hand, argues that “domain name service system” means “a system that performs a
`
`lookup service that returns an IP address for a requested domain name and which
`
`may include a single device or multiple devices.” (Petition at 15, 19-21.) Apple’s
`
`and New Bay’s constructions, however, at times are inconsistent with the language
`
`of claim 36, and at other times are redundant of other language in claim 36. Both
`
`constructions should be rejected.
`
`
`
`15
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`Petitioner RPX Corporation - Ex. 1081, p. 15
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`
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`Case No. IPR2013-00378
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`Apple contends that an “error code” requirement should also be read into
`
`“domain name service system” in light of the IETF standards defined in RFC 1034
`
`and RFC 1035. (Ex. 2006 at 10-11, Petition for Inter Partes Review in Case No.
`
`IPR2013-00397.) According to Apple, the “error code” limitation should be added
`
`to the claims because, under “standard procedures” (defined in RFC 1034 and RFC
`
`1035), “either an IP address or an error may be returned.” (Id. at 10.) Apple is
`
`wrong because, as New Bay correctly points out, the claims are not limited to the
`
`conventional domain name service implementation defined by the IETF. (Petition
`
`at 20-21.) Moreover, the specification differentiates the type of conventional,
`
`standard DNS system relied on by Apple from those claimed. (See Ex. 1001 at
`
`38:55-39:35, differentiating the claimed domain name service systems from the
`
`standard systems defined in RFC 2535.) For these reasons, Apple’s argument
`
`limiting the claims to the standard procedures defined by the IETF (RFC 1034 and
`
`RFC 1035) should be rejected.
`
`New Bay’s construction is no better, and adds no benefit beyond the words
`
`already in the claims. “A system that performs a lookup service that returns an IP
`
`address for a requested domain name” is merely a synonymous rewording of
`
`“domain name service system.” In addition, New Bay’s caveat that the claimed
`
`domain name service system “may include a single device or multiple devices”
`
`
`
`16
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`Petitioner RPX Corporation - Ex. 1081, p. 16
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`
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`Case No. IPR2013-00378
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`only confuses matters, because nothing in the claims requires the claimed domain
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`name service system to have any particular distribution across devices.
`
`In light of the above, the Board need not construe “domain name service
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`system.”
`
`E.
`
`“Secure Communication Link” (Claims 36 and 51)
`
`VirnetX’s Proposed
`Construction
`A direct
`communication link
`that provides data
`security through
`encryption
`
`Apple’s Proposed Construction
`
`A communication link in which
`computers privately communicate
`with each other on insecure paths
`between the computers where the
`communication is both secure and
`anonymous, and where the data
`transferred may or may not be
`encrypted
`
`New Bay’s Proposed
`Construction
`A direct
`communication link
`that provides data
`security
`
`
`VirnetX agrees with New Bay that “secure communication link” means a
`
`direct communication link that provides data security. A “secure communication
`
`link,” however, also requires “encryption” to provide data security, as determined
`
`by the district court in the ’417 Litigation based on the prosecution history of the
`
`’211 patent. VirnetX’s construction is also supported by the intrinsic record.
`
`New Bay states that its construction was “adopted by the district court in
`
`[the ’417 Litigation].” (Petition at 21.) New Bay neglects to mention that the
`
`district court later changed this construction based on arguments VirnetX made
`
`during a reexamination of the ’211 patent. New Bay also fails to note that
`
`VirnetX’s proposed construction of “secure communication link” is the same as
`
`
`
`17
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`Petitioner RPX Corporation - Ex. 1081, p. 17
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`
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`Case No. IPR2013-00378
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`that ultimately adopted by the district court in the ’417 Litigation. (See Ex. 2010 at
`
`1, Order in the ’417 Litigation (E.D. Tex. Oct. 4, 2012).) Like New Bay, Apple
`
`does not address the prosecution disclaimer regarding “encryption” in its petitions.
`
`(See Ex. 2006 at 12-15, Petition for Inter Partes Review in Case No. IPR2013-
`
`00397.)
`
`After the claim construction hearing in the ’417 Litigation, Apple and the
`
`other defendants filed a Motion for Reconsideration of the Construction of the
`
`Term “Secure Communication Link.” (See Ex. 2011, Motion for Reconsideration
`
`in the ’417 Litigation (E.D. Tex. June 21, 2012).) The defendantsincluding
`
`Appleargued that “VirnetX unequivocally disclaimed ‘secure communications
`
`links’ that are not encrypted.” (Id. at 1, 2.) In particular, the defendants cited
`
`arguments made by VirnetX in the inter partes reexamination of the ’211 patent
`
`(Control No. 95/001,789), to the effect that the Beser6 reference does not disclose a
`
`“secure communication link” involving encryption. (Ex. 2012 at 28-29, Patent
`
`Owner’s Response to Office Action of January 18, 2012.) VirnetX did not oppose
`
`the defendants’ motion. The district court granted the defendants’ motion in full.
`
`(See Ex. 2010 at 1, Order in the ’417 Litigation (E.D. Tex. Oct. 4, 2012).)
`
`
`6 Beser is a reference asserted by Apple in its petitions for inter partes
`
`review of the ’211 patent. (See ’397 Petition; ’398 Petition.)
`
`
`
`18
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`Petitioner RPX Corporation - Ex. 1081, p. 18
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`
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`Case No. IPR2013-00378
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`This prosecution disclaimer of secure communication links without
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`encryption is relevant under the BRI standard. See In re Bigio, 381 F.3d 1320,
`
`1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the
`
`PTO should only limit the claim based on the specification or prosecution history
`
`when those sources expressly disclaim the broader definition.” (emphasis added)).
`
`Indeed, in inter partes review proceedings, the Board considers the prosecution
`
`history when construing the claims. See Garmin Int’l, IPR2012-00001 Paper No.
`
`15 at 8; see also Motorola Solutions, IPR2013-00093 Paper No. 28 at 10; ZTE
`
`Corp. & ZTE (USA) Inc. v. ContentGuard Holdings. Inc., IPR2013-00134 (June
`
`19, 2013) Paper No. 12 at 16; Xilinx, Inc. v. Intellectual Ventures I LLC, IPR2013-
`
`00112 (June 27, 2013) Paper No. 14 at 6.
`
`The intrinsic record further supports VirnetX’s construction that a secure
`
`communication link requires encryption. For example, the specification refers to
`
`the “FreeS/WAN” project as the conventional scheme of creating a “VPN,” which
`
`is a type of secure communication link. (Ex. 1001 at 39:18-26.) The FreeS/WAN
`
`glossary of terms in the ’211 patent’s prosecution history defines a VPN as “a
`
`network which can safely be used as if it were private, even though some of its
`
`communication uses insecure connections. All traffic on those connections is
`
`encrypted.” (Ex. 2013 at 24, Glossary for the Linux FreeS/WAN Project.) Thus,
`
`
`
`19
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`Petitioner RPX Corporation - Ex. 1081, p. 19
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`Case No. IPR2013-00378
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`both intrinsic and extrinsic evidence demonstrate that secure communication links,
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`such as VPNs, require encryption.
`
`Apple asserts that a secure c
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