Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`RPX CORPORATION.
`Petitioner,
`
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION INTERNATIONAL
`CORPORATION,
`Patent Owner
`
`Patent No. 7,418,504
`Issued: August 26, 2008
`Filed: November 18, 2003
`Inventors: Victor Larson, et al.
`Title: AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS
`USING SECURE DOMAIN NAMES
`____________________
`
`Inter Partes Review No. IPR2014-00176
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
` Paper No. 1
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW ............................................................................ 1
`A.
`Certification the ’504 Patent May Be Contested by Petitioner ............ 1
`B.
`Fee for Inter Partes Review (§ 42.15(a)) .............................................. 1
`C. Mandatory Notices (37 CFR § 42.8(b)) ............................................... 1
`1.
`Real Party in Interest (§ 42.8(b)(1)) ........................................... 1
`2.
`Other Proceedings (§ 42.8(b)(2)) ............................................... 4
`3.
`Designation of Lead and Backup Counsel ................................. 5
`4.
`Service Information (§ 42.8(b)(4)) ............................................ 5
`Proof of Service (§§ 42.6(e) and 42.105(a)) ........................................ 5
`D.
`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§ 42.104(B)) .................................................................................................. 5
`III. RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT ......................................................................................................... 7
`A.
`Effective Filing Date and Prosecution History of the ’504 patent ....... 7
`B.
`Person of Ordinary Skill in the Art ...................................................... 8
`C.
`Construction of Terms Used in the Claims .......................................... 9
`1.
`Domain Name .......................................................................... 10
`2.
`Domain Name Service System ................................................ 10
`3.
`Indication ................................................................................. 12
`4.
`Secure Communication Link ................................................... 13
`5.
`Transparently ........................................................................... 17
`6.
`Top-Level Domain Name ........................................................ 17
`7.
`Secure Name ............................................................................ 17
`IV. PRECISE REASONS FOR RELIEF REQUESTED ................................... 18
`A.
`Claims 1, 2, 5, 6, 8, 14, 17, 19, 20, 23, 27-30, 33, 34, 36, 47, 51
`and 60 Are Anticipated by Aventail ................................................... 18
`Aventail Anticipates Claim 1 ................................................... 19
`1.
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`Aventail Anticipates Claim 36 ................................................. 23
`2.
`Aventail Anticipates Claim 60 ................................................. 23
`3.
`Aventail Anticipates Claim 2 ................................................... 24
`4.
`Aventail Anticipates Claim 5 ................................................... 25
`5.
`Aventail Anticipates Claim 6 ................................................... 25
`6.
`Aventail Anticipates Claim 8 ................................................... 25
`7.
`Aventail Anticipates Claim 14 ................................................. 26
`8.
`Aventail Anticipates Claim 17 ................................................. 27
`9.
`10. Aventail Anticipates Claim 19 ................................................. 27
`11. Aventail Anticipates Claim 20 ................................................. 28
`12. Aventail Anticipates Claims 23 and 47 ................................... 28
`13. Aventail Anticipates Claims 27 and 51 ................................... 29
`14. Aventail Anticipates Claim 28 ................................................. 30
`15. Aventail Anticipates Claim 29 ................................................. 31
`16. Aventail Anticipates Claim 30 ................................................. 32
`17. Aventail Anticipates Claim 33 ................................................. 33
`18. Aventail Anticipates Claim 34 ................................................. 33
`B. Aventail Renders Obvious Claims 1, 2, 5, 6, 8, 14, 17, 19, 20,
`23, 27-30, 33, 34, 36, 47, 51 and 60 ................................................... 34
`Claims 1, 2, 5, 6, 8, 14, 17, 19, 20, 23, 27-30, 33, 34, 36, 47, 51
`and 60 Are Unpatentable Over Provino ............................................. 35
`1.
`Provino Anticipates Claim 1 .................................................... 35
`2.
`Provino Anticipates Claim 36 .................................................. 38
`3.
`Provino Anticipates Claim 60 .................................................. 39
`4.
`Provino Anticipates Claim 2 .................................................... 39
`5.
`Provino Anticipates Claim 5 .................................................... 40
`6.
`Provino Anticipates Claim 6 .................................................... 41
`Provino Anticipates Claim 8 .................................................... 41
`7.
`8.
`Provino Anticipates Claim 14 .................................................. 41
`9.
`Provino Anticipates Claim 17 .................................................. 42
`
`C.
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`10. Provino Anticipates Claim 19 .................................................. 42
`11. Provino Anticipates Claim 20 .................................................. 42
`12. Provino Anticipates Claims 23 and 47 .................................... 43
`13. Provino Anticipates Claims 27 and 51 .................................... 43
`14. Provino Anticipates Claim 28 .................................................. 44
`15. Provino Anticipates Claim 34 .................................................. 44
`Provino in View of Beser Renders Obvious Claims 29 and 30 ......... 44
`1.
`Provino in View of Beser Renders Obvious Claims 29
`and 30 ....................................................................................... 46
`CONCLUSION ............................................................................................. 48
`
`
`D.
`
`V.
`
`Attachment A. Proof of Service of the Petition
`
`Attachment B. List of Evidence and Exhibits Relied Upon in Petition
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`
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`I.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`A. Certification the ’504 Patent May Be Contested by Petitioner
`Petitioner certifies that U.S. Patent No. 7,418,504 (the ’504 patent) (Ex.
`
`1001) is available for inter partes review. Petitioner certifies that it is not barred or
`
`estopped from requesting inter partes review of the claims of the ’504 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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`’504 patent. As explained in § C.1, below, the ’504 patent has not been the subject
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`of a prior inter partes review by Petitioner or a privy of Petitioner, and neither
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`Petitioner, nor any party in privity with Petitioner, has been served with a
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`complaint alleging infringement of any claim of the ’504 patent.
`
`Fee for Inter Partes Review (§ 42.15(a))
`
`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.
`
`C. Mandatory Notices (37 CFR § 42.8(b))
`Real Party in Interest (§ 42.8(b)(1))
`1.
`The real party in interest of this petition pursuant to § 42.8(b)(1) is RPX
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`Corporation (“RPX”) located at One Market Plaza, Steuart Tower, Suite 800, San
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`Francisco, California 94105.
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`RPX is the leading provider of patent risk solutions, offering defensive
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`buying, acquisition syndication, patent intelligence, insurance services, and
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`advisory services. RPX has over 160 clients who have availed themselves of its
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`services, which include, inter alia, market intelligence, patent strategy services,
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`and defensive patent acquisition and licensing.1
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`As part of its mission to achieve a more rational patent marketplace, RPX
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`pursues efforts to improve patent quality and reduce patent litigation. For
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`example, RPX has established a Research & Development program (“RPX R&D”)
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`through which it advances a variety of initiatives to address and improve patent
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`quality. The initiatives under this program include increasing transparency by
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`collecting information regarding enforcement activities of entities or patents,
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`tracking patent sales, collecting and evaluating prior art, and compiling databases
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`of this information, which RPX makes available to its clients. In addition, as part
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`of its RPX R&D program, RPX contests patents of questionable validity by filing
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`requests for post-issuance review with the PTO. See http://www.rpxcorp.com/rpx-
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`researchanddevelopment.
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`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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`1 RPX observes that the ’504 patent has been asserted against some of its
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`clients.
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`2
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`petition. Ex. 1082.2 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
`
`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.
`
`RPX has exercised its sole discretion in deciding to file the present petition
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`concerning the ’504 patent and was solely responsible for selecting the claims of
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`the ’504 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
`
`
`2 An executed copy of the agreement is also being filed under seal. Ex. 1083.
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`this petition.
`
`2. Other Proceedings (§ 42.8(b)(2))
`The ’504 patent is the subject of a number of civil actions including: (i) Civ.
`
`Act. No. 6:13-cv-00211-LED (E.D. Tex.), filed February 26, 2013; (ii) Civ. Act.
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`No. 6:12-cv-00855-LED (E.D. Tex.), filed November 6, 2012; (iii) Civ. Act. No.
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`6:10-cv-00417-LED (E.D. Tex.), filed August 11, 2010; (iv) Civ. Act. No. 6:11-cv-
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`00018-LED (E.D. Tex), (iv) Civ. Act. No. 6:13-cv-00351-LED (E.D. Tex), filed
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`April 22, 2013.
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`The ’504 patent is also the subject of two inter partes reexamination, Nos.
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`95/001,788 and 95/001,851. On June 25, 2013, the Office issued a Right of
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`Appeal Notice in the ’788 proceeding maintaining rejections of all 60 claims in the
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`’504 patent. Similarly, on June 25, 2013, the Office issued a Right of Appeal
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`Notice in the ‘851 proceeding maintaining rejections of all 60 claims (with the
`
`exception of claim 11) in the ’504 patent.
`
`The ’504 patent also is the subject of IPR petitions No. IPR2013-00393 and
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`IPR2013-00394 filed by Apple Inc., and IPR2013-00377 filed by New Bay Capital
`
`LLC. Petitioner observes that the grounds presented in this petition, and in IPR
`
`petition IPR2014-00177, closely parallel the grounds presented in the petitions
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`filed by Apple and New Bay Capital. Finally, the ’504 patent is the subject of IPR
`
`petition No. IPR2014-00177 being filed concurrently with the present Petition.
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`Designation of Lead and Backup Counsel
`
`3.
`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
`
`
`Service Information (§ 42.8(b)(4))
`
`4.
`Service on Petitioner may be made by mail to:
`
`Howison & Arnott, L.L.P.
`P.O. Box 741715
`Dallas, Texas 75374-1715.
`
`
`Service on Petitioner may be made by hand delivery to:
`
`Howison & Arnott, L.L.P.
`Lincoln Centre II
`5420 LBJ Freeway, Suite 660
`Dallas, Texas 75240-2318.
`
`The fax number for lead and backup counsel is 972-479-0464.
`
`Proof of Service (§§ 42.6(e) and 42.105(a))
`D.
`Proof of service of this petition is provided in Attachment A.
`
`II.
`
`Identification of Claims Being Challenged (§ 42.104(b))
`Claims 1, 2, 5, 6, 8, 14, 17, 19, 20, 23, 27-30, 33, 34, 36, 47, 51 and 60 of
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`the ’504 patent are unpatentable as being anticipated under 35 U.S.C. § 102(a) &
`
`(e), and/or for being obvious over the prior art under 35 U.S.C. § 103.
`
`Specifically:
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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` (i) Claims 1, 2, 5, 6, 8, 14, 17, 19, 20, 23, 27-30, 33, 34, 36, 47, 51 and
`60 are anticipated under § 102(b) by (“Aventail”) (Ex. 1007);
`
` (ii) Claims 1, 2, 5, 6, 8, 14, 17, 19, 20, 23, 27-30, 33, 34, 36, 47, 51 and
`60 are obvious under § 103 based on Aventail (Ex. 1007);
`
`(iii) Claim 1, 2, 5, 6, 8, 14, 17, 19, 20, 23, 27-30, 33, 34, 36, 47, 51 and 60
`are anticipated under § 102(b) by U.S. Patent No. 6,557,037 to
`Provino (“Provino”) (Ex. 1008).
`
`(iv) Claims 29 and 30 are obvious under § 103 based on Provino (Ex.
`1008) in view of Beser (Ex. 1009);
`
`Petitioner’s proposed construction of the contested claims, the evidence relied
`
`upon, and the precise reasons why the claims are unpatentable are provided in
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`§ IV, below. The evidence relied upon in support of this petition is listed in
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`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 similar to the grounds
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`advanced by the petitioners in IPR2013-00393, IPR2013-00394, and IPR2013-
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`00377. Patent Owner already has filed a preliminary response in each of those
`
`proceedings that addresses the claim constructions, prior art references, and
`
`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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`If trial is instituted, Petitioner would object to any attempt by Patent Owner
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`(as it has requested in prior proceedings) to put these proceedings on an extended
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`18-month schedule. Patent Owner has been filing serial lawsuits involving these
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`patents, and other patents in the same family, against numerous defendants, and it
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`presently is maintaining multiple suits. Patent Owner clearly has the capacity to
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`handle these petitions on a standard schedule.
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`III. Relevant Information Concerning the Contested Patent
`A. Effective Filing Date and Prosecution History of the ’504 patent
`The ’504 patent issued from U.S. Application No. 10/714,849, filed
`
`November 18, 2003. The ’849 application is a continuation of application
`
`09/558,210, filed on April 26, 2000, which is a continuation-in-part of application
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`09/504,783, filed on February 15, 2000, which is a continuation-in-part of U.S.
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`Application No. 09/429,643, filed on October 29, 1999. The ’210, ’783 and ’643
`
`applications each claim priority to Provisional Application Nos. 60/106,261, filed
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`October 30, 1998 and 60/137,704, filed June 7, 1998.
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`Claims 1, 36 and 60 of the ’504 patent are independent claims. Claims 2-35
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`depend directly or indirectly from claim 1, and claims 37-59 depend directly or
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`indirectly from claim 36. Claims 2-35 and 37-59 cannot enjoy an effective filing
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`date earlier than that of claims 1 and 36, respectively, from which they depend
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`(i.e., no earlier than February of 2000).
`
`Claims 1, 36 and 60 of the ’504 patent rely on information not found in the
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`disclosure of any application filed prior to the ’783 application on February 15,
`
`2000. For example, claim 1 of the ’504 patent requires “[a] system for providing a
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`domain name service for establishing a secure communication link” that is
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`configured to “store a plurality of domain names and corresponding network
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`addresses, to receive a query for a network address, and to comprise an indication
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`that the domain name service system supports establishing a secure
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`communications link.” Claim 36 requires the steps of “connecting the domain
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`name service system to a communication network” and “supporting an indication
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`that the domain name service system supports establishing a secure communication
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`link.” Claim 60 likewise recites “[a] method of providing a domain name service
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`for establishing a secure communication link” and “connecting a domain name
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`service system to a communication network.” No application filed prior to the
`
`’783 application even mentions the phrase “domain name service,” much less
`
`provides a written description of systems or processes corresponding to the ’504
`
`patent claims. The effective filing date of claims 1, 2, 5, 6, 8, 14, 17, 19, 20, 23,
`
`27-30, 33, 34, 36, 47, 51 and 60 of the ’504 patent thus is not earlier than
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`February 15, 2000.
`
`Person of Ordinary Skill in the Art
`
`B.
`A person of ordinary skill in the art in the field of the ’504 patent would
`
`have been someone with a good working knowledge of networking protocols,
`
`including those employing security techniques, as well as computer systems that
`
`support these protocols and techniques. The person also would be very familiar
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`with Internet standards related to communications and security, and with a variety
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`of client-server systems and technologies. The person would have gained this
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`knowledge either through education and training, several years of practical
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`working experience, or through a combination of these. Ex. 1003 at ¶ 62.
`
`C. Construction of Terms Used in the Claims
`In this proceeding, claims must be given their broadest reasonable
`
`construction in light of the specification. 37 CFR 42.100(b). In determining the
`
`broadest reasonable construction of the claims, the Board should consider subject
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`matter that Patent Owner contends infringes the claims, and constructions Patent
`
`Owner has advanced in litigation. Also, if Patent Owner contends terms in the
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`claims should be read to have a special meaning, those contentions should be
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`disregarded unless Patent Owner also presents amendments to the claims
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`compliant with 35 U.S.C. § 112 that conform the claim language to such
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`contentions. See 77 Fed .Reg. 48764 at II.B.6 (August 14, 2012); cf., In re
`
`Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012). When an inventor acts as a
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`lexicographer, the definition must be set forth with reasonable clarity,
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`deliberateness, and precision. RenishawPLC v. Marposs Societa per Azioni, 158
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`F.3d 1243, 1249 (Fed. Cir. 1998); Garmin Int’l Inc. v. Cuozzo Speed Technologies,
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`Inc., IPR2012-00001, Paper 15 (PTAB, Jan. 9, 2013).
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`The specification has not expressly defined any of the claim terms.
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`Consequently, the claim language and context of words in the claim should be used
`
`to determine the broadest reasonable construction of them. “[I]t is the Patent
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`Owner’s burden to precisely define the invention in the claims.” AirCraft Medical
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`LTD. v. Verathon Inc., Reexam. Control No. 95/000,161, Appeal 2012-007851, p.
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`16 (PTAB Dec. 11, 2012) (citing In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
`
`1997)). Of course, the specification must also be consulted to determine the
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`broadest reasonable construction of the claims.
`
`Domain Name
`1.
`The ’504 patent does not define the term “domain name.” In litigation,
`
`Patent Owner has asserted that a “domain name” means “a name corresponding to
`
`an IP address.” Ex. 1046 at 14-15. In response to the Apple and New Bay
`
`petitions, Patent Owner stated that a “domain name” is “a name corresponding to a
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`network address.” Ex. 1079 (Preliminary Response) at 27. Nothing in the ’504
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`specification indicates that the claimed DNS servers return anything but IP
`
`addresses, so the Board should reject Patent Owner’s proposed construction. In
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`these proceedings, the broadest reasonable construction of “domain name” should
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`therefore encompass a “name corresponding to an IP address.”
`
`Domain Name Service System
`2.
`The ’504 patent does not define the term “domain name service system.”
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`Patent Owner has asserted a “domain name service” is “a lookup service that
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`returns an IP address for a requested domain name.” Ex. 1046 at 13-14; Ex. 1079
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`(Preliminary Response) at 31. A person of ordinary skill in the art would have
`
`understood that a domain name service is a service that performs domain name
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`resolution according to Internet standards, namely, RFC 1034 (Ex. 1016) and RFC
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`1035 (Ex. 1017). Ex. 1003 at ¶¶ 79-85, 95, 101-108. Under these standards, an IP
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`address will not always be returned – an error may also be returned. Ex. 1003 at
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`¶¶ 109-118. Thus, Petitioner agrees with Apple that the broadest reasonable
`
`construction of “domain name service” includes “a lookup service that will return
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`an IP address or an error code in response to a domain name resolution request.”
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`The ’504 patent also does not define or attach any special meaning to the
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`term “system.” In litigation, Patent Owner asserted no construction of “domain
`
`name service system” was necessary, and alternatively proposed it is “a computer
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`system that includes a domain name service (DNS).” Ex. 1046 at 19-20. One of
`
`ordinary skill in the art would understand the broadest reasonable construction of
`
`“system” could include one or more discrete computers or devices that individually
`
`or together perform specified functions, and which can also perform other
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`functions. Ex. 1003 at ¶¶ 188-189. Thus, the broadest reasonable construction of
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`“domain name service system” encompasses “a lookup service, comprising one or
`
`more applications or devices, that will return to a requester an IP address or an
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`error code in response to a domain name resolution request.” Ex. 1003 at ¶ 189.
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`This construction is consistent with the Examiner’s findings in the ’788
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`reexamination of the broadest reasonable construction (i.e., that a “DNS system is
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`reasonably interpreted as comprising a single device or multiple devices.”) Ex.
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`1071 at 16-18.
`
`Indication
`3.
`The ’504 patent does not define the term “indication.” In fact, there is no
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`discussion of an “indication” anywhere in the portion of the ’504 disclosure
`
`discussing DNS systems. In litigation, Patent Owner asserted no construction of
`
`this term was necessary, and the Court agreed. Ex. 1046 at 24-25. In the ’788
`
`proceeding, the Examiner found the term broadly encompassed:
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`... the ability of the user to communicate using a secure link after
`boot-up.” If the user attempts to establish a secure communication
`link using a DNS system after booting and is able to do so, then the
`user has been provided a broadly recited and discernible “indication”
`that the DNS in some manner supports establishing a communication
`link.
`
`Ex. 1071 at 22 (emphasis original). Petitioner agrees with Apple that the broadest
`
`reasonable construction of “indication” thus, could encompass anything that
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`indicates the domain name service system supports secure communications,
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`including a visible or audio signal, or the establishment of a secure communication
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`link itself. Ex. 1003 at ¶¶ 190-192.
`
`Secure Communication Link
`
`4.
`The ’504 patent explains a “secure communication link” is “a virtual private
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`communication link over the computer network.” Ex. 1001 at 6:61-63. A “secure
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`communication link” therefore must encompass a virtual private network. Ex.
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`1003 at ¶¶ 193-195. Petitioner agrees with Apple that the broadest reasonable
`
`construction of “secure communication link” encompasses “a communication link
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`in which computers privately and directly communicate with each other on
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`insecure paths between the computers where the communication is both secure and
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`anonymous, and where the data transferred may or may not be encrypted.” See Ex.
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`1003 at ¶¶ 193-200.
`
`Patent Owner proposes a construction of “secure communication link” that
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`differs primarily in one respects; namely, that it requires encryption. Ex. 1079
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`(Preliminary Response) at 35-39. This position is inconsistent with the broadest
`
`reasonable construction of “secure communication link.”
`
`In the 2010 litigation involving the’504 patent and a related patent (U.S.
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`Patent No. 6,502,135) (the ’135 patent) which has an identical disclosure, Patent
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`Owner made specific representations as to what a VPN constitutes, which are
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`relevant to construction of “secure communication link” in the ’504 patent claims.
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`Initially, neither the ’504 nor the ’135 patent defines the term “VPN.” Ex.
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`1003 at ¶ 197. Also, before 2000, the term “VPN” did not have a single accepted
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`meaning. For example, two authors observed in a 1998 paper that “[t]he wonderful
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`thing about virtual private networks is that its myriad definitions give every
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`company a fair chance to claim that its existing product is actually a VPN.” Ex.
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`1077 (Ferguson part 1) at 2. Despite this, these authors did recognize that VPNs
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`create a private network using encryption and/or tunneling techniques. Ex. 1003 at
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`2 (“But no matter what definition you choose, the networking buzz-phrase doesn't
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`make sense. The idea is to create a private network via tunneling and/or
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`encryption over the public Internet.”). This reflects the commonly held view
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`before 2000 that a VPN could be established by using “obfuscation” or hiding
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`techniques, by encryption, or both, and that by doing so, one could ensure the
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`security and anonymity of network traffic over the public network. See Ex. 1003
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`at ¶¶ 193-200.
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`The ’504 patent similarly explains that one can provide data security using
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`“IP hopping” schemes, rather than solely by using encryption. As it states, “Data
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`security is usually tackled using some form of data encryption.” Ex. 1001 at 1:55-
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`56 (emphasis added). Indeed, in one section of the ’504 patent, it illustrates use of
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`a quasi-random IP hopping scheme to implement a VPN. See, e.g., Ex. 1001 at
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`24:56-60 (“In a second mode referred to as “promiscuous per VPN” mode, a small
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`set of fixed hardware addresses are used, with a fixed source/destination hardware
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`address used for all nodes communicating over a virtual private network.”
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`(emphasis added)). Nowhere in this section is there any mention of using
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`encryption to establish the VPN. Indeed, claim 11 seems to rely on this particular
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`embodiment, stating “the virtual private network is based on a network address
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`hopping regime . . . .” Id. at 56:15-19 (emphasis added); see also Ex. 1001 at 2:15-
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`52 (explaining use of anonymity techniques); Ex. 1003 at ¶¶ 193-200. Also, while
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`the ’504 patent shows use of “TARP” routers that do employ encryption (Ex. 1001
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`at 3:14-44), it also explains these TARP routers are simply one way to implement
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`VPNs. See, e.g., Ex. 1001 at 38:52-56 (“The VPN is preferably implemented
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`using the IP address “hopping” features of the basic invention described above…”
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`(emphasis added)). The ’504 disclosure also does not expressly describe use of
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`encryption to establish VPNs. See, e.g., Ex. 1001 at 39:1-41:60.
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`To support its contention that a VPN requires encryption, Patent Owner
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`points to the term “FreeS/WAN” in one passage of the ’504 patent. Ex. 1001 at
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`39:40-42. That passage, however, does not define what a VPN is, but simply
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`explains that RFC 2535 (the “FreeS/WAN” protocol) can be used to implement
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`one type of a VPN. See id. Notably, Patent Owner does not cite to any passage of
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`RFC 2535 (Ex. 1090) – the publication actually cited in the ’504 patent – to
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`Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`support its assertions. This is because RFC 2535 does not even mention the term
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`“encryption” or “VPN,” much less state that a VPN must use encryption.
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`Patent Owner also points to the construction adopted by certain District
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`Courts that a VPN is “a network of computers which privately and directly
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`communicate with each other by encrypting traffic on insecure paths between the
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`computers where the communication is both secure and anonymous.” Ex. 1043 at
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`8. This construction, however, is not the broadest reasonable construction of the
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`term VPN or Secure Communication Link, but reflects the ordinary meaning of the
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`term used in district court litigation. That construction is not controlling in this
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`proceeding.
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`Consequently, the broadest reasonable construction of “secure
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`communication link” does not require network traffic to be encrypted, but can
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`establish a “private network” using either encryption or routing techniques (e.g.,
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`“tunneling” or “obsfucation”), or both.
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`The broadest reasonable construction of “secure communication link” thus
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`encompasses “a communication link in which computers privately and directly
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`communicate with each other on insecure paths between the computers where the
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`communication is both secure and anonymous, and where the data transferred may
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`or may not be encrypted.” See Ex. 1003 at ¶¶ 193-200. Petitioner observes that
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`the claims (disregarding Patent Owner’s disclaimer) necessarily encompass what
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`the Office found to be described in Aventail (Ex. 1007), and that Aventail actually
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`does describe VPNs in which computers communicate directlywith each other
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`(using encryption) pursuant to the Court’s construction. See § V.A.1, below.
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`Transparently
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`5.
`The ’504 patent does not define the term “transparently,” which appears in
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`the claims 27 and 51. Patent Owner and New Bay assert the term means that “the
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`user need not be involved in creating the [secure communication link]/[secure
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`link].” Ex. 1079 (Preliminary Response) at 41. Yet, in related litigation, the
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`District Court found that “‘transparently,’” in the context of a related patent, “is
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`merely descriptive of what is found in steps (2) and (3) of claim 1.” Ex. 1045 at
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`11. The Court’s finding is relevant to determining the broadest reasonable
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`description here – it confirms that the term “transparently” does not add any
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`substantive meaning to the claims, and thus no construction of that term is
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`necessary.
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`Top-Level Domain Name
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`6.
`Petitioner agrees with Patent Ow