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`Paper No. 1
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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. 6,502,135
`Issued: Dec. 31, 2002
`Filed: Feb. 15, 2000
`Inventors: Edmund C. Munger, et al
`Title: Agile Network Protocol For Secure Communications With Assured System
`Availability
`____________________
`
`Inter Partes Review No. IPR2014-00171
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`VIRNETX EXHIBIT 2028
`RPX v. VirnetX
`Trial IPR2014-00177
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`Page 1 of 73
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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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 ’135 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
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`D.
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`II.
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`Identification of Claims Being Challenged (§ 42.104(b)) ........................... 5
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`III. Relevant Information Concerning the Contested Patent .......................... 6
`A.
`Effective Filing Date and Prosecution History of the ’135 patent ........ 6
`B.
`Person of Ordinary Skill in the Art ....................................................... 8
`C.
`Construction of Terms Used in the Claims ........................................... 8
`1. Virtual Private Network (VPN) (Claims 1, 10, 13, 18) .................. 9
`2. Virtual Private Link (Claim 13) ....................................................13
`3. Domain Name (Claims 1, 10, 18) .................................................14
`4. Domain Name Service (Claims 1, 10, 13, 18) ..............................14
`5. DNS Request (Claims 1, 3-5, and 18) ...........................................15
`6. DNS Server (Claims 18, 2 and 8) .................................................15
`7. DNS Proxy Server (Claims 10, 8) .................................................16
`8. Secure Web Site/Target Web Site (Claims 1, 8, 10, 18) ..............16
`9. Web Site (Claims 1, 10, 18) ..........................................................16
`10. Secure Web Computer (Claim 10) ................................................17
`11. Target Computer (Claims 1, 10, 18) .............................................17
`12. IP Address Hopping Scheme (Claim 6) ........................................17
`i
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`13. Determining (Claims 1, 3-5, and 18) ............................................18
`14. Client Computer (Claims 1-7, 9-13, 17, and 18) ..........................18
`15. Transparently (Claims 1, 10, and 18) ............................................19
`16. Automatically Initiating the VPN (Claims 1, 4, 5, and 18) ..........20
`17. Passes Through the DNS Request (Claim 8) ................................20
`18. Gatekeeper Computer (Claims 7 and 10-12) ................................20
`19. Allocates VPN Resources (Claims 7, 10, and 13) ........................20
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`IV. Precise Reasons for Relief Requested ........................................................ 21
`A.
`Claims 1-10, 12-15 and 18 Are Anticipated By Aventail (Ex.
`1007) .................................................................................................... 21
`1. Aventail Anticipates Claim 1 ........................................................22
`2. Aventail Anticipates Claim 10 ......................................................24
`3. Aventail Anticipates Claim 13 ......................................................27
`4. Aventail Anticipates Claim 18 ......................................................30
`5. Aventail Anticipates Claim 2 ........................................................34
`6. Aventail Anticipates Claim 3 ........................................................35
`7. Aventail Anticipates Claim 4 and 12 ............................................36
`8. Aventail Anticipates Claim 5 ........................................................37
`9. Aventail Anticipates Claim 6 ........................................................39
`10. Aventail Anticipates Claim 7 ........................................................39
`11. Aventail Anticipates Claim 8 ........................................................40
`12. Aventail Anticipates Claim 9 ........................................................40
`13. Aventail Anticipates Claim 14 and 15 ..........................................41
`Aventail Connect In View of Aventail Extranet Center Renders
`Claims 1-10, 12-15 and 18 Obvious ................................................... 41
`Aventail In View of RFC 1035 Renders Claims 4, 5, and 18
`Obvious................................................................................................ 42
`D. Aventail In View of Reed I Renders Claims 6, 14 and 15
`Obvious................................................................................................ 44
`
`B.
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`C.
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`ii
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`E.
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`F.
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`Claims 1-4, 7, 8, 10, and 12 Are Anticipated by Kiuchi (Ex.
`1066) .................................................................................................... 47
`1. Kiuchi Anticipates Claim 1 ...........................................................47
`2. Kiuchi Anticipates Claim 2 ...........................................................51
`3. Kiuchi Anticipates Claim 3 ...........................................................51
`4. Kiuchi Anticipates Claim 4 ...........................................................52
`5. Kiuchi Anticipates Claim 7 ...........................................................52
`6. Kiuchi Anticipates Claim 8 ...........................................................54
`7. Kiuchi Anticipates Claim 10 .........................................................55
`8. Kiuchi Anticipates Claim 12 .........................................................57
`Kiuchi In View of RFC 1034 Renders Claims 5, 8, and 18
`Obvious................................................................................................ 57
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`V. Conclusion .................................................................................................... 60
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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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`iii
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`Page 4 of 73
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`I.
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`Compliance with Requirements for a Petition for Inter Partes Review
`A. Certification the ’135 Patent May Be Contested by Petitioner
`Petitioner certifies that U.S. Patent No. 6,502,135 (the ’135 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 ’135 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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`’135 patent. As explained in § C.1, below, the ’135 patent has not been the subject
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`of a prior inter partes review by Petitioner or a privy of Petitioner. 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 ’135 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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`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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`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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`RPX observes that the ’135 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. 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 ’135 patent and was solely responsible for selecting the claims of
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`the ’135 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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`this petition.
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`2. Other Proceedings (§ 42.8(b)(2))
`The ’135 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. 6:11-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; (v) Civ. Act. No. 6:10-cv-00094 (E.D. Tex); and (vi) Civ. Act. No.
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`6:07-cv-00080 (E.D. Tex).
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`The ’135 patent is also the subject of merged inter partes reexamination nos.
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`95/001,679 and 95/001,682. In the merged proceedings, the Office recently issued
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`a Non-Final Action rejecting all 18 claims of the ’135 patent, including rejections
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`based on, inter alia, Ex. 1007 (Aventail), Ex. 1009 (Beser), and Ex. 1066 (Kiuchi).
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`The ’135 patent also was subject to reexamination no. 95/001,269, which is over.
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`The ’135 patent also is the subject of IPR petitions No. IPR2013-00348 and
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`IPR2013-00349 filed by Apple Inc., and IPR2013-00375 filed by New Bay Capital
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`LLC. Finally, the ’135 patent is the subject of IPR petition No. IPR2014-00172
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`being filed concurrently with the present Petition. Petitioner observes that the
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`grounds presented in this petition, and in IPR petition IPR2014-00172 closely
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`parallel the grounds presented in the petitions filed by Apple and New Bay Capital.
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`4
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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
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`Service Information (§ 42.8(b)(4))
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`4.
`Service on Petitioner may be made by mail to:
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`Howison & Arnott, L.L.P.
`P.O. Box 741715
`Dallas, Texas 75374-1715.
`
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`Service on Petitioner may be made by hand delivery to:
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`Howison & Arnott, L.L.P.
`Lincoln 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))
`D.
`Proof of service of this petition is provided in Attachment A.
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`II.
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`Identification of Claims Being Challenged (§ 42.104(b))
`Claims 1-10, 12-15, and 18 of the ’135 patent are unpatentable as being
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`anticipated under 35 U.S.C. § 102(a), (b), & (e), and/or for being obvious over the
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`prior art under 35 U.S.C. § 103. Specifically:
`
`(i)
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`Claims 1-10, 12-15, and 18 are anticipated under § 102(b) by Aventail
`Connect v 3.01/2.5 Administrator’s Guide (“Aventail”) (Ex. 1007);
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`(ii) Claims 1-10, 12-15, and 18 are obvious under § 103 based on
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`Aventail (Ex. 1007);
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`(iii) Claims 4, 5 and 18 are obvious under § 103 based on Aventail (Ex.
`1007) in view of RFC 1035 (Ex. 1017);
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`(iv) Claims 6, 14 and 15 are obvious under § 103 based on Aventail (Ex.
`1007) in view of Reed (Ex. 1014);
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`(v) Claims 1-4, 7, 8, 10, and 12 are anticipated under § 102(b) by
`Takahiro Kiuchi and Shigekoto Kaihara, “C-HTTP - The
`Development of a Secure, Closed HTTP-based Network on the
`Internet,” the Proceedings of SNDSS 1996 (“Kiuchi”) (Ex. 1066);
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`(vi) Claims 5, 8, and 18 are obvious under § 103 based on Kiuchi (Ex.
`1066) in view of RFC 1034 (Ex. 1016).
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`Petitioner’s proposed construction of the contested claims, the evidence relied
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`upon, and the precise reasons why the claims are unpatentable are provided in
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`§ IV, below. The evidence relied upon in 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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`III. Relevant Information Concerning the Contested Patent
`A. Effective Filing Date and Prosecution History of the ’135 patent
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`6
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`The ’135 patent issued from U.S. Application No. 09/504,783, filed
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`February 15, 2000. The ’783 application is a continuation-in-part of U.S.
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`Application No. 09/429,653, filed on October 29, 1999. The ’783 and ’653
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`applications each claim priority 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, 10, 13 and 18 are the independent claims. Claims 1, 10 and 18
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`rely on information first presented in the ’783 CIP application. For example, claim
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`1 specifies “generating from the client computer a Domain Name Service (DNS)
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`request …” and subsequent steps involving that DNS request, while claim 10
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`specifies “[a] system … comprising … a DNS proxy server…” Applications filed
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`prior to the ’783 application do not contain the term “domain name service” much
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`less describe systems using DNS requests or DNS proxy servers to establish VPNs.
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`Ex. 1003 at ¶¶ 54-61. Claim 13 likewise relies on information first presented in the
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`’783 application. For example, it specifies “…receiving from one of the plurality
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`of client computers a request to establish a connection…” and “…authenticating,
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`with reference to one of the plurality of authentication tables, that the request
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`received in step (1) is from an authorized client.” Neither step is described in any
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`application filed before the ’783 application. Ex. 1003 at ¶¶ 54-61. Accordingly,
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`the effective filing date of claims 1-10, 12-15 and 18 is no earlier than February
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`15, 2000. Ex. 1003 at ¶ 61.
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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 ’135 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 at ¶ 68.
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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., Reexam. Control No.
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`95/000,161, Appeal 2012-007851, p. 16 (PTAB Dec. 11, 2012) (citing In re
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`Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)). Of course, the specification must
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`also be consulted to determine the broadest reasonable construction of the claims.
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`Virtual Private Network (VPN) (Claims 1, 10, 13, 18)
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`1.
`Petitioner agrees with New Bay Capital that the broadest reasonable
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`construction of “virtual private network” or “VPN” is “a private network that is
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`configured within a public network.” This construction is consistent with the
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`construction proposed by petitioner Apple (i.e., a VPN is “a network of computers
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`which privately communicate – directly or otherwise – with each other on insecure
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`paths between the computers where the communication is both secure and
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`anonymous, where the data transferred may or may not be encrypted.”). Petitioner
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`would also support the Apple construction, if the Board determines that is the
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`broadest reasonable construction of VPN.
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`Patent Owner proposes a construction of “VPN” that differs in two respects;
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`namely, that it requires (i) encryption, and (ii) computers in the VPN to directly
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`communicate with each other. Ex. 1069 at 22. Both positions are inconsistent
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`with the broadest reasonable construction of “VPN.”
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`Initially, the ’135 patent does not define the term “VPN.” Ex. 1003 at ¶ 194.
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`Before 2000, the term “VPN” did not have a single accepted meaning. For
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`example, two authors observed in a 1998 paper that “[t]he wonderful thing about
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`virtual private networks is that its myriad definitions give every company a fair
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`chance to claim that its existing product is actually a VPN.” Ex. 1067 at 2.
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`Despite this, these authors did recognize that VPNs create a private network using
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`encryption and/or tunneling techniques. Ex. 1067 at 2 (“But no matter what
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`definition you choose, the networking buzz-phrase doesn't make sense. The idea is
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`to create a private network via tunneling and/or encryption over the public
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`Internet.”). This reflects the commonly held view before 2000 that a VPN could
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`be established by using “obfuscation” or hiding techniques, by encryption, or both,
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`and that by doing so, one could ensure the security and anonymity of network
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`traffic over the public network. See Ex. 1003 at ¶¶ 193-198.
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`The ’135 patent also explains that one can provide data security using “IP
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`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 1:38-
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`39 (emphasis added). The ’135 patent also illustrates use of a quasi-random IP
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`hopping scheme to implement a VPN. See, e.g., id. at 23:10-14 (“In a second
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`mode referred to as “promiscuous per VPN” mode, a small set of fixed hardware
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`addresses are used, with a fixed source/destination hardware address used for all
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`nodes communicating over a virtual private network.” (Emphasis added)).
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`Nowhere in this section of the ’135 patent is there any mention of using encryption
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`to establish the VPN. Moreover, claim 6 relies on this particular embodiment,
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`specifying that step 3 of claim 1 “comprises the step of establishing the VPN by
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`creating an IP address hopping scheme between the client computer and the target
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`computer.” Id. at 47:53-55 (emphasis added); see also id. at 2:25-36 (explaining
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`use of anonymity techniques); Ex. 1003 at ¶¶ 193-198. Also, the ’135 patent
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`explains that “TARP” routers (which do encrypt traffic) are simply one way to
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`implement VPNs. E.g., Ex. 1001 at 38:2-5 (“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)); id. at 2:66-3:29. The ’135 patent also does not list any
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`encryption steps in describing its VPN processes. See id. at 37:17-40:13.
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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 ’135 patent. Ex. 1001 at
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`37:50-57. 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. 1068) – the publication actually cited in the ’135 patent – to
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`support its assertions. This is because RFC 2535 does not even mention the terms
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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, but
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`reflects the ordinary meaning of the term as used in district court litigation; it is not
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`controlling in this proceeding. The broadest reasonable construction of “VPN”
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`thus does not require encryption, but can establish a “private network” using either
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`encryption or routing techniques (e.g., “tunneling” or “obfuscation”), or both.
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`Patent Owner next contends that a “VPN” requires computers in a VPN to
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`“directly communicate with each other.” E.g., Ex. 1046 at 1-3 (emphasis added).
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`In the August 2010 litigation, the Court found that Patent Owner had disclaimed
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`VPNs that do not involve “direct communications” between the involved
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`computers. Id. at 6; see Ex. 1046 at 6-9; Ex. 1048 at 5-7. The Court relied on
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`Patent Owner’s statements to the Office during the ’269 reexamination proceeding
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`involving the ’135 patent to make this determination; specifically, that the ’135
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`claims were not anticipated by the Aventail systems because “computers connected
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`according to Aventail do not communicate directly with each other.”3 (Emphasis
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`added). The Court also observed that “…routers, firewalls, and similar servers that
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`participate in typical network communication do not impede ‘direct’
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`3 As explained below in § IV.A.1, that belief rested on a mischaracterization
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`of Aventail by Patent Owner during the reexamination. In reality, Aventail clearly
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`shows computers directly addressing other computers within the VPNs, which
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`means the computers will directly communicate with each other per the claims.
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`communication between a client and target computer.” Ex. 1043 at 8 (FN2). As
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`petitioner Apple has explained, the Court’s finding that Patent Owner disclaimed a
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`portion of the literal scope of the ’135 patent claims (i.e., that covering VPNs in
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`which computers do not “directly” communicate) means that the ’135 claims in
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`their broadest reasonable construction must still encompass this subject matter.
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`IPR2013-00349, Petition at 9-11. Patent Owner’s prosecution disclaimer is
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`effective in a district court proceeding but not here. E.g., M.P.E.P. § 2111; id. at §
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`2111.01(I) (“Although claims of issued patents are interpreted in light of the
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`specification, prosecution history, prior art and other claims, this is not the mode of
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`claim interpretation to be applied during examination.”). The broadest reasonable
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`construction of “VPN” therefore encompasses “a network of computers which
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`privately communicate – directly or otherwise – with each other on insecure paths
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`between the computers where the communication is both secure and anonymous,
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`where the data transferred may or may not be encrypted.”
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`Virtual Private Link (Claim 13)
`2.
`The ’135 patent does not define the term “virtual private link.” The district
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`court found this term means the same thing as a VPN. Ex. 1043 at 8-9. In the
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`pending IPRs, Patent Owner did not dispute this finding. Ex. 1069 at 26.
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`Consequently, Petitioner submits the same construction should be used for “virtual
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`private link” as is used for “virtual private network.”
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`Page 17 of 73
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`Domain Name (Claims 1, 10, 18)
`3.
`The ’135 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 at ¶¶ 204-205. Petitioner therefore
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`agrees with Apple’s proposed construction. Also, Patent Owner has asserted in
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`court that a “domain name” means “a name corresponding to an IP address.” Ex.
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`1046 at 14-15. The district court adopted Patent Owner’s construction, and
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`therefore, Patent Owner now is estopped from arguing for a different construction
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`(as it attempts to do in Ex. 1069 at 27-29). See Data General Corp. v. Johnson, 78
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`F.3d 1556, 1565 (Fed. Cir. 1996). Furthermore, claims 1, 10, and 18 expressly
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`provide that the domain name is used to access an IP address.
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`Domain Name Service (Claims 1, 10, 13, 18)
`4.
`The ’135 patent does not define the phrase “domain name service.” Patent
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`Owner has asserted a “domain name service” is “a lookup service that returns an IP
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`address for a requested domain name.” Ex. 1046 at 13-14. A person of ordinary
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`skill in the art also would recognize that a domain name service performs domain
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`name resolution according to Internet standards, namely, RFC 1034 (Ex. 1016) and
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`RFC 1035 (Ex. 1017). Ex. 1003 at ¶¶ 116-117. Under these standards, an IP
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`address will not always be returned – an error also may be returned. Ex. 1003 at
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`¶¶ 116-125. Thus, the broadest reasonable construction of “domain name service”
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`Page 18 of 73
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`includes “a lookup service that will return an IP address or an error code in
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`response to a domain name resolution request.”
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`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. 1069 at 29-31. That
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`contention is inconsistent with the claim language. Claim 1 defines “DNS” as an
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`abbreviation for “domain name service.” Several other claims use “DNS” as an
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`adjective to describe other devices, e.g., a “DNS server” (claim 2) or “DNS proxy
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`server” (claim 8). The claims thus define DNS as a distinct term from DNS
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`request, and the Board should reject Patent Owner’s illogical proposed
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`construction which seeks to avoid construing DNS (see Ex. 1069 at 29).
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`DNS Request (Claims 1, 3-5, and 18)
`5.
`The ’135 patent does not explicitly define the term “DNS request.”
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`Consistent with the definition of domain name service, see § 4, above, a “DNS
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`request” is a request to resolve a domain name into an IP or a network address.
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`DNS Server (Claims 18, 2 and 8)
`6.
`The ’135 patent does not define the term “DNS Server.” However, the way
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`the term is used in the ’135 patent indicates a “DNS Server” is a “server” that
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`returns an IP address in response to a request containing a domain name. See Ex.
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`1003 at ¶¶ 210-216. As noted in § 4, a domain name service also may return an
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`Page 19 of 73
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`Petition for Inter Partes Review of U.S. Patent No. 6,502,135
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`error. Thus, Petitioner agrees with Apple that the broadest reasonable construction
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`of “DNS server” includes “a computer or computer-based process 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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`DNS Proxy Server (Claims 10, 8)
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`7.
`Petitioner agrees with Patent Owner that the broadest reasonable
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`construction of a “DNS proxy server” is “a computer or program that responds to a
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`domain name inquiry in place of a DNS.” Ex. 1046 at 16-17; Ex. 1069 at 32-33.
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`Petitioner notes that Patent Owner has admitted that the DNS proxy server can be
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`distributed across different computers or processes. Ex. 1069 at 32-33.
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`Secure Web Site/Target Web Site (Claims 1, 8, 10, 18)
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`8.
`Petitioner agrees with Patent Owner and Apple that the broadest reasonable
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`construction a “secure web site” is “a computer associated with a domain name and
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`that can communicate in a virtual private network.” Ex. 1046 at 21-22; Ex. 1069 at
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`33-36. Petitioner also agrees with Patent Owner and Apple that broadest
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`reasonable construction a “secure target web site” is “a target computer associated
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`with a domain name and that can communicate in a virtual private network.” Ex.
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`1046 at 21-22; Ex. 1069 at 33-36.
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`9. Web Site (Claims 1, 10, 18)
`The ’135 patent does not define the term “web site.” Patent Owner asserted
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`a “web site” means “a computer associated with a domain name and