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`Paper No. 4
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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. IPR2014-00177
`__________________________________________________________________
`
`CORRECTED PETITION FOR INTER PARTES REVIEW
`
`RPX Corporation Exhibit 1088
`RPX Corporation v. VirnetX, Inc. et al.
`Case IPR2014-00177
`
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`Corrected Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`TABLE OF CONTENTS
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`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
`D.
`Proof of Service (§§ 42.6(e) and 42.105(a)) ........................................ 5
`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
`IV. PRECISE REASONS FOR RELIEF REQUESTED ................................... 18
`A.
`Claims 1-3, 5, 15-18, 20-27, 31-32, 35-36, 47, 51, and 60 Are
`Anticipated by Beser .......................................................................... 18
`Beser Considered with RFC 2401 Renders Obvious Claims 1-3,
`5, 15-18, 20-27, 31-32, 35-36, 47, 51, and 60.................................... 42
`Claims 1-3, 5, 15-18, 20-27, 31-32, 35-36, 47, 51, and 60 Are
`Anticipated by Kiuchi ........................................................................ 47
`D. Kiuchi In View of Broadhurst Renders Obvious Claims 20, 21,
`and 35 ................................................................................................. 67
`CONCLUSION............................................................................................. 68
`
`B.
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`C.
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`V.
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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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`Corrected 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
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`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.
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`B.
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`Fee for Inter Partes Review (§ 42.15(a))
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`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))
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`1.
`
`Real Party in Interest (§ 42.8(b)(1))
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`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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`Corrected Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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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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`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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`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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`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
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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 ’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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`2 An executed copy of the agreement is also being filed under seal. Ex. 1083.
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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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`this petition.
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`2.
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`Other Proceedings (§ 42.8(b)(2))
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`The ’504 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.
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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, including on prior art references relied upon in this Petition.
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`Similarly, on June 25, 2013, the Office issued a Right of Appeal Notice in the ’851
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`proceeding maintaining rejections of all 60 claims (with the exception of claim 11)
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`in the ’504 patent.
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`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
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`LLC. Finally, the ’504 patent is the subject of IPR petition No. IPR2014-00176
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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 IPR2014-00176, closely
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`parallel the grounds presented in the petitions filed by Apple and New Bay Capital.
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`3.
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`Designation of Lead and Backup Counsel
`
`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
`
`4.
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`Service Information (§ 42.8(b)(4))
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`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.
`
`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.
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`II.
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`Identification of Claims Being Challenged (§ 42.104(b))
`Claims 1-3, 5, 15-18, 20-27, 31-32, 35-36, 47, 51, and 60 of the ’504 patent
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`are unpatentable as being anticipated under 35 U.S.C. § 102(a) & (e), and/or for
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`being obvious over the prior art under 35 U.S.C. § 103. Specifically:
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`(i)
`
`(ii)
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`Claims 1-3, 5, 15-18, 20-27, 31-32, 35-36, 47, 51, and 60 are
`anticipated under § 102(e) by Beser (Ex. 1009); and
`
`Claims 1-3, 5, 15-18, 20-27, 31-32, 35-36, 47, 51, and 60 are obvious
`under § 103 based on Beser (Ex. 1009) in view of RFC 2401 (Ex.
`1010); and
`
`(iii) Claims 1-3, 5, 15-18, 20-27, 31-32, 35-36, 47, 51, and 60 are
`anticipated under § 102(b) by Kiuchi (Ex. 1075);
`
`(iv) Claims 20, 21, and 35 are obvious under § 103 based on Kiuchi (Ex.
`1075) in view of Broadhurst (Ex. 1076).
`
`Petitioner’s proposed construction of the contested claims, evidence relied upon,
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`and the precise reasons why the claims are unpatentable are provided in § IV. The
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`evidence relied upon in support of this petition is listed in Attachment B.
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`Petitioner requests expedited briefing during the preliminary proceedings.
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`The grounds of Petitioner’s challenge are substantially 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
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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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`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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`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.
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`Effective Filing Date and Prosecution History of the ’504 patent
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`The ’504 patent issued from U.S. Application No. 10/714,849, filed
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`November 18, 2003. The ’849 application is a continuation of application
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`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
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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, 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).
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`Corrected Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`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,
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`2000. For example, claim 1 of the ’504 patent requires “[a] system for providing a
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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
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`’783 application even mentions the phrase “domain name service,” much less
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`provides a written description of systems or processes corresponding to the ’504
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`patent claims. The effective filing date of claims 1-3, 5, 15-18, 20-27, 32-32, 35-
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`36, 47, 51, and 60 of the ’504 patent thus is not earlier than February 15, 2000.
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`B.
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`Person of Ordinary Skill in the Art
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`A person of ordinary skill in the art in the field of the ’504 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 ¶ 62.
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`C.
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`Construction of Terms Used in the Claims
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`In this proceeding, claims must be given their broadest reasonable
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`construction in light of the specification. 37 CFR 42.100(b). In determining the
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`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
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`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
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`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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`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
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`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.
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`1997)). Of course, the specification must also be consulted to determine the
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`broadest reasonable construction of the claims.
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`1.
`
`Domain Name (Claims 1-3, 5, 15-18, 20-27, 31-32, 35-36, 47,
`51, and 60)
`The ’504 patent does not define the term “domain name.” In litigation,
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`Patent Owner has asserted that a “domain name” means “a name corresponding to
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`an IP address.” Ex. 1046 at 14-15. In response to the Apple and New Bay
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`petitions, Patent Owner stated that a “domain name” is “a name corresponding to a
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`network address.” Ex. 1079 at 27. Nothing in the ’504 specification indicates that
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`the claimed DNS servers return anything but IP addresses, so the Board should
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`reject Patent Owner’s proposed construction. In these proceedings, the broadest
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`reasonable construction of “domain name” should therefore encompass a “name
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`corresponding to an IP address.”
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`2.
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`Domain Name Service System (Claims 1-3, 5, 15-18, 20-27,
`31-32, 35-36, 47, 51, and 60)
`
`The ’504 patent does not define the term “domain name service system.”
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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. 1075
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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(citing Exs. 1016-17; Ex. 1016
`
`at 4-5, 6-7, 11-13, 15-17, 20, 26-27; Ex. 1017 at 2-5; Ex. 1019 at 6-7, 13; Ex. 1025
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`at 50, 56-59; Ex. 1027 at 11). Under these standards, an IP address will not always
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`be returned – an error may also be returned. Ex. 1003 at ¶¶ 109-118 (citing Ex.
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`1015 at 18-19; Ex. 1016 at 15-16; Ex. 1017 at 19, 31). Thus, Petitioner agrees with
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`Apple that the broadest reasonable construction of “domain name service” includes
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`“a lookup service that will return an IP address or an error code in response to a
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`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
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`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
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`“system” could include one or more discrete computers or devices that individually
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`or together perform specified functions, and which can also perform other
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`functions. Ex. 1003 at ¶¶ 188-189 (citing Ex. 1046 at 19-20; Ex. 1071 at 19).
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`Thus, the broadest reasonable construction of “domain name service system”
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`encompasses “a lookup service, comprising one or more applications or devices,
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`that will return to a requester an IP address or an error code in response to a
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`domain name resolution request.” Ex. 1003 at ¶ 189 (citing Ex. 1046 at 19-20; Ex.
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`1071 at 19). This construction is consistent with the Examiner’s findings in the
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`’788 reexamination of the broadest reasonable construction (i.e., that a “DNS
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`system is reasonably interpreted as comprising a single device or multiple
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`devices.”). Ex. 1071 at 16-18.
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`3.
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`Indication (Claims 1-3, 5, 15-18, 20-27, 31-32, 35-36, 47, 51,
`and 60)
`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
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`this term was necessary, and the Court agreed. Ex. 1046 at 24-25. In the ’788
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`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”
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`that the DNS in some manner supports establishing a communication
`link.
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`Ex. 1071 at 22 (emphasis original). Petitioner agrees with Apple that the broadest
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`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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`link itself. Ex. 1003 at ¶¶ 190-192 (citing Ex. 1072 at 20).
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`4.
`
`Secure Communication Link (1-3, 5, 15-18, 20-27, 31-32, 35-
`36, 47, 51, and 60)
`
`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 (citing Ex. 1001 at 8:51-54; Ex. 1046 at 10-11). Petitioner
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`agrees with Apple that the broadest reasonable construction of “secure
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`communication link” encompasses “a communication link in which computers
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`privately and directly communicate with each other on insecure paths between the
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`computers where the communication is both secure and anonymous, and where the
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`data transferred may or may not be encrypted.” See Ex. 1003 at ¶¶ 193-200 (citing
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`Ex. 1001 at 2:42-52, 8:51-54, 39:50-41:47; Ex. 1024 at 16-17; Ex. 1046 at 3-8, 10-
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`11).
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`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
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`reasonable construction of “secure communication link.”
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`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 (citing Ex. 1046 at 3-8). Also, before 2000, the term “VPN” did not
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`have a single accepted meaning. For example, two authors observed in a 1998
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`paper that “[t]he wonderful thing about virtual private networks is that its myriad
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`definitions give every company a fair chance to claim that its existing product is
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`actually a VPN.” Ex. 1077 at 2. Despite this, these authors did recognize that
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`VPNs create a private network using encryption and/or tunneling techniques. Ex.
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`1077 at 2 (“But no matter what definition you choose, the networking buzz-phrase
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`doesn't 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 (citing Ex. 1001 at 2:42-52, 8:51-54, 39:50-41:47; Ex. 1024 at 16-
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`17; Ex. 1046 at 3-8, 10-11).
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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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`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 (citing Ex.
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`1001 at 2:42-52, 8:51-54, 39:50-41:47; Ex. 1024 at 16-17; Ex. 1046 at 3-8, 10-11).
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`Also, while the ’504 patent shows use of “TARP” routers that do employ
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`encryption (Ex. 1001 at 3:14-44), it also explains these TARP routers are simply
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`one way to implement VPNs. See, e.g., Ex. 1001 at 38:52-56 (“The VPN is
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`preferably implemented using the IP address “hopping” features of the basic
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`invention described above…” (emphasis added)). The ’504 disclosure also does
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`not expressly describe use of encryption to establish VPNs. See, e.g., Ex. 1001 at
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`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. 1078) – the publication actually cited in the ’504 patent – to
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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. 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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`Corrected Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`establish a “private network” using either encryption or routing techniques (e.g.,
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`“tunneling” or “obfuscation”), 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 (citing Ex. 1001 at 2:42-52,
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`8:51-54, 39:50-41:47; Ex. 1024 at 16-17; Ex. 1046 at 3-8, 10-11).
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`5.
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`Transparently (Claim 51)
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`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 at 41. Yet, in related litigation, the District Court found that
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`“‘transparently,’” in the context of a related patent, “is merely descriptive of what
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`is found in steps (2) and (3) of claim 1.” Ex. 1045 at 11. The Court’s finding is
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`relevant to determining the broadest reasonable description here – it confirms that
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`the term “transparently” does not add any substantive meaning to the claims, and
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`thus no construction of that term is necessary.
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`6.
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`Top-Level Domain Name (Claim 3)
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`Petitioner agrees with Patent Owner and Apple that “top-level domain
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`name” should be given its plain and ordinary meaning and requires no
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`construction. Ex. 1079 at 12-14.
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`Secure Name (Claims 3, 24, and 25)
`7.
`During prosecution of a related patent in the family of the ’504 patent, (i.e.,
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`U.S. Patent No. 7,188,180 patent), Ex. 1073 at 9, Patent Owner argued that a
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`“‘secure name’ can be a secure non-standard domain name, such as a secure non-
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`standard top-level domain name (e.g., .scom) or a telephone number.” The only
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`location in the ’504 disclosure where the term “secure name” appears is in the
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`claims (i.e., claims 25 and 49). This term was first introduced by a claim
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`amendment, and has no written description support in the ’504 disclosure. The
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`broadest reasonable construction of the term “secure name” should encompass
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`what Patent Owner contends is within its scope, and thus should encompass “a
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`secure non-standard domain name, including a non-standard top level domain (e.g.,
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`.scom) or a telephone number.”
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`IV.
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`Precise Reasons for Relief Requested
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`A.
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`Claims 1-3, 5, 15-18, 20-27, 31-32, 35-36, 47, 51, and 60 Are
`Anticipated by Beser
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`Beser has an effective filing date of August 27, 1999, and is prior art under
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`at least under §102(e). Ex. 1009 at 1.
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`Corrected Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`1.
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`Beser Anticipates Claim 1
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`Beser describes systems that establish an IP tunneling association between
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`two end devices with the aid of a first and second network device and a trusted-
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`third-party network device on a public network. Ex. 1003 at ¶¶ 224-231 (citing Ex.
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`1009 at 1:8-10, 2:46-67, 3:62-64, 4:5-7, 4:19-29, 4:43-54, 7:62-8:15, 9:26-34,
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`10:22-36, 11:9-25, 12:6-19, Figs. 1-4). Beser explains the trusted-third-party
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`network device can be a domain name server. Ex. 1003 at ¶¶ 231-233, 249-253,
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`267 (citing Ex. 1001 at 39:7-9; Ex. 1009 at 2:43-68, 3:62-66, 4:9-11, 4:19-29,
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`4:43-44, 8:47-9:5, 11:32-36, 11:45-58, 17:45-63, 21:48-22:22; Ex. 1015 at 15-16,
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`18-19; Ex. 1016 at 15-16; Ex. 1017 at 19, 31; Exs. 1016-17). To establish an IP
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`tunnel, an originating device sends a request containing a unique identifier to a
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`trusted-third-party network device. Ex. 1003 at ¶¶ 270-274 (citing Ex. 1009 at
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`11:9-24, 11:33-37, 11:45-62, 12:5-19, 21:48-55). The trusted-third-party network
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`device evaluates the request, and if it corresponds to a terminating device, it
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`negotiates private IP addresses for the first and second network devices to use
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`when transmitting data between the end devices across the public network. Ex.
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`1003 at ¶¶ 270-274 (citing Ex. 1009 at 11:9-24, 11:33-37, 11:45-62, 12:5-19,
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`21:48-55). Use of the private IP addresses to transmit data over the public network
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`creates a secure, anonymous tunnel that allows the end devices to directly
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`communicate. Ex. 1003 at ¶¶ 224-225, 228, 234-238, 255-256 (citing Exs. 1009,
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`19
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`Corrected Petition for Inter Partes Review of U.S. Patent No. 7,418,504
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`1011; Ex. 1009 at Abstract, 1:8-10, 2:6-14, 3:4-9, 3:62-64, 4:5-7, 4:44-5:2, 6:58-
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`7:5, 8:15-20, 11:9-25, 12:6-19; Ex. 1011 at 3:19-26; Figs. 1, 4, 17; Ex. 1019 at 13-
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`14). Beser also teaches that IP traffic sent over the public network in an IP
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`tunneling association ordinarily is encrypted. Ex. 1003 at ¶¶ 237-239, 264, 283-
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`290 (citing Ex. 1009 at 1:54-2:15, 2:6-14, 2:22-27, 3:4-9, 8:15-20, 11:22-25,
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`11:45-58