`Filed on behalf of: VirnetX Inc.
`By:
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: josephpalys@paulhastings.com
`
`
`
`
`
`Paper No.
`Filed: August 29, 2014
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: naveenmodi@paulhastings.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE INC.
`Petitioner
`v.
`VIRNETX INC.
`Patent Owner
`
`
`
`Case IPR2014-00237
`Patent 8,504,697
`
`
`
`
`
`Patent Owner’s Response
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2014-00237
`
`Table of Contents
`Introduction ...................................................................................................... 1
`I.
`II. Mr. Fratto’s Testimony Should Not Be Given Any Weight Because
`He Is Not One of Ordinary Skill ...................................................................... 1
`III. Mr. Fratto’s Testimony Should Not Be Given Any Weight Because
`He Has Repeatedly Demonstrated Bias Against VirnetX’s Patents ............... 6
`IV. Claim Construction .......................................................................................... 9
`A.
`“Secure Communication Link” (Claims 1-3, 11-13, 16-17, and
`24-27) ..................................................................................................10
`1.
`“Authentication” and “Address Hopping” Alone Do Not
`Result in a “Secure Communication Link” ...............................11
`VirnetX Disclaimed “Secure Communication Links” that
`Do Not Require Encryption ......................................................15
`“Virtual Private Network (VPN)” (Not a Claim Term) ......................19
`“Intercept[ing] . . . a request to look up an internet protocol (IP)
`address” (Claims 1 and 16) .................................................................23
`“Determining, in response to the request, whether the second
`network device is available for a secure communications
`service” (Claims 1 and 16) ..................................................................27
`Beser Does Not Anticipate Claims 1-11, 14-25, and 28-30 ..........................30
`A.
`Beser’s Disclosure ...............................................................................31
`B.
`The Decision’s Preliminary Description of Beser Is Inaccurate .........35
`C.
`Beser Does Not Disclose Each and Every Feature of the
`Independent Claims .............................................................................36
`1.
`Beser Does Not Disclose the Claimed Intercepting
`Features .....................................................................................36
`Beser Does Not Disclose the Claimed “Determining”
`Features .....................................................................................39
`
`B.
`C.
`
`D.
`
`V.
`
`2.
`
`2.
`
`i
`
`
`
`
`
`
`
`
`Case No. IPR2014-00237
`
`a)
`
`b)
`
`Apple Fails to Prove Inherency Regarding the
`“Determining” Feature ...................................................41
`Beser Does Not Disclose “Determining” Under the
`Decision’s Alternative Rationales ..................................43
`Beser Does Not Disclose the Claimed Secure
`Communication Link ................................................................49
`Beser Does Not Disclose Each and Every Feature of the
`Dependent Claims ...............................................................................52
`1.
`Beser Fails to Disclose Encryption of Video or Audio
`Data ...........................................................................................52
`Beser Fails to Disclose a Virtual Private Network
`Communication Link ................................................................55
`VI. Claims 1-11, 14-25, and 28-30 Are Not Obvious Based on Beser in
`View of RFC 2401 .........................................................................................55
`VII. Conclusion .....................................................................................................58
`
`
`
`D.
`
`3.
`
`2.
`
`ii
`
`
`
`
`
`
`
`
`Case No. IPR2014-00237
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`FEDERAL CASES
`Apple Inc. v. Achates Reference Publ’g, Inc.,
`IPR2013-00080, Paper No. 90 (June 2, 2014) ...................................................... 8
`Callaway Golf Co. v. Acushnet Co.,
`576 F.3d 1331, 1346 (Fed. Cir. 2009) ................................................................ 54
`Ethicon, Inc. v. U.S. Surgical Corp.,
`135 F.3d 1456 (Fed. Cir. 1998) ............................................................................ 8
`Garmin Int’l Inc. v. Cuozzo Speed Tech. LLC,
`IPR2012-00001, Paper No. 15 (Jan. 9, 2013) ..................................................... 19
`Grober v. Mako Prods., Inc.,
`686 F.3d 1335 (Fed. Cir. 2012) .......................................................................... 17
`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027, Paper No. 26 (June 11, 2013) .............................................. 9, 40
`Jonsson v. Stanley Works,
`903 F.2d 812 (Fed. Cir. 1990) ............................................................................ 18
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) .......................................................................... 43
`Krippelz v. Ford Motor Co.,
`667 F.3d 1261 (Fed. Cir. 2012) .......................................................................... 18
`Lindemann Maschinenfabrik v. Am. Hoist and Derrick,
`730 F.2d 1452 (Fed. Cir. 1984) .......................................................................... 47
`Microsoft Corp. v. Multi–Tech Sys., Inc.,
`357 F.3d 1340 (Fed. Cir. 2004) .......................................................................... 18
`Motorola Solutions, Inc. v. Mobile Scanning Tech., LLC,
`IPR2013-00093, Paper No. 28 (Apr. 29, 2013) .................................................. 19
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .......................................................................... 47
`
`iii
`
`
`
`
`
`Case No. IPR2014-00237
`
`
`
`In re Robertson,
`169 F.3d 743, 745 (Fed. Cir. 1999) .................................................................... 42
`ScentAir Techs., Inc. v. Prolitec, Inc.,
`IPR2013-00179, Paper No. 9 (Apr. 16, 2013) .................................................... 40
`In re Skvorecz,
`580 F.3d 1262 (Fed. Cir. 2009) ............................................................................ 9
`Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008) ........................................................................ 5, 6
`Tagatz v. Marquette Univ.,
`861 F.2d 1040 (7th Cir. 1988) .............................................................................. 8
`Tempo Lighting Inc. v. Tivoli LLC,
`742 F.3d 973 (Fed. Cir. 2014) ...................................................................... 16, 17
`Wang Labs., Inc. v. Am. Online, Inc.,
`197 F.3d 1377 (Fed. Cir. 1999) .......................................................................... 18
`Xilinx, Inc. v. Intellectual Ventures I LLC,
`IPR2013-00112, Paper No. 14 (June 27, 2013) .................................................. 19
`In re Yamamoto,
`740 F.2d 1569 (Fed. Cir. 1984) ............................................................................ 9
`ZTE Corp. & ZTE (USA) Inc. v. ContentGuard Holdings, Inc.,
`IPR2013-00134, Paper No. 12 (June 19, 2013) .................................................. 19
`FEDERAL STATUTES
`35 U.S.C. § 314 ........................................................................................................ 40
`35 U.S.C. § 316(e) ..................................................................................................... 1
`REGULATIONS
`37 C.F.R. § 42.65(a) ................................................................................................. 43
`
`
`
`iv
`
`
`
`
`
`I.
`
`
`
`Case No. IPR2014-00237
`
`Introduction
`Patent Owner VirnetX Inc. respectfully submits this Response to the Board’s
`
`decision to institute inter partes review (Paper No. 15, the “Decision”) and to the
`
`petition for inter partes review (Paper No. 1, the “Petition”) filed by Apple Inc.
`
`The Board instituted review of U.S. Patent No. 8,504,697 (“the ’697 patent”) on
`
`two grounds: (1) anticipation of claims 1-11, 14-25, and 28-30 by Beser; and
`
`(2) obviousness of claims 1-11, 14-25, and 28-30 over Beser in view of RFC 2401.
`
`In instituting this proceeding, however, the Board noted that at least certain
`
`claims “present close questions of anticipation or obviousness.” (Decision at 29.)
`
`In light of these “close questions,” the disclosures of Beser and RFC 2401, and the
`
`analysis below, Apple has not carried its “burden of proving . . . unpatentability by
`
`a preponderance of the evidence.” 35 U.S.C. §316(e). The Board should enter
`
`judgment against Apple and terminate this proceeding.
`
`II. Mr. Fratto’s Testimony Should Not Be Given Any Weight Because He
`Is Not One of Ordinary Skill
`Apple’s purported expert, Michael Fratto, has repeatedly defined the level of
`
`ordinary skill in the art for VirnetX’s patents as requiring a master’s degree in
`
`computer science or computer engineering and approximately two years of
`
`experience in computer networking and computer security. (See, e.g., Ex. 2021 at
`
`1, ¶5, Declaration of Mr. Fratto filed Aug. 6, 2012 in Apple’s inter partes
`
`reexamination control no. 95/001,789; Ex. 2022 at 1, ¶5, Declaration of Mr. Fratto
`
`
`
`
`
`
`
`
`
`filed June 25, 2012 in Apple’s inter partes reexamination control no. 95/001,788.)
`
`Case No. IPR2014-00237
`
`
`
`This is the same level of skill that Apple and nearly a dozen other parties have
`
`consistently advocated in related litigation. (Paper No. 12 at 15, “Preliminary
`
`Response”; Ex. 2006 at 4, Memorandum Opinion and Order in VirnetX Inc. v.
`
`Mitel Networks Corp. et al., Case No. 6:11-CV-18 (E.D. Tex. Aug. 1, 2012);
`
`Ex. 1049 at 5, Memorandum Opinion and Order in VirnetX Inc. v. Cisco Systems,
`
`Inc. et al., Case No. 6:10-CV-417 (E.D. Tex. April 25, 2012).)
`
`It is also essentially the same level of skill that both Apple and Microsoft
`
`have advocated in other inter partes reviews of VirnetX’s patents. (See, e.g.,
`
`Ex. 2023 at 3, ¶7, Declaration of Dr. Roch Guerin in Apple’s IPR2014-00481,
`
`Ex. 1011; Ex. 2024 at 3, ¶7, Declaration of Dr. Roch Guerin in Microsoft’s
`
`IPR2014-00403 Exhibit 1011.) VirnetX’s expert, Dr. Fabian Monrose, also agrees
`
`that a person of ordinary skill in art for VirnetX’s patents would have had a
`
`master’s degree in computer science or computer engineering, as well as two years
`
`of experience in computer networking with some accompanying exposure to
`
`network security. (Ex. 2025 at 10, ¶ 12, Declaration of Fabian Monrose, Ph.D.,
`
`“Monrose Decl.”) Because there is nearly universal agreement that this is the level
`
`of skill that applies to VirnetX’s patents, the Board should apply it here.
`
`It is undisputed that Mr. Fratto does not meet or exceed this level of skill
`
`and, as a result, is not qualified to provide opinions in this proceeding. He is, in
`
`2
`
`
`
`
`
`fact, significantly below this level of skill. Mr. Fratto did not graduate high school,
`
`Case No. IPR2014-00237
`
`
`
`instead earning a GED in 1983. (Ex. 2026 at p. 11, ll. 15-18, Transcript of August
`
`14, 2014 Deposition of Michael Fratto.) He then spent two years at a junior
`
`college in Florida and three years at Towson University pursuing a degree in
`
`Philosophy that he never completed. (Id. at p. 7, l. 17 - p. 9, l.) He then spent two
`
`years at Syracuse University, receiving a bachelor of art’s degree in information
`
`science and technology in 2001. (Id. at p. 9, l. 7 - p. 10, l. 14.) His
`
`post-undergraduate education consists exclusively of a five-day introductory
`
`course to Cisco routers. (Id. at p. 10, ll. 15-24.) He does not have a master’s
`
`degree in computer science or computer engineering (or any other field). (See
`
`Ex. 1003 at 8-11, ¶¶ 2-13.)
`
`Mr. Fratto’s work experience also falls short of the level required for one of
`
`ordinary skill in the art for VirnetX’s patents. Mr. Fratto worked a “variety of odd
`
`jobs” for about a decade until the early 1990s, then worked on simple office
`
`automation programs, and has since been an editor and analyst for technological
`
`publications. (See, e.g., Ex. 2026 at p. 11, l. 19 - p. 13, l. 21; see also Ex. 1003 at
`
`8-11, ¶¶ 2-13.) Mr. Fratto’s editorial-focused career has allowed him to work in an
`
`environment that includes using some computer networking products, (see, e.g.,
`
`Ex. 2026 at p. 17, l. 15 - p. 18, l. 4), but it falls short of including the type of
`
`3
`
`
`
`
`
`experience required to qualify him as a person of ordinary skill in the art. (See
`
`Case No. IPR2014-00237
`
`
`
`Ex. 1003 at 8-11, ¶¶ 2-13.)
`
`The Federal Circuit has explained that witnesses like Mr. Fratto who do not
`
`possess at least ordinary skill in the art cannot testify regarding invalidity:
`
`We hold that it is an abuse of discretion to permit a
`witness to testify as an expert on the issues of
`noninfringement or invalidity unless that witness is
`qualified as an expert in the pertinent art. Testimony
`proffered by a witness lacking the relevant technical
`expertise fails
`the standard of admissibility under
`Fed.R.Evid. 702. Indeed, where an issue calls for
`consideration of evidence from the perspective of one of
`ordinary skill in the art, it is contradictory to Rule 702 to
`allow a witness to testify on the issue who is not qualified
`as a technical expert in that art.
`…
`With regard to invalidity, for example, a witness not
`qualified in the pertinent art may not testify as an expert
`as to anticipation, or any of the underlying questions,
`such as the nature of the claimed invention, what a prior
`art references discloses, or whether the asserted claims
`read on the prior art reference.
`…
`Nor may a witness not qualified in the pertinent art
`testify as an expert on obviousness, or any of the
`
`4
`
`
`
`
`
`
`
`
`Case No. IPR2014-00237
`
`underlying technical questions, such as the nature of the
`claimed invention, the scope and content of prior art, the
`differences between the claimed invention and the prior
`art, or the motivation of one of ordinary skill in the art to
`combine
`these references
`to achieve
`the claimed
`invention.
`Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363-64 (Fed. Cir.
`
`2008).
`
`Because his qualifications and experience fall below those of a person of
`
`ordinary skill in the art, no weight should be given to Mr. Fratto’s characterizations
`
`of the ’697 patent, characterizations of the alleged prior art, or conclusory
`
`statements about what one of ordinary skill in the art at the relevant time would
`
`have understood.
`
`Mr. Fratto’s and Apple’s attempts in this inter partes review to redefine the
`
`level of skill in a way that might encompass Mr. Fratto should be rejected. Those
`
`attempts are inconsistent with Mr. Fratto’s own prior sworn testimony that the
`
`level of skill should be higher, are inconsistent with Apple’s own definition in
`
`litigation and in other inter partes reviews, and are inconsistent with the level of
`
`skill adopted by many other parties familiar with VirnetX’s patents.
`
`Apple relied exclusively on Mr. Fratto’s declaration to support its Petition,
`
`not once citing Beser itself in its application of the reference to the challenged
`
`claims. (See Paper No. 19 at 3-5; Paper No. 1.) The Decision also relies
`
`5
`
`
`
`
`
`extensively on Mr. Fratto’s testimony, citing Mr. Fratto’s declaration 41 times.
`
`Case No. IPR2014-00237
`
`
`
`(See Paper No. 15.) Both Apple’s and the Decision’s analyses are based on
`
`testimony that should not be given any weight, see Sundance v. DeMonte, supra,
`
`so the Board should enter judgment against Apple and terminate this proceeding
`
`for this reason alone.
`
`III. Mr. Fratto’s Testimony Should Not Be Given Any Weight Because
`He Has Repeatedly Demonstrated Bias Against VirnetX’s Patents
`Mr. Fratto has displayed a bias against VirnetX’s patents that is far outside
`
`the norms a reasonable trier of fact would expect of an individual proffered as an
`
`expert. He made public statements that were not disclosed by Apple, and thus not
`
`considered in the Board’s decision to institute inter partes review, which make all
`
`of his testimony questionable, particularly in light of the inaccurate conclusions he
`
`draws in this proceeding. The Board should not give his testimony any weight.
`
`Over the course of several years, Mr. Fratto has made public statements on
`
`Twitter that reveal his bias against VirnetX’s patents. (See, e.g., Ex. 2026 at p. 73,
`
`l. 22 - p. 74, l. 13; see also Exs. 2008-2020.) Mr. Fratto was first retained by
`
`Apple in 2011, when he asked on Twitter for suggestions for a rate to charge as a
`
`patent consultant. (See, e.g., Ex. 2026 at p. 58, ll. 17-18, and p. 82, l. 3 - p. 83, l. 8;
`
`Ex. 2011.) Shortly thereafter, Mr. Fratto revealed that he does not view himself as
`
`being neutral. Rather, Mr. Fratto announced that he views his role as including
`
`“patent busting” rather than “patent consulting.” (Ex. 2018; Ex. 2026 at p. 94, ll.
`
`6
`
`
`
`
`
`4-11.) Later in 2013, Mr. Fratto went further, posting that “if someone wants to
`
`Case No. IPR2014-00237
`
`
`
`retain me as an expert witness to bust [a patent] I will do it for free just to screw
`
`them.” (Ex. 2015, emphasis added; Ex. 2026 at p. 91, ll. 5-15.)
`
`Not only is Mr. Fratto purposefully trying to “bust” VirnetX’s patents, he is
`
`using improper techniques to do so. Two months after signing his declaration in
`
`this matter, Mr. Fratto announced that he has “come to the conclusion patent
`
`disputes aren’t won on merits but rather who can bury who under a mountain of
`
`paper.” (Ex. 2013, emphasis added; Ex. 2026 at p. 94, l. 17 - p. 95, l. 6.) In this
`
`context, it is not surprising that Mr. Fratto chose to sign a lengthy 201-page
`
`declaration filled with inaccurate conclusions that are refuted below.
`
`In 2012, only one week before signing a declaration in the 95/001,788
`
`reexamination of a VirnetX patent, Mr. Fratto posted on Twitter that “every so
`
`often I look at the cluster [censored] over stupid, obvious patents, and it pisses me
`
`off anew. So short sighted and idiotic.” (Ex. 2019; Ex. 2026 at p. 86, l. 1 - p. 87, l.
`
`21.) Given that Mr. Fratto’s only patent work has been against VirnetX, the bulk
`
`of Mr. Fratto’s anti-patent Twitter posts are really against VirnetX patents. (See
`
`Ex. 2026 at p. 49, l. 17 - p. 50, l. 9.) Mr. Fratto views “expert witnesses” such as
`
`himself as benefitting personally from the type of attack he has mounted here. (Ex.
`
`2017; Ex. 2026 at p. 92, l. 20 - p. 93, l. 14.)
`
`7
`
`
`
`
`
`
`
`
`Case No. IPR2014-00237
`
`Mr. Fratto’s bias is not a minor point. It affects his analysis. During his
`
`deposition, Mr. Fratto admitted: “[t]o the best of my recollection, I don’t think I
`
`have ever concluded that claims were not obvious or not anticipated.” (Ex. 2026 at
`
`p. 58, l. 19 - p. 59, l. 1, emphasis added.) Mr. Fratto has also never taken these
`
`proceedings seriously, even posting one day before his deposition in this matter
`
`that “Council [sic] says I’m not allowed to make faces or gestures at opposing
`
`[counsel] during a deposition. That’s no fun.” (Ex. 2008; Ex. 2026 at p. 91, l. 16 -
`
`p. 92, l. 16.) He then begrudgingly stated, “I will be professional, I suppose.”
`
`(Ex. 2008.)
`
`Courts address an alleged expert’s bias by reducing the weight given to the
`
`expert’s testimony. See, e.g., Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456,
`
`1465 (Fed. Cir. 1998); see also Tagatz v. Marquette Univ., 861 F.2d 1040, 1042
`
`(7th Cir. 1988). In this case, Mr. Fratto has demonstrated extreme bias against
`
`VirnetX and in favor of himself and Apple. His bias goes beyond the type of
`
`general bias that the Board dismissed in Apple Inc. v. Achates Reference Publ’g,
`
`Inc., IPR2013-00080, Paper No. 90 (June 2, 2014), another case involving an
`
`Apple expert. No reasonable trier of fact would give Mr. Fratto’s testimony any
`
`weight. Therefore, since Apple relied exclusively on Mr. Fratto’s declaration to
`
`support its Petition and the Decision relies extensively on his testimony, the Board
`
`should enter judgment against Apple and terminate this proceeding.
`
`8
`
`
`
`
`
`IV. Claim Construction
`The Petition identified five terms for construction. The Decision provided
`
`Case No. IPR2014-00237
`
`
`
`constructions for all but one of those terms. The Decision also provided
`
`constructions for two terms not identified by the parties for construction. VirnetX
`
`responds to certain constructions below.
`
`Although VirnetX’s constructions represent
`
`the broadest reasonable
`
`interpretation (“BRI”) of the claims in light of the specification and prosecution
`
`history, in inter partes review, the Board should apply the claim construction
`
`standard applied by the courts, especially given the litigations and prosecution
`
`histories of patents in the same family as the ’697 patent. The BRI standard “is
`
`solely an examination expedient, not a rule of claim construction.” In re Skvorecz,
`
`580 F.3d 1262, 1267-68 (Fed. Cir. 2009). It is certainly justified during the
`
`examination process because applicant has the opportunity to amend the claims
`
`during prosecution. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
`
`As the Board has noted, however, inter partes review is not an examination
`
`but is “more adjudicatory than examinational, in nature.” Idle Free Sys., Inc. v.
`
`Bergstrom, Inc., IPR2012-00027, Paper No. 26 at 6 (June 11, 2013). The ability to
`
`amend claims during inter partes review is so severely restricted that the rationale
`
`underpinning the BRI—the ability to freely amend claims—does not apply
`
`especially given the litigations and prosecution histories of patents in the same
`
`9
`
`
`
`Case No. IPR2014-00237
`
`family as the ’697 patent. As a result, to the extent the Board would have adopted
`
`a narrower construction under the courts’ claim construction standard than it has
`
`adopted here, it should adopt the narrower construction because the BRI standard
`
`should not apply to this proceeding.
`
`A.
`
`“Secure Communication Link” (Claims 1—3, 11—13, 16—17, and
`
`24—27)
`
`VirnetX’s Proposed
`Construction
`
`Apple’s Proposed
`Construction
`
`Decision’s Construction
`
`
`
`A direct communication
`link that provides data
`security through
`encryption
`
`A communication link in A transmission path that
`which computers
`restricts access to data,
`privately and directly
`addresses, or other
`communicate With each
`information on the path,
`other on insecure paths
`generally using
`between the computers
`obfuscation methods to
`where the communication hide information on the
`
`is both secure and
`anonymous, and where
`the data transferred may
`or may not be encrypted
`
`path, including, but not
`limited to, one or more of
`authentication,
`encryption, or address
`ho - o in ;
`
`The Decision preliminarily construed “secure communication link” to mean
`
`“a transmission path that restricts access to data, addresses, or other information on
`
`the path, generally using obfuscation methods to hide information on the path,
`
`including, but not limited to, one or more of authentication, encryption, or address
`
`hopping.”
`
`(Decision at 10.) VirnetX respectfully disagrees and requests
`
`reconsideration of this construction.
`
`10
`
`
`
`
`
`
`
`
`Case No. IPR2014-00237
`
`1.
`
`“Authentication” and “Address Hopping” Alone Do Not
`Result in a “Secure Communication Link”
`As explained in the Preliminary Response, the Decision’s construction is
`
`contrary to the plain meaning of “secure communication link” and the teachings of
`
`the ’697 patent because it permits, but does not require, encryption. (See Paper
`
`No. 12 at 17-23.) For example, the patent specification teaches that “data security
`
`is usually tackled using some form of data encryption,” and it repeatedly discusses
`
`using encryption. (Ex. 1001 at 1:57-58; see also id. at 10:26-27, 11:42-49, 34:38-
`
`39.)
`
`The Decision’s construction is also technically flawed. Of the obfuscation
`
`methods in the construction—authentication, encryption, and address hopping—
`
`only encryption restricts access to “data, addresses, or other information on the
`
`path,” as required by the first portion of the construction. (Ex. 2025 at 11, ¶ 15,
`
`Monrose Decl.) The other techniques alone do not provide the claimed security.
`
`(Id.)
`
`Authentication merely “[e]nsur[es] that a message originated from the
`
`expected sender and has not been altered on route.” (Ex. 2004 at 3, Glossary for
`
`the Linux FreeS/WAN Project; see Ex. 2025 at 12, ¶ 16, Monrose Decl.) It does
`
`not prevent an eavesdropper from accessing data transmitted over an unsecure
`
`communication link. (Ex. 2025 at 12, ¶ 16, Monrose Decl.) The specification
`
`11
`
`
`
`
`
`supports this fact by describing at least one scenario where an authenticated
`
`Case No. IPR2014-00237
`
`
`
`transmission occurs “in the clear”—i.e., over an unsecured communication link:
`
`SDNS [secure domain name service] 3313 can be accessed
`through secure portal 3310 “in the clear”, that is, without using
`an administrative VPN communication link. In this situation,
`secure portal 3310 preferably authenticates the query using any
`well-known technique, such as a cryptographic technique,
`before allowing the query to proceed to SDNS [3313].
`(Ex. 1001 at 52:7-12; Ex. 2025 at 12, ¶ 16, Monrose Decl.)
`Address hopping alone also does not provide the claimed security, as there is
`
`nothing inherent in moving from address to address that precludes an eavesdropper
`
`from reading the details of a communication. (Ex. 2025 at 12-13, ¶ 17, Monrose
`
`Decl.) This is why the ’697 patent discloses embodiments that use encryption in
`
`conjunction with address hopping to protect, for example, the next address in a
`
`routing scheme from being viewed by eavesdroppers. (See, e.g., Ex. 1001 at 3:36-
`
`50, stating in part that “[e]ach TARP packet’s true destination is concealed behind
`
`a layer of encryption generated using a link key”; see Ex. 2025 at 12-13, ¶ 17,
`
`Monrose Decl.) The Decision contends that address hopping alone is sufficient
`
`because the ’697 patent states that “[a]ddress hopping provides security and
`
`privacy.” (Decision at 9, citing Ex. 1001 at 25:54-56, 40:66-68.) However, the
`
`Decision overlooks that address hopping embodiments in the ’697 patent also use
`
`encryption, and it is the encryption that provides security while moving from
`
`12
`
`
`
`
`
`address to address primarily contributes to privacy. (See, e.g., Ex. 1001 at 3:16-
`
`Case No. IPR2014-00237
`
`
`
`4:40; see also Ex. 2025 at 12-13, ¶ 17, Monrose Decl.)
`
`In construing “secure communication link,” the Decision cites dictionary
`
`definitions, but these definitions are for peripheral terms and do not support the
`
`Decision’s construction of “secure communication link.” (Decision at 9-10;
`
`Exs. 3002, 3003; Ex. 2025 at 13, ¶ 18, Monrose Decl.) For example, the Decision
`
`refers to an IEEE dictionary definition of “security service.” As defined, however,
`
`“security service” broadly pertains to securing “system resources” in addition to
`
`data. (Ex. 3003.) System resources can be secured through physical means that
`
`include access controls or authentication, such as where the computing system is in
`
`a locked room and the person attempting to gain access to it must present a guard
`
`with credentials to physically access the machine. (Ex. 2025 at 13, ¶ 18, Monrose
`
`Decl.) Securing data that travels over a public network of switches and routers
`
`controlled by third parties, where there is no opportunity for physically guarding
`
`access, cannot rely solely on techniques like authentication. (Id.)
`
`In addressing situations like those contemplated by the ’697 patent, the
`
`Decision’s dictionaries support VirnetX’s view that a “secure communication link”
`
`requires encryption. (Ex. 2025 at 13-14, ¶ 19, Monrose Decl.) For example, a few
`
`lines above the general definition of “security” that the Decision relies on, the
`
`dictionary states that “secure visual communications” is defined as “[t]he
`
`13
`
`
`
`
`
`transmission of an encrypted digital signal consisting of animated visual and audio
`
`Case No. IPR2014-00237
`
`
`
`information; the distance may vary from a few hundred feet to thousands of miles.”
`
`(Ex. 3002 at 3, emphasis added; Ex. 2025 at 13-14, ¶ 19, Monrose Decl.) For
`
`signals traveling the distances contemplated by the ’697 patent, and particularly
`
`where those distances include third-party controlled network hardware, encryption
`
`is the only viable mechanism for security over those physically unsecured portions
`
`of the networks. (Ex. 2025 at 13-14, ¶ 19, Monrose Decl.)
`
`While authentication and address hopping may be used in conjunction with
`
`encryption to achieve data security, this fact does not make them sufficient by
`
`themselves to satisfy the claim language. (Ex. 2025 at 14, ¶ 20, Monrose Decl.)
`
`The Decision’s construction presents them as alternatives, allowing each to be
`
`sufficient, so VirnetX disagrees with the construction at least to the extent it does
`
`not require encryption.1
`
`1 Any other disagreements with the Decision’s construction that VirnetX
`
`discussed in its Preliminary Response, such as the lack of a requirement that the
`
`communication path be “direct,” do not appear to be relevant to the parties’
`
`disputes, so VirnetX does not separately address them here. VirnetX similarly
`
`does not address certain arguments that Apple made but that the Decision did not
`
`discuss or adopt, such as Apple’s argument that claim differentiation supports a
`
`broader construction of “secure communication link.”
`
`14
`
`
`
`
`
`
`
`
`Case No. IPR2014-00237
`
`2.
`
`VirnetX Disclaimed “Secure Communication Links” that
`Do Not Require Encryption
`The ’697 patent explains that “secure communication links” require
`
`encryption for the reasons discussed above. However, to the extent the Decision
`
`indicates that the term would ordinarily encompass links without encryption,
`
`VirnetX’s undisputed disclaimer should override the broader meaning.
`
`Apple concedes in the Petition that the “Patent Owner unequivocally
`
`disclaimed secure communication links that did not employ encryption.” (Pet. at
`
`10 n.2.) Likewise, in district court litigation, Apple and other defendants argued
`
`that encryption was required because “VirnetX unequivocally disclaimed ‘secure
`
`communications links’ that are not encrypted” to overcome prior art during
`
`reexamination. (Ex. 2002 at 2-3, Motion for Reconsideration in the ’417 Litigation
`
`(E.D. Tex. June 21, 2012); see also Ex. 1056 at 25-26, Patent Owner’s Response to
`
`Office Action of Dec. 29, 2011, “One of ordinary skill in the art would have
`
`understood a secure communication link to require encryption.”) The district court
`
`agreed and adopted the same construction VirnetX now proposes in this inter
`
`15
`
`
`
`
`
`partes review. (See Ex. 2003 at 1, Order in the ’417 Litigation (E.D. Tex. Oct. 4,
`
`Case No. IPR2014-00237
`
`
`
`2012).)2
`
`The Decision declined to apply this disclaimer here, citing Tempo Lighting
`
`Inc. v. Tivoli LLC, 742 F.3d 973 (Fed. Cir. 2014) for the notion that the PTO need
`
`not adopt a disclaimer. (Decision at 8.) One significant difference between Tempo
`
`Lighting and this inter partes review, however, is that Tempo Lighting involved
`
`reexamination, where amending claims is a realistic option that is not subject to the
`
`tight constraints the Office places on motions to amend in inter partes review.
`
`Despite having more of an opportunity to amend—the Office’s alleged basis for
`
`applying the broadest reasonable interpretation and more heavily scrutinizing
`
`disclaimers—the Federal Circuit still did apply the disclaimer in Tempo Lighting.
`
`In inter partes review, where the opportunity to amend is severely restricted, the
`
`Office should even more liberally recognize disclaimers.
`
`Setting aside the reexamination vs. inter partes review distinction, the
`
`circumstances of the disclaiming remarks in Tempo Lighting were similar to those
`
`present here. There, the PTO had requested that the patentee rewrite the claims.
`
`The patentee did so, and as part of that process, made the disclaiming remarks.
`