IN THE. IINITEB STATES PATENT AND TRADEMARK OFFICE
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`"in re Inner I’m-123 Reexaminaiinn of:
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`Vietnr [amen et 211.
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`Centre} Ne; 955001 ”7’88
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`U. S. I’ni‘ent No 7.4! 8504
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`Group Art Unit: 3992.
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`Issued: August 26. ZIJIIS
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`Examiner: Ruined Foster
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`Fm: AIIIILE N'E‘I‘WCIRK PRO‘I‘OEIUL FOR SECURE-
`COS-"IIIUNICA’HONS USING SECURE
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`Cnnfirmininn No. 5833
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`DOMAIN NAMES
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`Mail Step iI‘IIE'TI"1:’a:IFI€-S Iiieexem
`Connnissimier for Patents
`Pi). 33m:
`.1450
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`Alexandria, VA 223 I 3445i}
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`DECLARATION OF DR. ROBERT DUNHAM S‘HGRT HI.
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`I Robert {)unnam Sheri. III, deeizn‘e as feiiows:
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`I.
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`I naive been the Chief Technology ()i'ii‘icer of Vii‘neIX Inc.
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`(“\s’imeitX“} since June
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`2010 and the Chief Scientist ibr Vin'ieis-‘I. since May 2006. Prior in inining \I’imeIX. frem 3994 in
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`Aprii 3005,
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`I Ireid various pneitinns including Assistant Vice President anti Division Manager at
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`Science Appiications Internetienni {lirporinion (“Sr-\IC“). Prior tn SAII::, I worked at ARGO {Denier
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`‘I‘ecimeiogies hie, Sperry {Ini‘pei‘erie 'I'eehnoingy Center. and Sperry Research Center.
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`leave a 1311!).
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`in Eiectrieei Engineering from Purciue University as weii as e .1‘»I.S.in i‘»-I.eriiemnrics and. a. 8.3. in
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`Electrical Engineering from Virginia Tee i1.
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`2.
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`I am one of the named inventnrs of US. I’artenr Ne. 1?in 8504 (“the ”50% patent”),
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`which I iinderstnnfi is the subject of the abevefiidemified reexamination. proceeding.
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`I am i‘nmiiiar
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`with the ’504 entrant. including its ciaime.
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`3.
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`Prior re and at the. time ni‘ the invem‘iens claimed in the ’504 parent, there was a
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`significant and increasing concern with the seeui‘ii}? 0f computer net‘nmrk cemmenieaflon. The
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`widespread centreciiviry between computers that was ennbied by the swift increase in netwnri; access
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`in flames and businesses nisn ied in many security breaches as weii as concerns regarding; the safety ni‘
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`cnnfidentiei infnmietioii sent ever computer networks. This pi‘ebiem received significant attention
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`{mm the research and {ie‘\-'einpmeni ceilin‘umity. Practice} experience showed that there was: 21 need
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`for a system that cnnid be easiiy and cerrectiy used to enabie secure enimmmientions, because a
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`system that made it diffienir fer an end~nser in ennnie secure cnmmuniceriens would iikeiy Iead in 3
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`Petitioner Apple Inc. - EX. 1053, p. 1
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`Petitioner Apple Inc. - Ex. 1053, p. 1
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`Control No. 95500} £88
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`loci}: of use or inconect use. The inventions discioeed and claimed in the ’504 patent and other patents
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`in this family met this need. For instance, tilt? insemions disciosed anti ciiaimet‘i in the €504 patent
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`include a domain name service for estabiishing secure communication links, As an exampie,
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`independent ciaim l recites “{a] system for providing a domain name service. for esrebiishirig a secure
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`crn‘mmmicatioo link, the system comprising} a domain more service system configured a
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`.
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`.
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`to
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`comprise an indication that
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`the clonmin Home service: system supports esiablishiog a secure
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`communication fink.”
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`(”304 patent S5:49*56.} Dependent oiairo 8 recites that the domain name
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`service sysiem is eonnectable to a virtusi private network {VPN} through the communication network
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`and dependent: claim 9 recites that
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`the vii‘tiiai private oetr-vork is one of a pl'ureliiy of secure
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`comimmieatioo links in a hierarchy of secure communication links.
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`("504 patent 56:540} Further,
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`dependent claim to recites that the “(Imperial name service system is configured to support estaliiisiiirig
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`a. secure common}:icetioo link between, {a} first location anal {a} second location." {"304 patent 56:40—
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`43.) As another exampie} cieim ‘2? recites that the domain name seWice system is configured to
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`enable establishment of a secure communication link between a first ioeation anti a second iocetion
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`iii‘fllilS'pElFEllliiy to a user at the first iocatioo.
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`{”504 patent 5?:l3-l6.) The imseotions combine both
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`esseofose and security aspects without sacrificing one or the other.
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`4.
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`As one exampie of the manifestation of the long—felt need? the Defense Advanced
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`Research Projects Agency (“DARPA”) funded various. research programs to further the science and
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`technology of inibrmstion assumoce tutti survivability. DARPA programs, such as the “Information
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`Assurance” and “llynamie Coalitions” programs were iocused on the need to provide essy«to«eii£ibie
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`secure comimmications.
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`These proiects received significant
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`funding to be spent oevelopiog
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`technologies that could soive this need. For example, one such project eotitleii Next Generation
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`Internet” received funding in fiscal year l993 of epprosirimteiy‘ $39.3 miilion, in fiscei year l999 of
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`appronmaieiy $49.5 million, and. in fiscal year 2000 of approximately $40 million.
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`(fix. 8—1 at
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`VNETOl‘iElQBGl 319621.} Another program fimried. lo} EARPA, “lilyiisrriic Coalitions," was created
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`to address the abiiity of the Deparm‘ieot of Defense to quickly and easily enable secure
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`commmicetioos over the lntemet.
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`(See, rag Ex. 3—: at 'VNE’YWZ 19244, 2845 298—209, 593, $25.)
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`5‘
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`According to DARPA officials at the time “existing group membership protocols
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`{iliid} not support ilie security needs of milltidimensiooei organizations. The overarching chaileoge
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`{Wills creating secure groups rapidly This {was a significant issue when countries [woke faced with
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`so operation that requireld} immediate moltinetionsi attention.” {Ex 8:} at l.) DARPA contracted
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`with some oi’rhe most skilied organizations in the area. oi‘secured commmiielations in an effim to meet
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`its security needs (e.g., NA]. Labs, a division 017%}? Security; Network Associates incorporate-tit Les
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`2
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`Petitioner Apple Inc. - EX. 1053, p. 2
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`Petitioner Apple Inc. - Ex. 1053, p. 2
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`Control No. 95500} ,?88
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`Ange‘LlS arid the Miemeieetrenies Center Lii‘Nm‘th Carmina, Research Triangle Park NLmli Carolina,
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`as w ell as Julius Hopkins Limeiaiw fiziliimere; Northwestern Linn61%31‘9 803W}; and ‘i eridien- PSR
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`Arlingme, Virginia).
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`lid. at l.)
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`in all, mere rlian 15 organizations were reseaiehiiig the 'V‘c'li’lQHS
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`mmpeneiiis that made up the pmgi‘ams initiated by the Department of Defense. {lei} 'H‘Liwever, name
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`01 these piesiiuieuq insuwimua came up Wltlla SOlu‘iiOl} Liming the Telexan: Lime flame clese to what
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`is dlSClflSEfl and claimed in the ’504 patent
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`{LIL}. ai l4} Thai is; they did 110*; dei-elep a seltitien {1131‘
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`provided a domain name service for establieliing a secure eeiiiimmieatimi link,
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`6.
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`As a second exarn‘iple of the long-felt need for the ii‘iveniiw‘is ef line 7504 patent
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`liti—Q—“l‘ei, which is a X-‘el'ltm’e Ltepitel fine that
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`invesis in companies daiv'elepiiig cutting enge
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`technele0g}, aimed at suppertiiig the United States intelligence emmn'uiiiiy,
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`including the Central
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`Intelligence Agency (GA), funded the original (lei-‘elopn'ient (if the teelnmlegr with approxiinaiely
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`$34 million lfiii—Qii’el‘s willingness to ei'itei‘ him 3 relationgliip with SAIC {the miginal assignee of
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`the applicatien that led to the ’504 patent) fer the development 0f this teeliimlegy fim’her ei-"iileiieee a.
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`lei‘igvl‘elt need for teclmelogy that made it easy and convenient to enable secure e0111mm}ieatienx
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`‘3.
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`A tliiid example ii as the extent to whiLli SAP:inteiiiellv funded {lie ieseaiLli and
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`Lleelepiiiem Ql the tLlenlog When l was empleyed at SAIC, its business madel was to sell. hours
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`to the federal government. SMi was met simcluieLl Lie brim: pieduus to {the market. which typically
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`requires significant internal investments in research and develepiiient.
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`iii an avaiege year during the
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`Llevelepmeiii of the technology that led to the ‘504 patent SAN: weuld spend approximately $2
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`miiiien an internal research and developn‘ient eflhrte.
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`In the
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`arse Of the teleGliw claimed in. the
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`’504 patent, SAlC invested. $1.7 mi'llimi, which represents eliiiest the entirety of SAXC’S internal
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`research and development budget for one whole yeai: A technology review committee also Lippmvezl
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`our team s patent dei‘elepmem el‘l‘mts and costs an an i‘ii‘iL{i‘iing beais s A third party {Casn‘il‘n‘idge
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`Strategic Managemem Group or CSMG} also SubSlaiitlaieil the value ef‘ilie l3fll‘il‘10l0gyv MQI‘EO‘S-“EE‘, a
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`significant percentage (if ali ei‘ SALEC’Lpatient Lienelepmem egffims lime focused Lin this iLleLiloL l
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`unfilei‘sianil that SMC‘ Spent {)l}8~‘illll'tl of its Intel, peiem pi‘fl‘ti‘blii‘i e‘f‘lbns m: our patent pm‘ti’olie at that
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`time.
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`8
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`in fact, as Liemoneii‘atecl iii an article “Linen before the claimed invemiens (if the ’504
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`patent it was widely i‘eeeeiiized that: pmxicling seLVere remote access in a LAN or Vii-“A wee
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`exiremely difficult for IT support desks,
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`(lei; 8—4 at l l
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`in ilmi time peiiod iemoteaCL 35 was “a
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`nightmare fer suppm‘t LleleSL Staffers nevei‘ knlelw what. ceiiibii‘iatim‘i of CPU? modem? operating
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`system and software emifiguieiien they {were} geing Le have to suppi'irt,” and adding the
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`eemineral,a.il_\xvari-'ailable “TAN Sofiware only made matters worse.
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`3
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`{322i}
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`Petitioner Apple Inc. - EX. 1053, p. 3
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`Petitioner Apple Inc. - Ex. 1053, p. 3
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`Control No. 95500} £88
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`l1
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`This. article precisely captured the computer and interim: security industry‘s attitude
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`{CNS-{lid {lie li'azleofflieiween “ilk”: ease of use of a secure system? such as a. VPN system, for the average
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`computei‘ user and the security that the VPN system provided. The article recognized. that the “ease of
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`inslallation isn’t always a good thing:
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`In many case-5* the easier the client is to install, the less secure
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`it is.” (Ill. a: 2i} 'l’l‘ie claimed inventions oftlie ’Sllc'l patent, which provide a domain name sen-ice for;
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`eslablisliing 2i secure communication loll»: {for example a ‘VPN communicalien link), combine boili
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`case of use and security aspects without sacrificing one or the other.
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`l0.
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`Moreover, many where before and around the lime cf the inventiox‘is claimed in the
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`2504 lament have attemptecl
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`to solve the need of ecsy—lo-ese methods of enabling secure
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`communications over the lntcmet. But, 35 discussed above, many of {liege attempts have failecl. For
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`example despi'le ii'westing enormous amounts of money and enlisting the resources of numerous.
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`prestigious insiituiions and their ialezitetl employees DARPA’S projects still fell for short of the
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`claimed inventions Mike ”504 patent. {See “E $5, mpmj
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`l l
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`Additionally; as discussed above, no one had yet achieved the results ol‘tlie claimed
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`inventions of {he ’Sllsl patent in that time period, because remote access was "a niglii‘mai‘e” for support
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`desks to handle, and adding the cmmncrcialunavailable VPN wile-“arc was even more clifficuli.
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`in.
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`feel? al {his time, {he secm‘ll‘y industry generally viewed ease of use and VPN security as minimally
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`exclusive,
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`(Size “ 8—9, were} By providing a domain name service for establishing a secure
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`communication link, the inventions ol’lhc ’384 paiem provided a system fin“ easily establishing secure
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`coum‘mnication links without: sacrificing security, ihereb}! succeeding where others .l'i’iiled.
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`l2.
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`The claimed. inventioos of the "504 patent. have been commercially successfull for
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`example, through the licensing revenues the}? have generated for VimelX.
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`in luly 20(th SafeNet a
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`leacling provider of internal security technology that is the cle facts standard in the VPN' industry,
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`entered. into a portfolio license with SAEC‘. to incorporate features into Sal‘eNetls underlying \r'l’Ns.
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`Sal‘cht licensed the patents because ol‘fealures disclosed and claimed in the patents, including those
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`in the ’504 patent
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`lx-ilicmsol‘t has also entered into a. similar: license {list includes the "filial potent.
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`'ll-licrosoll entered into its license will} Vimetffii after it was found to have infi‘ingecl two other Violet};
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`patents in the some lizmily, resulting in. a damages award ofowr one hundred million dollars, leading
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`ultimalely to a license agreement of'lwo hundred million dollars.
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`l3.
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`The claimed *ii’ii-‘iziilrions of the 1504 pate‘ni were also contrary to the accepted wisdom
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`in: the. time of tilt} inventions. For example, them: was a general uncietstamliog that reliable security
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`could only be achieved through di'l’ficult—to-pnwision \PNs and easy—m-set~up c-i'iririeclioiis coulcl not
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`lie secure. This belief was reinforced by the ll‘ offices of many large companies and institutions,
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`4
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`Petitioner Apple Inc. - EX. 1053, p. 4
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`Petitioner Apple Inc. - Ex. 1053, p. 4
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`Control No. 95500} ,?88
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`whose iivelihood depended en the need for highiymtraineo. speeiaiisis to arrange secure network
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`ccmnectioos.
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`H.
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`The industry had long accepted as a fact that secure systems, such as VPN systems.~
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`would be difficult
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`to set up, and.
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`the secure communication modes eou‘id not be easily and.
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`ca‘mvenimtly enableo in 2: i999 ai't'ieie entitled “CE-Os Chew the VPN Fat“ that predicted What the
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`future heid for the start—up companies that deveiope‘d \I’\\ the wish iist (iid not even address the type
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`of solutions provified by the ’504 patent: such as a domain name service for establishing secure
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`cox‘lmiuoieation links. (Ex. 13-5 at 1—2.)
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`ES.
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`The teciii'lology of the ’304 patent was aiso met wish skepticism by those skiiled in
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`the am who ieamed of our inventions. Semi Saydjafi, a. program manager for HARPER? infomied
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`Edmund Monger, a oo-im—‘entor of the *504 patent, than. our ieeimoiogy would never be adopted.
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`foriioreovei; the IT offices of 1,113,113 iarge companies anti instituiioos expressed skepticism that: secure
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`connections couid ever be enabied easily-‘13}? regular computer users
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`it“?
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`Severai eveois aiso deii‘ioi‘isti‘aiie praise for the im-eniioos in {the T504 patent by those
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`in the field As dismissed above, SAiC invested a dispropo‘i‘tioiiat'eiy iai‘ge pei‘eemage of its iniei‘na}
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`resources in the teehuoiogy SafeNei and Microsofi: have both iiceiised the technology of the 3&4
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`patent A stuéy done by CSMG also praised. {he inventioiis. Jim limit at Network Soiutiona \x-‘hich
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`was acquired £33 Verisign, praised. and expressed significant interest in the technology and wouid have
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`,iiwesieo but for a change in circumstances at his company.
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`i?
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`i deoiare {halt ail staliei‘nems made herein of my own kuowiedge are {me and that ail
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`statements made on information and belief are believed to be true and further, that these statements
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`were made with the knowiedge that x-viliful faise statements anti the like so made are punishable by
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`fine or in‘lprismimen'i, or both, under Section 200} offii‘iiie is ofthe United States Code; one} that such
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`wi‘iifiil faise statements may jeopardize the validity of the ’304 patent,
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`Dated: March 293 2012.
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`33*:
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`i'Rohei‘t Duilham Short 111:"
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`Robert Dimham Shim Hi
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`‘Jj
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`Petitioner Apple Inc. - EX. 1053, p. 5
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`Petitioner Apple Inc. - Ex. 1053, p. 5
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