UNTTED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE _INC. ,
`
`Petitioner,
`
`V.
`
`VIRNETX INC, f
`Patent Owner.
`
`Case IPR2O14—004031
`
`Patent 7,987,274
`
`PATENT OWNER VIRNETX INC.’S NOTICE OF APPEAL
`
`1 Case IPR2014—00483 has been joined with this case.
`
`

`

`Case No. IPR20l4-00403
`
`Patent No. 7,987,274
`
`
`
`Director of the United States Patent and Trademark Office
`
`c/o Office of the General Counsel
`
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314—5793
`
`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Patent Owner
`
`VirnetX Inc. (“VirnetX”) appeals to the United States Court of Appeals for the
`
`Federal Circuit from the Final Written Decision entered on July 29, 2015 (Paper
`
`42) (the “Final Written Decision”) by the United States Patent and Trademark
`
`‘Office, Patent Trial and Appeal Board (the “Board”), and fi'om all underlying
`
`orders, decisions, rulings, and opinions. A copy of—the Final Written Decision is
`
`attached.
`
`In accordance with 37 CPR. § 90.2(a)(3)(ii), Virne1:X indicates that the
`
`issues on appeal inclu.de, but are not limited to, the Board’s determination of
`
`unpatentability of claims 1, 7, 8, 10, 12, 13, 15, and 17 of U.S. Patent No.
`
`7,987,274 under 35 U.S.C. § 102, the Board’s determination of unpatentability of
`claims 2-5 and 18 ofU.S. Patent No. 7,987,274 under 35 U.S.C. § 103, and any‘
`'
`
`findings or determinations supporting or related to those rulings including, without
`
`limitation, the Board’s application of the broadest reasonable interpretation
`
`standard, the Board’s interpretation of the claim language, and the Board’s
`
`interpretation of the references.
`
`
`
`
`
`
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`
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`1:r:
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`Vi
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`:,=V-TW»\,~,,:m:-zany».-»:y:.s.a~.:-an;
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`Case No. IPR20l4—00403
`
`Patent No. 7,987,274
`
`Simultaneous with this submission, a copy -ofthis Notice of Appeal is being
`
`filed with the Board. in addition, the Notice of Appeal and the required fee are
`
`being filed electronically with the Clerk of Court for the United States Court of
`
`Appeals for the Federal Circuit.
`
`Respectfully submitted this 28th day of September, 2015.
`
`73
`
`:
`
`By:
`
`Naveen Modi
`
`Registration No. 46,224
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, DC 20005
`(202) 551-1700
`naveenrnodi@paulhastings.com
`
`Counselfor VirnezX Inc.
`
`

`

`Case No. IPR20l4—00403
`
`Patent No. 7,987,274
`
`0 CERTIFICATE. or SERVICE
`
`The undersigned certifies that, in addition to being filed electronically
`
`through the Patent Trial and Appeal Board’s Patent Review Processing System
`
`(PRPS), the originai Version of this Notice of Appeal was filed by hand on
`
`
`
`September 28, 2015 with the Director of the United States Patent and Trademark
`
`Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`
`c/o Office of the General Counsel
`
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`The undersigned also certifies that a true and correct copy of thi-s Notice of
`
`Appeal and the required fee were filed electronically Via CM/ECF on September
`
`28, 2015, with the Clerk of Court for the United States Court of Appeals for the
`
`Federal Circuit.
`
`The undersigned also certifies that a true and correct copy of this Notice of
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`Appeal was served on September 28, 2015 on counsel of record. for Petitioner
`
`Apple Inc. by electronic mail (by agreement of the parties) at the following
`
`addresses:
`
`Jeffrey P. Kushan (jkushan@sidley.corn)
`Joseph A. Micallef (jmicallef@sidley.com)
`Sidley Austin LLP
`1501 K Street, NW.
`Washington, DC 20005
`
`

`

`Date: September 28, 2015
`
`Case No. IPR2014—00403
`
`Patent No. 7,987,274
`
`W. 2:
`
`...«—m—---‘'““’'
` “*M*_M”
`
`Naveen Modi
`
`Registration No. 46,224
`Paul Hastings LLP
`875 15th Street, NW.
`Washington, DC 20005
`(202) 551-1700
`naveenm0di@paulhastings.c0m
`
`Counselfor VirnetXInc.
`
`
`
`;:—.::;a:.wW:.=.~M:¢<:v:m~M—:.:za:«-2:.-,:¢‘Lsazzzmmw:c:amz:s=:w»:a-:ass-..-.=sa=c;=:=z:2a:a:=::2:-azwxeza:a::.:=.=::::a::«:x:=:::v:~'\'x5:=1:7=:2=::s=s=s=rs.wr=v
`
`
`
`
`
`
`
`

`

`Ti‘iaEs@uspto.gov
`571—272—7822
`
`Paper 42
`fl
`Date: July 29, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC,
`Petitioner,
`
`V.
`
`VIRNETX INC,
`Patent Owner.
`
`Case IPR2014—004031
`
`Patent 7,987,274 B2
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`35 USC. § 3I8(a) and 37 C.F_R. § 42. 73
`
`1 As discussed below, 1131220 14~00483 has been joined with IPRZO 14-00403.
`This Final Written Decision applies to the joined case.
`
`

`

`IPR2014—0O403
`
`,
`
`Patent 7,987,274 B2
`
`1. BACKGROUND
`
`Microsoft Corporation filed a revised Petition (Paper 4) requesting
`
`interpartes review of claims 1-5, 7, 8, 10, 12, 13,, l5, l7, and 18 ofU.S.
`
`Patent No. 7,987,274 B2 (“the ’274 Patent,” EX. 1001) pursuant to 35 U.S.C.
`
`§§ 31 1—3 19. Paper 4. The Board instituted an imerparres review of claims
`
`1-5, 7, 8, 10, 12, 13, 15, 17, and 18. Paper 13 (“Inst Dec.”).
`
`Apple Incorporated (“Petitioner”) also filed a Petition (Paper 2)
`
`seeking an interpartes review of claims "r—5, 7, 8, 10, 12, 13, 15, 17, and 18
`
`of the ’274 patent pursuant to 35 U.S.C. §§ 311-319 in Case IPR2014-
`
`00483 (‘"483 IPR”). Noting that Microsoft Corporation’s Petition and
`
`Apple Incorporated’s Petition were substantially identical in material
`aspects, the Beard instituted an imferpartés review of claims 1-5, 7, 8, 10,
`
`12, 13, 15, 17, and 18, andjoined IPR2014-00483 with IPR20l4—00403
`
`pursuant to 35 U.S.C. § 315(0). see ’483IPR, Paper 11, 6-9? Thereafter,
`
`pursuant to a settlement agreement, the present proceeding was terminated
`
`with respect to Microsoft Corporation only. Paper 38.
`I
`Prior to institution, VirnetX Incorporated (“Patent Owner”) filed a
`
`Patent Owner Preliminary Response (Paper 9) (“Prelim Resp”), and after
`
`institution, filed a Patent Owner Response (Paper 26) (“PO Resp”).
`
`Petitioner then filed a Reply (Paper 34) (“Pet Reply”). An Oral Hearing
`transpired on April 28, 2015. ‘Paper 41 (“Tr”).
`
`The Board has jurisdiction under 35 U.S.C. § 6(0). This Final Written
`
`Decision issues pursuant to 35 U.S.C. § 3l8(a) and 37 C.F.R. § 42.73.
`
`2’ Unless otherwise noted, all citations hereinafter are to filings in lPR20 14-
`00403.
`'
`
`

`

`IPR2014—00403
`
`Patent 7,987,274_B2
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`apreponderance of the evidence that claims 1-5, 7, 8, 10, 12, 13, 15, 17, and
`
`18 of the ’274 patent are unpatentable.
`
`A. The ’274 Patent (Ex. 100])
`
`The ’274 patent Specification describes secure systems for
`
`communicating over the Internet. EX. 1001, Abstract, 9:38-39. The secure
`
`systems use a secure domain name service (SDNS): “SDNS 3313 contains a
`
`cross—referenee database of secure domain names and corresponding secure
`
`network addresses. That is, for each secure domain name, SDNS 3313
`
`stores a computer network address corresponding to the secure domain
`
`name.” Id at 47: 15-19. The ?274 patent Specification also describes
`
`creating a secure communication link in the form of a virtual private
`
`network (“VPN”) -link. One preferable “VPN communication link can be
`
`based on a technique of inserting a source and destination.IP address pair
`
`into each data packet that is selected according to a. pseudo-random
`
`sequence.” Id. at 46:64-67. The ’274 patent Specification refers to this
`
`technique and similar techniques as an “address hopping regime” or a
`
`“particular information hopping technique.” Id. at 47: 1, 13-14.
`
`B. Illustrative Claim
`
`Claim 1 of the ’274 patent, illustrative of the challenged claims,
`
`follows:
`
`1. A method of accessing a secure network address,
`comprising:
`sending a query message from a first network device to a
`secure domain service, the query message requesting from the
`secure domain service a secure network address for a second
`
`network device‘,
`
`

`

`IPR2014—OO403
`
`Paani29312%4B2
`
`receiving at the first network device a response message
`fiorn the secure domain name service containing the secure
`network address for the second network device; and
`sending an access request message from the first network
`device to the secure network address using a virtual private
`network communication link.
`
`C. Cited Prior Art
`
`Provino
`XL]
`
`US 6,557,037 B1
`US 6,151,628‘
`
`Apr. 29, 2003
`Nov. 21, 2012
`
`(EX. 1003)
`(EX. 1007)
`
`Dave Kosiur, _Building and Managing Private Networks (Sept. 1, 1998) (EX.
`1006, “Kosiur”).
`
`D. Institured Grounds of Unparentabilizjy
`
`'
`iPfinufi5”“7mV““7*i”°i"i7 §102””"
`
`"M7720 1,7,s,io,i2,i3,is,
`
`7
`
`
`
`
`
`
`'
`
`and l. 7
`
`2-5
`§ 10.3
`Provino and Kosiur
`
`_§ 103
`Provino and Xu
`
`E. Claim Construction
`
`In an inter partes review, the Board interprets claim terms in an
`
`unexpired patent according to the broadest reasonable construction in light
`
`of the specification of the patent in which they appear. In re Cuozzo Speed
`
`Techs, LLC, No. 2014-1301, 2015 WL 4097949, at *6 (Fed. Cir. July 8,
`
`2015); 37 CFR. § 42.100(b). Under that standard, clairns must be
`
`construed according to their ordinary and customary meaning, in view of the
`
`specification, as would be understood by one of ordinary skill in the art at
`
`the time of the invention. See In re Translogic Tech, Inc, 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). A “lexicographer” who redefines a claim term to
`
`
`
`

`

`lPR2014—00403
`
`Patent 7,987,274 B2
`
`have an “uncommon n1eaning[]”or “uncommon definition” must do so with
`
`“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed.. Cir. 1994) (citation omitted).
`
`Recently, the Federal Circuit indicated that _even for non~eXpired
`
`patents that return to the PTO, prosecution history may be an important
`
`component of intrinsic evidence in construing claims (notwithstanding that
`
`Patent Owner may amend the claims and a broadest reasonable construction
`
`standard applies).3 See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973,
`
`977 (Fed. Cir. 2014) (“In claim construction, this court gives primacy to the
`
`language of the claims, followed by the specification. Additionally, the
`
`prosecution history, while not literally within the patent document, serves as
`
`intrinsic evidence for purposes of claim construction. This remains true in
`
`construing patent claims before the PTO”) (citing In re Morris, 127 F.3d
`
`1048, 1056 (Fed. Cir. 1997)), I1/Iicrosoft Corp. v. Proxycorin, Inc, No. 2014-
`
`1542, 2015 WL 3747257, at *3 (Fed. Cir. June 16, 2015),(“The PTO
`(should also consult the patent’s prosecution history in proceedings in which
`
`the patent has been brought back to the agency for a second review”)
`
`3 For district court litigation and for expired patents that return to the PTO,
`claims cannot be amended. Those claims must be construed using their
`ordinary and customary meaning, as would be understood by a person of
`ordinary skill in the art, at the time of the invention, in light of the language
`of the claims, the specification, and the prosecution history of record. See
`Phillips v. AWH Corp, 415 F.3d 1303, 1313-17 (Fed. Cir. 2005) (en bane)‘,
`In re Rambus, 694 F.3d 42, 46 (Fed. Cir. 2012) (“[T]he Board’s review of
`the claims of an expired patent is similar to that of a district court’s
`review”); Cuozzo, 2015 WL 4097949, at *6 n.6 (“The claims of an expired
`patent are the one exception where the broadest reasonable interpretation is
`not used because the patentee is unable to amend the claims”) (citing In re
`Rambus, Inc, 753 F.3d 1253, 1256 (Fed. Cir. 2014)).
`
`

`

`1PR20 14-00403
`
`Patent 7,987,274 B2
`
`‘(citing Tempo Lighting, 742 F.3d at 977)‘, MiC1‘0S0fi Corp. v. MuIii—Tech
`
`Syn, Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004) (“[T]he prosecution history
`
`of one patent is relevant to an understanding of the scope of a common term
`
`in a second patent stemming from the same parent application”). On the
`
`other hand, in Tempo Lighting, 742 F.3d at 978, the “court also observes that
`
`the PTO is under no obligation to accept a claim construction proffered as a
`
`prosecution history disclaimer, which generally only binds the patent
`
`owner.”
`
`Although disclaimers or lexicographic definitions in a specification
`
`may be express, they need not be. Compare In re Bigio, 381 F.3d 1320,
`
`1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning,
`
`the PTO should only limit the claim based on the specification or
`
`prosecution history when those sources expressly disclaim the broader
`
`definition”) (emphasis added), with BelfA II. Network Servs., Inc. v. Covod
`
`Commcfns Grp., Inc, 262 F.3d 1258, 1268 (Fed. Cir. 2001) (“[A] claim
`
`term may be clearly redefined without an explicit statement of redefinition. .
`
`.
`
`. In other words, the specification may define claim terms by implication
`
`such that the meaning may be found in or ascertained by a reading of the
`patent documents_’’), (citations and internal quotation marks omitted), and
`
`I/itronics Corp. v. Conoeptronic, Inc, 90 F.3d 1576, 1582 (Fed. Cir. 1996)
`
`(“The specification acts as a dictionary when it expressly defines terms used
`
`in the claims or when it defines terms by implication”).
`
`In any case, prosecution history disclaimers, like uncommon or
`
`lexicographic meanings, must be clear and unambiguous: “[W]hile the
`
`prosecution history can inform whether the inventor limited the claim scope
`
`in the course of prosecution, it often produces ambiguities created by
`
`

`

`IPR20 14-00403
`
`Patent 7,987,274 B2
`
`ongoing negotiations between the inventor and the PTO. Therefore, the
`
`doctrine of prosecution disclaimer only applies to unambiguous disavowals.”
`
`Grober v. Mako Prods, Inc, 686 F.3d 1335, 1341 (Fed. Cir. 2012) (citing
`
`Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1289 (Fed. Cir. 2009)). A
`
`“heavy presumption” exists in favor of the ordinary meaning of claim
`
`language. Bell At]. Network Servs, Inc, 262 F.3d at 1268. To overcome
`
`this presumption, the patentee must “clearly set forth” and “clearly redefine”
`
`a claim term away from its ordinary meaning. Id. The disavowal must be
`
`“unmistal<a'ble” and “unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d
`
`1315, 1322 (Fed. Cir. 2013). This standard is “exacting.” Thorner v. Sony
`
`Computer Entm’tAm. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 20l2).
`
`1. Virtual Private Network (VPN) Communication Link
`
`We previously construed the claim 1 term “virtual private network
`
`communication link” to mean “a transmission path between two devices that
`
`restricts access to data, addresses, or other information on the path, generally
`
`using .obt'uscation methods to hide information on the path, including, but
`
`not limited to, one or more of authentication, encryption, or address
`
`hopping.” Inst. Dec. 8~—9.4 Patent Owner “disagrees with this construction,”
`
`contending that the term “must incorporate the ‘direct -communication’ and
`
`‘network’ aspects of the VPN that are disclosed in the ’274 patent
`
`specification.” PO Resp. 5. However, Patent Owner does not contend that
`
`the last two requirements “materially affect[] the parties’ disputes.” See PO
`
`4 Our construction is consistent with the broadest, reasonable construction in
`Inter Partes Reexamination.Control No. 95/001,792. See Cisco Systems,
`Inc. v. VtrneiX, Ina, Appeal 2014-0004191, slip. op. at 4-8 (PTAB Apr. 1,
`2014) (Decision on Appeal) (involving a grandparent patent to the ’274
`patent, U.S. Patent No. 7,188,180).
`0
`
`

`

`
`
`I-PR20 l4~0O403
`
`«
`
`Patent 7,987,274 B2
`
`Resp. 4: Patent Owner also clarified during the oral hearing that it does not
`
`contend that Provino fails to disclose “direct communication.” See Tr. 86:8-
`
`14.
`
`A
`
`Therefore, we maintain our construction of the term “virtual private
`
`network” or “virtual private network communication link” for purposes of
`
`this decision. See Vivid Techs, Inc. v. Am. Sci. & Eng ’g=, Inc, 200 F.3d 795,
`
`803 (Fed. Cir. 1999) (stating that claim terms need only be construed to the
`
`extent necessary to resolve the case}.
`
`2. Secure Domain Service (SDNS)
`
`Patent Owner proposes that a “secure domain service” (SDNS), as
`
`recited in claim 1, should be construed as “[a] lookup service that recognizes
`
`that a query message is requesting a secure computer address, and returns a
`
`secure computer addressfor a requested secure domain name.” PO Resp.
`
`15.5 Petitioner proposes that an SDNS should be construed as “[a] service
`
`that can resolve secure computer network addresses for a secure domain
`
`name for which a conventional domain name service [(“DNS”)] cannot
`
`resolve addresses.” See Pet. 13, PO Resp. 15 (discussing Petitioner’s
`proposed construction). The distinction between the two proposals centers
`on what the function of “recognizes .
`.
`. requesting a secure domain name”
`
`requires.
`
`To support its construction, Patent Owner argues, among other things,
`
`that “during the now—completed inierpartes reexamination” (Reexam.
`
`5 Claim 1 recites a “secure domain service” and a “secure domain name
`
`service.” For purposes of this Final Written Decision and because it is not at
`issue, we do not distinguish the claim term “secure domain service” from a
`“secure domain name service,” and generally refer to each as an “SDNS.”
`See Pet. 12 (pointing out that claim I recites both terms).
`
`

`

`lPR20l4—00403
`
`Patent 7,987,274 B2
`
`Control No: 95/001,270) (‘"270 reexamination”) of the grandparent patent to
`
`the ”274 patent, U.S. Patent No. 7,188,180 (the “’18O patentf’), “VirnetX .
`
`.
`
`.
`
`disclaimed secure domain services that do not perform this recognition,”
`
`and, further, the Eastern District of Texas “later relied on VirnetX’s
`
`statements.” PO Resp. 16-17 (citing Ex. 2040, 7 (Response to Office
`
`Action, Apr. 19, 2010, ’270 reexamination)‘, EX. 1018, 2, 17-18 (District
`
`Court Memorandum Opinion and Order)). During the ’270 reexamination
`
`proceeding, Patent Owner contended that an SDNS, as claimed and
`
`disclosed, cannot merely “‘resolve[] a domain name query that,
`
`unbeknownst to the secure domain name service, happens to be associated
`
`with a secure domain name.” See PO Resp. 16 (quoting Ex. 1040, 7).
`
`Patent Owner does not contend explicitly that, or explain how,
`
`Petitioner’s proposed construction improperly embraces the allegedly
`
`disclaimed type of a conventional DNS that “happens” to resolve a domain
`
`name query “associated with secure domain name.” See id. at 15-17. It also
`
`is not clear how that allegedly disclaimed feature‘ relates to the “recognizes”
`
`function in Patent Owner’s proposed claim construction.
`
`Claim‘ 1 recites sending a query message to “a secure domain service,”
`requesting a secure network address, and receiving “a response message
`
`from the secure domain name service containing the secure network
`
`address.” It does not recite “recogniz[ing] that the query message is
`39
`CL
`
`requesting a secure computer address.
`
`[T]he claims themselves provide
`
`substantial guidance as to the meaning of particular claim terms” and “the
`
`context in which a term is used in the asserted claim can be highly
`
`instructive.” Phillips, 415 F.3d at 1314. “The construction that stays true to
`
`the claim language and most naturally aligns with the patent’s description of
`
`

`

`lPR20 l4—0O403
`
`Patent 7,987,274 B2
`
`the invention wiil be, in the end, -the correct construction.” Phillips, 415’
`
`F .3d at 1316.
`
`Based on the context of the claim, the Specification, and the
`
`prosecution history, claim 1 does not require “recogniz[ing]” as argued by
`
`Patent Owner. As explained in the Background scctioriisupra, the
`
`Specification describes an “SDNS 313” that “contains a cross-reference
`
`database of secure domain names and corresponding secure network
`
`addresses. That is, for each secure dornainvname, SDNS 3313 stores a
`computer network address corresponding to the secure domain name.” Ex.
`
`1001, 47:15-18. This disclosure comes closest to aligning with the claim
`term, “secure domain service” (1'.ei., an SDNS as set forth in the disclosure).
`
`-Patent Owner does not point the panel to a disclosure in the Specification
`
`that clearly supports the requirement of an SDNS to “recognize that the
`
`query message is requesting a secure computer address.”
`
`Patent Owner also contends that during the ’270 reexamination, Patent
`
`Owner proposed various examples of possible “additional functionalities not
`
`available with. a traditional domain name service.” PO Resp. 17. For
`
`example, Patent Owner maintains that it argued during the reexamination
`
`that a secure domain name service “may allow an entity to register server
`
`secure domain names representing different levels of access to the secure
`
`website” and “may also support the establishment of a VPN communication
`link.” See PO Resp. l7 (citing Ex. 1001, 47:38-51; Ex. 2040, 3, 7-8).
`
`According to Patent Owner, “[t]hus a secure domain service is distinguished
`
`from a conventional domain name service.” Id. at 17.
`
`Contrary to Patent Owner’s arguments, even if the prosecution history
`
`of claims in the grandfather ’18O patent in the ’27O reexamination
`
`10
`
`

`

`lPR20l4—OO403
`
`Patent 7,987,274 B2
`
`proceeding somehow limits the claims here that Patent Owner otherwise
`
`could have moved to amend under a broadest reasonable construction, Patent
`
`Owner’s arguments were not “unambiguous,” and do not “call for the
`
`application of prosecution history disclaimer.” See PO Resp. 17-1 8. There
`
`was no “express disclaimer,” Bigio, 381 F.3d at l325, or “unambiguous
`
`disavowal[],” Grober, 686 F.3d at 1341.
`
`For example, as Petitioner points out, Patent Owner argued, among
`
`other things, as follows during the ’270 reexamination of the ’ 180 patent:
`
`To illustrate, the 780 patent explicitly states that a secure"
`domaininame service can resolve addresses for a secure
`domain name; whereas a conventional domain name service
`
`cannot resolve addressesfor a secure domain name. See, ’ 180
`Patent at col. 51, 11. 18-45 (stating “[b]ecause the secure top-
`level domain name is a non—standard domain name, a query to a
`standard domain name service (DNS) will return a message
`indicating that the universal resource loc.ator (URL) is
`unknown”) .
`.
`_
`.
`Ex. 2040, 7 (emphasis added)‘, see Pet. Reply 10 (discussing prosecution
`
`history); Pet. 10-13 ,(di'scussing prosecution history and district court
`
`litigation).
`
`Responding to Patent Owner’S Various arguments during the ’270
`
`reexamination of the ’ 180 patent, the examiner reasoned as follows:
`
`Further, Patent Owner argues that the ’ 180 patent clearly
`distinguishes the claimed “secure domain name” from a domain
`name that happens to correspond to a secure computer. Patent
`Owrier°s argument is persuasive. The Examiner agrees that the
`’ 180 patent distinguishes the claimed “secure domain name.”
`For example, the ’J 80 patent explains that a secure domain
`name is a non—standard domain name and that querying a
`convention domain name server using a secure domain name
`will result in a return message indicating that the URL is
`unknown ( ’l80 patent, column 51 lines 25-35). Similarly,
`
`11
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`IPR_2014—00403
`
`Patent 7,987,274 B2
`
`Patent Owner argues that the ’ 180 patent clearly distinguishes
`the claimed “secure domain name service” from a conventional
`
`domain name service that can resolve domain names of
`computers that are used to establish secure connections. Patent
`Owner’s argument is persuasive. The Examiner agrees that the
`’180 patent distinguishes the claimed “secure domain name
`service.” For example, the ’l80 patent explains that a secure
`domain name service can resolve addresses for a secure
`domain name whereas a conventional domain name service
`
`cannot resolve addressesfor a secure domain name (’ 180
`patent, column 51 lines 25-35).
`(Ex. 3001, 3 (’270 reexamination of the ’180 patent, Right of Appeal Notice
`
`(Dec. 30, 2010)) (emphases added, exaininer’s emphasis ornitted).6
`
`This exchange between the Patent Owner and the examiner reveals
`
`that the central reason for confirmation by the examiner in the ’270
`
`reexamination was Patent Owner’s argument that the ’ 180 patent makes
`
`clearthat a conventional DNS cannot resolveaddressesfor a secure domain
`
`name, whereas the disclosed SDNS can. Id.
`
`Petitioner contends that the declarants for Patent Owner and Petitioner
`
`essentially agree. to this key distinction. See Pet. Reply 7~»~8 (citing Ex. 1090
`
`3
`
`21:14«—22:1, 23:16-26:15,16:9—~17:17;EX. 1011 fil 15). Quoting the ’274
`
`patent, Dr. Roch Guerin, Petitioner’s declarant, testifies that the ’274 patent
`
`indicates that “SDNS 3313 contains a cross—reference database of secure
`
`domain names and corresponding secure network addresses.’ Ex. 1001,
`
`47:15-16. In other words, the SDNS 3313 differsfrom a standardname
`
`service in that it is configured to resolve secure domain names.” Ex. 1011
`
`‘ll 15 (emphasis added). After summarizing other pertinent disclosures in the
`
`’274 patent Specification (see Ex. 1011 111] 11423), Dr. Guerin testifies that
`
`6 Page number “3” in Ex. 3001 refers to the original page number supplied
`by the examiner in the Right of Appeal Notice.
`
`12
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`

`IPR20 l4—00403
`
`Patent 7,987,274 B2
`
`“a broadest reasonable interpretation of ‘secure domain name service’ would
`
`be broad enough to cover ‘a service that can resolve secure computer
`network addresses for a secure domain name for which a conventional
`
`domain name service cannot resolve addresses?” Ex. 1011 1] 24.
`
`.
`
`Dr. Fabian Monrose, Patent Owner’s declarant, testified during cross-
`
`examination that a “secure domain name service is referred to as a lookup
`
`service that recognizes that a query message is requesting a secure computer
`
`address and returns a secure computer address for the requested secure
`
`domain name.” EX. 1090, 21: l8—22. Arguing that Provino does not
`disclose an SDNS, Patent Owner relies on Dr. Monrose’s declaration
`
`testimony that the disclosed SDNS does more than provide a mere look—up
`
`function. See PO Resp. 30-32 (citing EX. 2.041 W 35—39); see also EX.
`
`-1090, 17: 18-l8:4 (Dr. Monrose°s deposition testimony: “For example,"tlie
`
`ability to initiate a virtual private network communication, the ability to
`
`-have multiple levels of access control, the ability to make decisions based on
`
`the —~ on the originator, et cetera.’’). Similar to this declaration and
`
`deposition testimony, Patent Owner lists different “additional functionalities
`
`not available with a traditional domain name service. For instance, a secure
`
`domain service may allow an entity to register server secure domain names
`
`representing different levels of access to the secure website.” See PO Resp.
`
`l7 (citing EX. 2040, 3, 7', Ex. 1001, 47:l5_37).
`
`Even if these types of “example[s]” describe possible functions of a
`
`disclosed SDNS, they do not arise to an unequivocal disclaimer or show that
`
`the “recognizes” function must be incorporated into the claimed SDNS. Dr.
`
`Monrose and Patent Owner do not offer a clear interpretation of what the
`
`“recognizes” function entails and do not point to where that term appears in
`
`13
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`

`lPR2014—00403
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`Patent 7,987,274 B2
`
`the- ”274 patent Specification. ‘Describing “some examples” of what some of
`
`the disclosed “SDNS[] .
`
`.
`
`. embodiments .
`
`.
`
`. can perform” fails to link those
`
`examples with the proffered “recognizes” furiction. See EX. 1090, 21:18-
`
`22:5. In other words, Dr. Guerin’s testimony and Petitioner’s claim
`
`construction tracks more closely to direct support in the ’274 patent
`
`Specification.
`
`During the oral hearing in this proceeding, when questioned about the
`specific added functionality the claims may require disclaimer or
`
`otherwise, Patent Owner indicated that the claims do not require a specific
`
`functionality: “Because in some instances it could be example A and in
`
`some instances it could be example B. But as long as it is recognizing that a
`query message-is requesting a secure .
`.
`. computer address .
`.
`. it can’tbe
`
`just a conventional DNS operation. It has to be more thanthat.” Tr. 672244
`
`68:4.
`
`4
`
`Therefore, the clearest thread running through the arguments,
`
`prosecution history, evidence, the ’274 patent Specification, and the claim
`language, is that “the ’ 1 80 patent explains that a secure domain name
`
`service can resolve addressesfor a secure domain name whereas a
`
`conventional domain name service cannot resolve addressesfor a secure
`
`domain name (180 patent, column 51 lines 25-35).” EX. 3001, 3 (emphasis
`
`added). Simply put, a conventional DNS does not resolve a secure address
`
`fora secure domain name, hence the name, secure domain server, and
`
`nomenclature, SDNS. C)‘. In re /1bbottDiaberes Care Inc, 696 F.3d ll42,
`
`1149-50 (Fed. Cir. 2004) (disavowal must “repeatedly, consistently, and
`
`exclusively” show the same feature).
`
`14
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`

`
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`IPR20l4—0O403
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`Patent 7,987,274 B2
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`In a similar vein, according to Patent Owner, “each of the disclosed
`
`embodiments performs more than the conventional DNS functions and
`
`supports establishing a secure communication link.” PO Resp. 30—3 1.
`
`Describing what someembodiments may do fails to explain why Petitioner’s
`
`construction, “reso1v[ing]- secure computer network addresses for a secure
`
`domain name” does not also “support[] establishing a secure communication
`
`link.” The arguments and evidence show that a “secure domain service”
`(SDNS) requires no functionality beyond Petitioner’s proposed
`7
`
`_ construction.
`
`Further alleging a Specification disclaimer, Patent Owner quotes the
`
`’274 patent as noting that “‘[t]he conventional scheme suffers from certain
`333
`LCC
`
`drawbacks,
`
`and-points to
`
`certain aspects of the-invention”’ as setting up
`
`a VPN. See PO Resp. 30 (quoting Ex. 1001, 39:4--41 (emphasis by Patent
`
`Owner), citing EX. 2041 1] 35). In that conventional scheme, the ‘Z74 patent
`
`discloses that “[o]ne conventional scheme .
`
`.
`
`. provides the DNS server with
`
`public keys of the machines that the DNS server has addresses for.” EX.
`
`'
`
`7 Patent Owner also argues that “the Board has rejected arguments that “a
`‘secure domain name service’ is a service that can resolve secure computer
`network addresses that a conventional domain name server cannot resolve.”
`
`PO Resp. 35 (citing Apple Inc. v. VimetX Inc. , Case IPR2014-00482, slip.
`op. at 9 (PTAB Sept. 3, 2014) (Paper 10); Apple Inc. v. T/imetXInc., Case
`lPR20l4-00481, slip. op. at 9 (PTAB Sept. 3, 2014) (Paper 11)). This
`argument rnischaracterizes and overstates the import of those prior decisions
`to institute. In both proceedings, we determined that “for purposes of this
`Decision, a ‘secure domain name service’ is a service that provides a secure
`computer network address for a requested secure domain name”~«—if
`anything, a slightly broader construction than the petitioner°s proposed
`construction there and Petitioner’s similar construction proposed here. See,
`e.g., Apple, Case IPR2014—O048l, Paper 11 at 9. Also, those decisions
`involved preliminary findings and claim constructions. See id.
`
`l5
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`

`IPR—2014—00403
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`Patent 7,987,274 B2
`
`1001, 39: 13-17 (emphasis added). The ’2.74 patent describes “drawbacks”
`
`pertaining to that “conventional scheme” (ie, not the DNS‘ itself and not a
`
`an SDNS): “For example, any user can perform a DNS request. .
`
`.
`
`. [and]
`
`DNS requests resolve to the same value for all users.” EX. 1001, 39:23~25
`
`(emphasis added). Although it is not clear, this disparaged “scheme” may be
`
`the basis upon which Patent Owner relies for its disclaimer argument that an
`
`SDNS cannot merely “resolve[] a domain name query” that “happens to be
`35 cc
`
`associated with a secure domain name
`
`unbeknownst to the domain name
`
`service.” See PO Resp. 16 (quoting EX. 2040, 7, but not linking directly the
`disclosed conventional public key scheme to the prosecution argument).
`
`Nevertheless, Patent Owner fails to explain how Petitioner’s construction
`
`embraces this disparaged public key scheme. Petitioner proposes that an
`
`SDNS “can resolve secure computer network address-es for a secure domain
`
`name.” Id. at 34 (emphasis added). On its face, a “secure domain name”
`
`does not “happen” to be “associated with a secure name”; rather, a secure
`
`domain name is a secure name.
`
`Moreover, the ’274 patent describes overcoming the problems
`
`associated with the public key “s'ch_erne” by doing much more than adding
`
`Patent Owner’s proposed “recognizing” fianctionality to the SDNS as
`
`construed by Petitioner: “According to certain aspects of the invention, a
`
`specialized DNS server traps DNS -requests and, if the request is from a
`
`special type of user (e. g., one for which secure communications are defined),
`
`the server does not return the traepIP address ofthe target node, but instead
`automattcalbr sets up a virtualp