`
`
`
`
`
`
`
`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: November 3, 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
`
`
`
`
`
`MICROSOFT CORP. and APPLE INC.
`Petitioners
`v.
`VIRNETX INC.
`Patent Owner
`
`
`
`Case IPR2014-004041
`Patent 7,987,274
`
`
`
`
`
`Patent Owner’s Response
`
`
`
`
`
`
`
`1 Case IPR2014-00484 has been joined with this case.
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`I.
`II.
`
`Table of Contents
`Introduction ...................................................................................................... 1
`Claim Construction .......................................................................................... 3
`A.
`“VPN Communication Link” (Claims 1, 2, and 11-14 ) ....................... 4
`1.
`A “VPN Communication Link” Does Not Exist Outside
`of a Virtual Private Network ....................................................... 5
`A VPN Requires Direct Communication .................................... 9
`2.
`A VPN Requires a Network of Computers ...............................14
`3.
`“Secure Domain (Name) Service” (Claims 1, 17) ..............................16
`B.
`“Tunnel Packeting” (Claim 13) ...........................................................19
`C.
`“Client Computer” (Claim 15 ) ...........................................................20
`D.
`“Access Request Message” (Claim 1) .................................................23
`E.
`“Secure Network Address” (Claims 1, 6, 7, 8, 10, and 17) ................24
`F.
`III. Kiuchi Does Not Anticipate Claims 1-4, 7, 8, 10, 12, 15, and 17 .................25
`A.
`Kiuchi’s Disclosure .............................................................................25
`B.
`Kiuchi Does Not Disclose Each and Every Feature of
`Independent Claim 1 ...........................................................................29
`1.
`The Proceeding Should Be Terminated Because the
`Petition Is Deficient ..................................................................29
`Kiuchi Does Not Disclose the Claimed Secure Network
`Address and Second Network Device Features ........................31
`Kiuchi Does Not Disclose the Claimed “Access Request
`Message” ...................................................................................35
`a)
`Kiuchi’s HTTP/1.0 Message Is Not Sent to the
`Alleged Secure Computer Network Address .................36
`
`2.
`
`3.
`
`i
`
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`b)
`
`c)
`
`d)
`
`Kiuchi’s HTTP/1.0 Message Is Not an “Access
`Request Message” ...........................................................38
`Kiuchi’s HTTP/1.0 Message Is Not Sent Using a
`Virtual Private Network Communication Link ..............39
`(1) Network ................................................................39
`(2) Direct Communication .........................................41
`Kiuchi’s Step (3) Request for Connection Is Not
`Sent Using a Virtual Private Network
`Communication Link ......................................................42
`Kiuchi Does Not Disclose Each and Every Feature of the
`Dependent Claims ...............................................................................44
`IV. Kiuchi in View of Bhatti Does Not Render Obvious Claims 1-4, 7, 8,
`10, 12, 15, and 17 ...........................................................................................47
`Kiuchi (Alone or in Combination with Bhatti) in View of Lindblad
`Does Not Render Obvious Claim 5 ...............................................................50
`VI. Conclusion .....................................................................................................51
`
`C.
`
`V.
`
`ii
`
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`Table of Authorities
`
` Page(s)
`
`Federal Cases
`Apple Inc. v. VirnetX Inc.,
`IPR2014-00237, Paper No. 15 (May 15, 2013) .................................................. 10
`Apple Inc. v. VirnetX Inc.,
`IPR2014-00237, Paper No. 30 (Aug. 29, 2014) ................................................... 1
`Diamond v. Diehr,
`450 U.S. 175 (1981) ............................................................................................ 31
`Garmin Int’l inc. v. Cuozzo Speed Tech, LLC,
`IPR2012-00001, Paper No. 15 (Jan. 9, 2013) ..................................................... 12
`Grober v. Mako Prods., Inc.,
`686 F.3d 1335 (Fed. Cir. 2012) .......................................................................... 11
`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027, Paper No. 26 (June 11, 2013) .............................................. 3, 30
`Krippelz v. Ford Motor Co.,
`667 F.3d 1261 (Fed. Cir. 2012) .......................................................................... 11
`Microsoft Corp. v. VirnetX Inc.,
`IPR2014-00610, Paper No. 9 (Oct. 15, 2014) .............................................. 20-21
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093, Paper No. 28 (Apr. 29, 2013) .................................................. 12
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .......................................................................... 35
`ScentAir Techs., Inc. v. Prolitec, Inc.,
`IPR2013-00179, Paper No. 9 (Apr. 16, 2013) .................................................... 30
`In re Skvorecz,
`580 F.3d 1262 (Fed. Cir. 2009) ............................................................................ 3
`Tempo Lighting, Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) ...................................................................... 10, 11
`
`iii
`
`
`
`
`
`
`Table of Authorities
`(continued)
`
`Case No. IPR2014-00404
`
` Page(s)
`
`VirnetX, Inc. v. Cisco Sys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014) .............................................................. 13, 42, 47
`VirnetX Inc. v. Cisco Systems, Inc. et al.,
`Case No. 6:10-CV-417 (E.D. Tex. Dec. 7, 2011) ........................................... 9-10
`VirnetX Inc. v. Microsoft Corp.,
`Case No. 6:07-CV-80 (E.D. Tex. Jul. 30, 2009) .................................................. 9
`Xilinx, Inc. v. Intellectual Ventures I LLC,
`IPR2013-00112, Paper No. 14 (June 27, 2013) .................................................. 12
`In re Yamamoto,
`740 F.2d 1569 (Fed. Cir. 1984) ................................................................ 3, 13, 14
`ZTE Corp. & ZTE (USA) Inc. v. ContentGuard Holdings Inc.,
`IPR2013-00134, Paper No. 12 (June 19, 2013) .................................................. 12
`Federal Statutes
`35 U.S.C. § 112(d) ..................................................................................................... 8
`35 U.S.C. § 314 ........................................................................................................ 30
`35 U.S.C. § 316(e) ..................................................................................................... 1
`Federal Regulations
`37 C.F.R. § 42.108 ................................................................................................... 30
`
`
`
`iv
`
`
`
`
`
`I.
`
`
`
`Case No. IPR2014-00404
`
`Introduction
`Because the Petitioners, Microsoft and Apple, have not carried their “burden
`
`of proving . . . unpatentability by a preponderance of the evidence,” Patent Owner
`
`VirnetX Inc. requests that the Board enter judgment against Petitioners and
`
`terminate this proceeding. 35 U.S.C. § 316(e).
`
`The Board instituted inter partes review (Paper No. 13, the “Decision”) of
`
`U.S. Patent No. 7,987,274 (“the ’274 patent”) based on Microsoft’s petition in
`
`IPR2014-00404 (Paper No. 4).2 The Board also joined Apple’s petition in
`
`IPR2014-00484 (Paper No. 1 in IPR2014-00484)3 on the “grounds that are
`
`
`2 Microsoft filed with its petition a declaration by Michael Fratto (Ex. 1029)
`
`
`that discusses references the Board did not institute upon and thus is not relevant
`
`here. To the extent it is deemed relevant, his testimony should be accorded no
`
`weight at least because he is not one of ordinary skill and has displayed a bias
`
`against VirnetX’s patents. (See Apple Inc. v. VirnetX Inc., IPR2014-00237, Paper
`
`No. 30 at 1-8 (Aug. 29, 2014); Ex. 2043, Deposition of Michael Fratto in IPR2014-
`
`00237.)
`
`
`
`3 Apple filed with its petition in IPR2014-00484, a declaration by Dr. Roch
`
`Guerin (Ex. 1011 in IPR2014-00484), that it did not file in this proceeding despite
`
`an order by the Board. Even if it had, however, any contentions raised in that
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`identical to those presented and instituted in the ’404 proceeding.”4 Paper No. 11
`
`at 5 in IPR2014-00484. These grounds include: (1) anticipation of claims 1-4, 7, 8,
`
`10, 12, 15, and 17 over Kiuchi; (2) obviousness of claim 5 over Kiuchi in view of
`
`Lindblad; (3) obviousness of claims 1-4, 7, 8, 10, 12, 15, and 17 over Kiuchi in
`
`view of Bhatti; and (4) obviousness of claim 5 over Kiuchi in view of Bhatti and
`
`further in view of Lindblad. (Decision at 3.)
`
`In its Decision, the Board appears to acknowledge the deficiencies in the
`
`Petition. Specifically, the Decision relies on mappings of Kiuchi to the claims that
`
`were never proposed nor suggested by Petitioners. Even the Decision’s new
`
`mappings of Kiuchi, however, are unable to show that the claims at issue are
`
`anticipated or obvious. Accordingly, VirnetX respectfully submits this Response
`
`to the Board’s Decision and the Petition and requests this proceeding be
`
`terminated.
`
`
`declaration would fail for at least the same reasons provided in this response and
`
`also because the declaration discusses a different patent and different references.
`
`
`
`4 Microsoft’s petition in IPR2014-00404 and Apple’s petition in IPR2014-
`
`00484 are hereinafter referred to as the “Petition.” Any citations to the “Petition”
`
`refer to Microsoft’s petition in IPR2014-00404.
`
`2
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`II. Claim Construction
`The Petition identified seven terms for construction. The Decision provided
`
`constructions for three of the seven terms and for one term not identified by the
`
`parties for construction. VirnetX responds to the terms construed in the Decision
`
`and addresses two other terms, “client computer” and “secure domain (name)
`
`service,” that are material to the parties’ dispute and should be construed.
`
`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 ’274 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 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,
`
`3
`
`
`
`Case No. IPR2014-00404
`
`especially given the litigations and prosecution histories of patents in the same
`
`patent family as the ’274 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.
`
`“VPN Communication Link” (Claims 1, 2, and 11-14 )
`
`VirnetX’s Proposed
`
`Construction
`
`Microsoft’s Proposed
`
`Construction
`
`A communication path
`between computers in a
`virtual private network
`
`Any communication link A transmission path
`between two end points in between two devices that
`a virtual private network
`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
`
`The Decision preliminarily construed “VPN communication link” to mean
`
`“a transmission path between two devices 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 7.) VirnetX
`
`disagrees with this construction, but only addresses the construction to the extent it
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`materially affects the parties’ disputes.5 Specifically, the Decision also notes that a
`
`“VPN communication link” may be satisfied by “a link that merely connects to a
`
`virtual private network.” (Id. at 6.) VirnetX disagrees with the Decision’s
`
`assessment. Further, because the “VPN communication link” must be in a VPN, it
`
`must incorporate the “direct communication” and “network” aspects of the VPN
`
`that are disclosed in the ’274 patent specification. Accordingly, the Board should
`
`modify its construction to include these aspects of a “VPN communication link.”
`
`1.
`
`A “VPN Communication Link” Does Not Exist Outside of a
`Virtual Private Network
`The Decision states that a “VPN communication link” may be satisfied by “a
`
`link that merely connects to a virtual private network.” (Decision at 6.) This is
`
`premised on a misinterpretation of the ’274 specification and claims 1 and 11.
`
`5 Any disagreements with the Decision’s construction not addressed here
`
`that VirnetX discussed in its Preliminary Response, such as the lack of a
`
`requirement that the VPN communication link provide security over an insecure
`
`communication path and whether the obfuscation techniques other than encryption
`
`identified in the Board’s construction are characteristics of a VPN communication
`
`link, do not appear to be relevant to the parties’ disputes, so VirnetX does not
`
`separately address them. VirnetX similarly does not address arguments that
`
`Petitioners made, but that the Decision did not discuss or adopt.
`
`5
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`Reading the specification together with the claims discloses that a VPN
`
`communication link is a communication path between computers in a virtual
`
`private network—not simply a link that is tangential to a virtual private network.
`
`As explained in the ’274 patent, a VPN communication link does not exist
`
`outside of a virtual private network. When a secure domain name service (SDNS)
`
`receives a query for a secure network address, it “accesses VPN gatekeeper 3314
`
`for establishing a VPN communication link between software module 3309 [at the
`
`querying computer 3301] and secure server 3320.” (Ex. 1001 at 47:38-40; Ex.
`
`2041 at ¶ 15, Monrose Decl.) Then, “VPN gatekeeper 3314 provisions computer
`
`3301 and secure web server computer 3320 . . . thereby creating the VPN” between
`
`the devices. (Ex. 1001 at 47:41-44; Ex. 2041 at ¶ 15, Monrose Decl.)6 Notably,
`
`secure server 3320 “can only be accessed through a VPN communication link.”
`
`(Ex. 1001 at 47:40-41; Ex. 2041 at ¶ 15, Monrose Decl.)
`
`The VPN communication link is initiated to send an access request message
`
`between the querying computer 3301 and secure server 3320. (See Ex. 1001 at
`
`47:66-48:1, Ex. 2041 at ¶ 16, Monrose Decl.) “Further communication between
`
`computers 3301 and 3320 occurs via the VPN” through the VPN communication
`
`link. (Ex. 1001 at 48:4-6; Ex. 2041 at ¶ 16, Monrose Decl.)
`
`
`6 All emphasis is added except where otherwise noted.
`
`
`6
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`In other words, the VPN communication link and the virtual private network
`
`arise contemporaneously and exist between the same devices. (Ex. 2041 at ¶ 17,
`
`Monrose Decl.) Figure 33, depicted below, reflects this. As shown, VPN
`
`communication link 3321 traverses the unsecured public network, Internet 3302 to
`
`connect computer 3301 with secure server 3320. Thus, the VPN communication
`
`link is not simply a link that is tangential to a virtual private network.
`
`
`
`Claims 1 and 11 are consistent with the ’274 patent’s description. Claim 1
`
`recites that the access request message is sent “using a virtual private network
`
`communication link.” (Ex. 2041 at ¶ 18, Monrose Decl.)
`
`Claim 11 refers to instances in which the virtual private network
`
`communication link may need to be automatically re-initiated following the last
`
`7
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`step in claim 1. (Ex. 2041 at ¶ 19, Monrose Decl.) As the ’274 patent explains, its
`
`inventions are directed to increasing security for communication over the internet
`
`by “business travellers” and other remote users. (See Ex. 1001 at 3:7-9, 3:13; Ex.
`
`2041 at ¶ 19, Monrose Decl.) Given the nature of this type of access, the ’274
`
`patent contemplates that in some instances, a transmission path may fail or a
`
`“transmitter shut-down event” may occur. (See Ex. 1001 at 36:15-19, “FIG. 22B
`
`shows steps that can be executed to shut down transmission links where a
`
`transmitter turns off. In step 2210, a transmitter shut-down event occurs. In step
`
`2211, a test is made to determine whether at least one transmitter is still turned on,”
`
`35:39-48; Ex. 2041 at ¶ 19, Monrose Decl.) If so, “all packets are dropped until a
`
`transmitter turns on.” (Ex. 1001 at 36:19-20; Ex. 2041 at ¶ 19, Monrose Decl.)
`
`Under claim 11, once “at least one transmitter is turned on,” the virtual private
`
`network communication link may automatically initiate without repeating the steps
`
`of claim 1. (See Ex. 1001 at 36:20-23; see also id. at 39:26-44; Ex. 2041 at ¶ 19,
`
`Monrose Decl.) To instead conclude, as the Decision does, that claim 11 alters the
`
`plain meaning and scope of claim 1, would be contrary to 35 U.S.C. § 112(d)’s
`
`requirement that “[a] claim in dependent form shall be construed to incorporate by
`
`reference all the limitations of the claim to which it refers.”
`
`VirnetX’s adversaries and their experts agree that a VPN communication
`
`link refers to a link in a virtual private network. Microsoft and Apple both
`
`8
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`construe VPN communication link as “any communication link between two end
`
`points in a virtual private network.” (Pet. at 9.) Outside of the Patent Office, in
`
`district court, Microsoft proposed a similar construction requiring the link to be in
`
`a virtual private network. (Ex. 1016 at 25, Memorandum Opinion in VirnetX Inc.
`
`v. Microsoft Corp., Case No. 6:07-CV-80 (E.D. Tex. Jul. 30, 2009), a
`
`“communication link in a virtual private network.”) There, the court relied on its
`
`construction of VPN, finding it unnecessary to separately construe VPN
`
`communication link, suggesting that a VPN communication link is not separate
`
`from a VPN. (Id. at 25-26.)
`
`Thus, parties and courts have universally understood that a VPN
`
`communication link exists in the VPN.
`
`A VPN Requires Direct Communication
`2.
`The Decision does not address the portion of VirnetX’s construction
`
`requiring computers within a VPN to communicate directly. In its Preliminary
`
`Response, VirnetX explained that during reexamination of the ’135 patent,
`
`VirnetX distinguished its claims over a prior art reference by describing ordinary
`
`VPNs as requiring direct communication. (See Paper No. 9 at 13-14.) In district
`
`court, Apple and other defendants described VirnetX’s statements as a “clear
`
`mandate to the Patent Office that computers in a ‘virtual private network’
`
`communicate directly with each other, and that absent direct communication
`
`9
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`between the computers, there is no virtual private network.” (Ex. 1067 at 5,
`
`Defendants’ Responsive Claim Construction Brief in VirnetX Inc. v. Cisco
`
`Systems, Inc. et al., Case No. 6:10-CV-417 (E.D. Tex. Dec. 7, 2011), (“the ’417
`
`litigation”).) Given VirnetX’s statements, the district court found disclaimer and
`
`required the claimed VPN to include direct communication. (Ex. 1018 at 6-8,
`
`Memorandum Opinion and Order in the ’417 litigation (E.D. Tex. Apr. 25, 2012).)
`
`In a proceeding on a related patent, the Board declined to apply disclaimer,
`
`relying on Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973 (Fed. Cir. 2014), for
`
`the notion that the Board need not adopt a disclaimer. See Apple Inc. v. VirnetX
`
`Inc., IPR2014-00237, Paper No. 15 at 8 (May 15, 2013). One significant
`
`difference in Tempo Lighting, however, is that it involved reexamination where
`
`amending claims is a realistic option unlike motions to amend in inter partes
`
`review that are subject to much tighter constraints. Despite having a greater
`
`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. 742 F.3d at 978. 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
`
`10
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`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.
`
`Tempo Lighting, 742 F.3d at 978. Similarly here, VirnetX’s disclaiming comments
`
`were provided in response to the examiner’s broadening of the claim via claim
`
`construction. The only difference between the two cases is that in Tempo Lighting
`
`the PTO gave the applicant the option of rewriting the claim as opposed to
`
`effectively rewriting the claim itself.
`
`VirnetX’s disclaimer may also be applied despite the fact that the
`
`reexamination in which those statements were made is ongoing. In Tempo
`
`Lighting, the Federal Circuit endorsed a disclaimer from an ongoing proceeding.
`
`742 F.3d 973, 978 (Fed. Cir. 2014). This case is in accord with other Federal
`
`Circuit cases finding that statements in ongoing reexaminations may be used to
`
`construe claims. See Grober v. Mako Prods., Inc., 686 F.3d 1335, 1342 (Fed. Cir.
`
`2012) (finding no disclaimer due to ambiguous statements, but confirming that
`
`statements made in an ongoing, pending reexamination are relevant to claim
`
`construction if unambiguous).
`
` The ongoing nature of the reexamination
`
`proceeding is not a basis for declining to apply a disclaimer.
`
`In addition, disclaimer is especially applicable where, as here, there is no
`
`ambiguity. See Krippelz v. Ford Motor Co., 667 F.3d 1261, 1266-67 (Fed. Cir.
`
`2012) (unambiguous statements in reexamination amounted to disclaimer).
`
`11
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`Among other things, VirnetX stated that the reference Aventail does not “disclose
`
`a VPN because computers connected according
`
`to Aventail do not
`
`communicate directly with each other.” (Ex. 2036 at 7, Response to Office Action
`
`in Control No. 95/001,269 (Apr. 15, 2010); see also Ex. 1067 at 5, Defendants’
`
`Responsive Claim Construction Brief in the ’417 litigation.)
`
`Apple and other parties have all agreed that VirnetX’s statements are clear,
`
`unambiguous, and result in disclaimer. (Id. at 5-7, “VirnetX unequivocally argued
`
`that Aventail does not disclose a VPN because it does not teach direct
`
`communication between computers.”) There is no reason the Board should find
`
`any differently here. Indeed, the Board has relied on prosecution history
`
`statements in construing claims in numerous other inter partes reviews. See, e.g.,
`
`Garmin Int’l inc. v. Cuozzo Speed Tech, LLC, IPR2012-00001, Paper No. 15 at 8
`
`(Jan. 9, 2013); Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC, IPR2013-
`
`00093, Paper No. 28 at 10 (Apr. 29, 2013); ZTE Corp. & ZTE (USA) Inc. v.
`
`ContentGuard Holdings Inc., IPR2013-00134, Paper No. 12 at 16 (June 19, 2013);
`
`Xilinx, Inc. v. Intellectual Ventures I LLC, IPR2013-00112, Paper No. 14 at 6 (June
`
`27, 2013).
`
`12
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`Furthermore, the Federal Circuit noted that virtual private network and
`
`secure communication links require direct communication.7 It stated that the
`
`district court’s construction of VPN is “a network of computers which privately
`
`and directly communicate with each other by encrypting traffic on insecure paths
`
`between the computers where the communication is both secure and anonymous.”
`
`VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1317 n.1 (Fed. Cir. 2014). Based
`
`on that construction, the Federal Circuit held that a secure communication link
`
`similarly requires “a direct communication link . . . .” Id. at 1319.
`
`The Board should not dismiss the Federal Circuit’s ruling simply because it
`
`applied a different claim construction standard. As the Federal Circuit has
`
`explained, the application of the BRI standard is premised on “[a]n applicant’s
`
`ability to amend his claims to avoid cited prior art [which] distinguishes
`
`proceedings before the PTO from proceedings in federal district courts on issued
`
`patents.” In re Yamamoto, 740 F.2d 1569, 1572 (Fed. Cir. 1984). But, as
`
`discussed above, this ability is severely restricted in inter partes review
`
`proceedings, refuting the need for the broader standard in this case. (See supra
`
`
`7 VirnetX has filed a request for rehearing or rehearing en banc with respect
`
`to a different aspect of
`
`the Federal Circuit’s construction of “secure
`
`communication link.”
`
`13
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`Section II.) Considerations of judicial efficiency and judicial comity further
`
`support consideration of the Federal Circuit’s claim construction ruling. Where, as
`
`here, both a district court and the Federal Circuit have addressed a construction—
`
`and the Federal Circuit’s reasoning in Yamamoto is largely inapplicable—the
`
`Board should apply that construction.
`
`Accordingly, the Board should modify its construction to include direct
`
`communication.
`
`A VPN Requires a Network of Computers
`3.
`The Decision does not address the portion of VirnetX’s construction of VPN
`
`(and thus VPN communication link) requiring a “network of computers.” Instead,
`
`the Decision concludes that a virtual private network communication link may be
`
`satisfied by nothing more than a “path between two devices.” (Decision at 7.) The
`
`Decision’s construction eliminates the “network” from a virtual private network
`
`and a virtual private network communication link. (Ex. 2041 at ¶ 20, Monrose
`
`Decl.)
`
`Consistent with the plain meaning of a VPN communication link, the link
`
`must exist in a VPN and therefore must be between computers in a network. (Ex.
`
`2041 at ¶ 21, Monrose Decl.) In describing a VPN, the ’274 patent refers to the
`
`“FreeS/WAN” project, which has a glossary of terms. (Ex. 1001 at 39:22 and
`
`bibliographic data showing references cited.) The FreeS/WAN glossary defines a
`
`14
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`VPN as “a network which can safely be used as if it were private, even though
`
`some of its communication uses insecure connections. All traffic on those
`
`connections is encrypted.” (Ex. 2025 at 24, Glossary for the Linux FreeS/WAN
`
`Project.) According to this glossary, a VPN includes at least the requirement of a
`
`“network of computers.” (Ex. 2041 at ¶ 21, Monrose Decl.)
`
`The specification further describes a VPN as including multiple “nodes.”
`
`(See, e.g., Ex. 1001 at 16:59-63, referring to “each node in the network” and
`
`“vastly increasing the number of distinctly addressable nodes,” 21:36, “nodes on
`
`the network”; see also id. 19:17-19, 24:27.) More specifically, the network allows
`
`“[e]ach node . . . to communicate with other nodes in the network.” (Ex. 1001 at
`
`16:63-65; Ex. 2041 at ¶ 22, Monrose Decl.) So a device within a VPN is able to
`
`communicate with the other devices within that same VPN. (Ex. 2041 at ¶ 22,
`
`Monrose Decl.) In addition, the specification distinguishes point-to-point queries
`
`from those carried on a VPN communication link, stating that they occur “without
`
`using an administrative VPN communication link.” (See, e.g., Ex. 1011 at 47:53-
`
`54, 47:57-60; Ex. 2041 at ¶ 22, Monrose Decl.)
`
`For at least these reasons, the Board should modify its construction to
`
`require a VPN communication link to be within a VPN and include the “direct
`
`communication” and “network” characteristics disclosed in the ’274 patent.
`
`15
`
`
`
`B.
`
`“Secure Domain (Name) Service” (Claims 1, 17)
`
`Case No. IPR20 14-00404
`
`VirnetX’s Proposed
`Construction
`
`Petitioners’ Proposed
`Construction
`
`Board’s Construction
`
`domain name
`
`A lookup service that
`recognizes that a query
`message is requesting a
`secure computer address,
`and returns a secure
`
`A service that can resolve No construction
`secure computer network
`addresses for a secure
`domain name for which a
`conventional domain
`
`computer network address name service cannot
`for a requested secure
`resolve addresses
`
`The Decision finds that the “parties do not disagree materially about” the
`
`construction for “secure domain (name) service” (“SDNS”), and concludes that
`
`“[i]t is not necessary to construe explicitly” the term “secure domain (name)
`
`service.” O)ecision at 9.) VimetX respectfully disagrees.
`
`Microsoft’s proposed construction, for example, incorrectly does not require
`
`“recogniz[ing] that a query message is requesting a secure computer address.”
`
`(Pet. at 12-14; see also Paper No. 9 at 25-27.) This is a material issue. As
`
`discussed below, the primary prior art reference in this proceeding, Kiuchi, fails to
`
`disclose a “secure domain (name) service,” as claimed, at least in part because it
`
`does not disclose any device that recognizes that a query message is requesting a
`
`secure computer network address.
`
`To the contrary, VimetX has disclaimed secure domain services that do not
`
`perform this recognition. During the now-completed inter partes reexamination of
`
`16
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`USPN 7,188,180 (“the ’180 patent”), the grandparent of the ’274 patent, VirnetX
`
`unambiguously stated:
`
`A secure domain name service is not a domain name
`service
`that resolves a domain name query
`that,
`unbeknownst
`to
`the secure domain name service,
`happens to be associated with a secure domain name. A
`secure domain name service of the ’180 patent, instead,
`recognizes that a query message is requesting a secure
`computer network address and performs its services
`accordingly.
`
`(Ex. 2040 at 7, Response to Office Action in Control No. 95/001,270 (Apr. 19,
`
`2010); see also id. at 8, “the secure domain name service . . . is different from a
`
`conventional domain name service,” 11; Ex. 1001 at 47:15-51.) A district court
`
`later relied on VirnetX’s statements to find that a secure domain name service
`
`“recognizes that a query message is requesting a secure computer address, and
`
`returns a secure computer network address for a requested secure domain name.”
`
`(Ex. 1018 at 2, 17-18, Memorandum Opinion and Order in the ’417 litigation (E.D.
`
`Tex. April 25, 2012).)
`
`In the reexamination, VirnetX also explained that “a secure domain name
`
`service [provides] additional functionalities not available with a traditional domain
`
`name service. (Ex. 2040 at 7, Response to Office Action in Control No.
`
`95/001,270 (Apr. 19, 2010); see also Ex. 1001. at 47:15-37.) For instance, a secure
`
`17
`
`
`
`
`
`
`
`Case No. IPR2014-00404
`
`domain service may allow an enti