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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`APPLE INC.
`Petitioner,
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`v.
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`VIRNETX, INC. AND SCIENCE APPLICATIONS INTERNATIONAL
`CORPORATION,
`Patent Owners
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`Patent No. 7,987,274
`Issued: July 26, 2011
`Filed: August 16, 2007
`Inventors: Victor Larson, et al.
`Title: METHOD FOR ESTABLISHING SECURE COMMUNICATION LINK
`BETWEEN COMPUTERS OF VIRTUAL PRIVATE NETWORK
`____________________
`
`Inter Partes Review Nod. IPR2014-00483 and IPR2014-00484
`__________________________________________________________________
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`
`Declaration of Michael Fratto Regarding
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`U.S. Patent No. 7,987,274
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`Petitioner Apple Inc. - Exhibit 1029
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`I, Michael Fratto, do hereby declare and state, that all statements made herein of
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`my own knowledge are true and that all statements made on information and belief
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`are believed to be true; and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States
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`Code.
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`Dated: March 7, 2014
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` Mike Fratto
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`Page ii
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`I.
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`II.
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`Table of Contents
`INTRODUCTION .......................................................................................... 1
`A.
`Engagement .......................................................................................... 1
`B.
`Background and Qualifications ............................................................ 1
`C.
`Compensation and Prior Testimony ..................................................... 4
`D.
`Information Considered ........................................................................ 5
`LEGAL STANDARDS FOR PATENTABILITY ......................................... 6
`A. Anticipation .......................................................................................... 7
`B.
`Obviousness .......................................................................................... 8
`III. THE ’274 PATENT ...................................................................................... 14
`A.
`Effective Filing Date of the ’274 Patent ............................................ 14
`B.
`Prosecution History of the ’274 Patent .............................................. 16
`C.
`The Person of Ordinary Skill in the Art ............................................. 16
`D. Overview of the Claims of the ’274 Patent ........................................ 17
`E.
`Description of the Background Technology Relevant to the
`’274 Patent .......................................................................................... 17
`1.
`The Open Internet .................................................................... 17
`2.
`Domain Names and the Domain Name System (DNS) ........... 19
`a.
`The DNS System ........................................................... 19
`b.
`Domain Names and URIs .............................................. 22
`c.
`Domain Name Resolution ............................................. 24
`d.
`DNS SRV Records ........................................................ 32
`Communications and Name Resolution on Windows-
`Based Networks ....................................................................... 32
`Encryption, Tunnels, and Data Security .................................. 40
`a.
`Encryption ...................................................................... 41
`b.
`Authentication ................................................................ 43
`c.
`IPsec – RFC 2401 .......................................................... 44
`d.
`Tunneling ....................................................................... 45
`VPNs ........................................................................................ 48
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`3.
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`4.
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`5.
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`D.
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`6. Multimedia Transmission over the Internet ............................. 51
`Common Design Perspectives in April 2000 ..................................... 54
`F.
`IV. GENERAL ISSUES RELATED TO MY PATENTABILITY
`ANALYSIS ................................................................................................... 56
`A.
`The Claims of the ’274 Patent I Am Addressing in this Report ........ 57
`B.
`Comparison with Patent Family Members ......................................... 59
`C.
`Interpretation of Certain Claim Terms ............................................... 62
`1.
`Virtual Private Network ........................................................... 63
`2.
`Virtual Private Network Communication Link ....................... 64
`3.
`Secure Computer Network Address ........................................ 64
`4.
`Secure Domain Name .............................................................. 64
`5.
`Secure Domain Name Service ................................................. 64
`6.
`Tunnel Packeting...................................................................... 65
`7.
`Tunneling ................................................................................. 65
`Prior Art References ........................................................................... 65
`1.
`Exhibit 1031 – U.S. Patent 6,496,867 to Beser ....................... 66
`2.
`Request for Comment (RFC) Publications .............................. 66
`PATENTABILITY ANALYSIS OF CLAIMS 1-5, 7-8, 10, 12-13, 15,
`AND 17-18 OF THE ’274 PATENT ............................................................ 68
`A. U.S. Patent No. 6,496,867 to Beser .................................................... 68
`1.
`Overview of Beser ................................................................... 68
`2.
`Overview of RFC 2401 .......................................................... 101
`3.
`Comparison of Beser to Claims 1-5, 7-8, 10, 12-13, 15,
`and 17-18 of the ’274 Patent .................................................. 112
`a.
`Claim 1 ......................................................................... 112
`b.
`Claims 2-5 .................................................................... 124
`c.
`Claim 7 ......................................................................... 126
`d.
`Claim 8 ......................................................................... 126
`e.
`Claim 10 ....................................................................... 127
`f.
`Claims 12-13 ................................................................ 128
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`V.
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`B.
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`Claim 15 ....................................................................... 129
`g.
`Claim 17 ....................................................................... 129
`h.
`Claim 18 ....................................................................... 132
`i.
`RFC 2543 – Session Initiation Protocol ........................................... 133
`1.
`Overview of RFC 2543 .......................................................... 133
`2.
`Comparison of RFC 2543 to Claims 1-5, 7-8, 10, 12-13,
`15, and 17-18 of the ’274 Patent ............................................ 165
`a.
`Claim 1 ......................................................................... 165
`b.
`Claims 2-5 .................................................................... 174
`c.
`Claim 7 ......................................................................... 175
`d.
`Claim 8 ......................................................................... 176
`e.
`Claim 10 ....................................................................... 176
`f.
`Claims 12-13 ................................................................ 177
`g.
`Claim 15 ....................................................................... 178
`h.
`Claim 17 ....................................................................... 178
`i.
`Claim 18 ....................................................................... 179
`VI. CONCLUSION ........................................................................................... 180
`VII. APPENDIX A: MATERIALS CONSIDERED BY MIKE FRATTO....... 181
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`TABLE OF APPENDICES
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`Appendix A:
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`List of Materials Considered
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`Page vi
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`I.
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`INTRODUCTION
`A. Engagement
`I have been retained by counsel for Apple Inc. as an expert witness in
`1.
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`the above-captioned proceeding. I have been asked to provide my opinion about
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`the state of the art of the technology described in U.S. Patent No. 7,987,274 (“the
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`’274 patent”) and on the patentability of claims 1-5, 7-8, 10, 12-13, 15, and 17-18
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`of the ’274 patent. The following is my written report on these topics.
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`Background and Qualifications
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`B.
`2. My Curriculum Vitae is submitted herewith as Exhibit 1004.
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`3.
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`I received a Bachelor’s of Science Degree from Syracuse University
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`in 2001 in Information Science and Technology.
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`4.
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`I began working in the field of computer science in 1987. Between
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`1987 and 1992, I was a consultant where I wrote software that would connect
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`remote offices and collect/process data for input into other programs.
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`5.
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`Between 1994 and 1997, I was a freelance editor for Network
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`Computing, where I covered remote access and telecommunications products and
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`technologies. I held this position while earning my B.S. in Information Science
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`and Technology from Syracuse University.
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`6.
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`Between June 1997 and June of 2004, I was a permanent employee of
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`Network Computing, starting as an Associate Technology Editor and rising to
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`Senior Technology Editor. In these capacities, I focused on network security
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`solutions and products, which was a rapidly evolving field at that time. I have
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`subsequently held a number of other positions with Network Computing, as well as
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`affiliated publications. For example, from July 2004 to April 2006, I served as
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`Editor of Secure Enterprise Magazine – which focused on security solutions
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`specific to enterprise systems. After April 2006, I returned to Network Computing,
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`where I served in a progression of senior positions, ultimately serving as Editor of
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`Network Computing between August 2009 and October of 2012.
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`7.
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`I am presently a Senior Analyst with Current Analysis. In this respect
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`I manage the Enterprise Networking practice within the business and technology
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`and software group. I also provide competitive analysis on trends and changes in
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`the enterprise networking markets as well as consult with network equipment
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`vendors on product messaging, marketing, and outreach.
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`8.
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`I presently serve as an adjunct faculty member of the School of
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`Information Studies at Syracuse University.
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`9.
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`I have been studying, evaluating, testing and describing networking,
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`networking security and related technologies for more than 15 years. Since well
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`before 1999, I have had an extensive background and experience in network
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`systems, software and related technologies, with a particular focus on network
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`security.
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`10.
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`I also have extensive hands-on experience with wide range of
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`networking and networking security products developed and sold in the 1993 to
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`2002 time frame. This came from my various positions with Network Computing,
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`where I reviewed, tested and described these products in a technical publication
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`devoted to this field. I also wrote articles about network infrastructure, data center,
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`and network access control items that were published by Network Computing. I
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`also am very familiar with Internet standards governing networking and security,
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`which I discuss below.
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`11. A substantial amount of my extensive experience with networking and
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`security systems used in the late 1990s came from my work in reviewing these
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`products for Network Computing. When I performed a typical review of a new
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`product, I would first define a “problem set” the product was designed to address.
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`I would interview IT administrators and executives and speak with the developers
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`of the product. I also would study the standards relevant to the product or its
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`implementation, and would evaluate the technical documentation accompanying
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`the product. I would then create a set of comparative measures to assess the ability
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`of the product to execute. I would then test the product under a variety of
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`situations designed to evaluate these comparative measures. To do this, I would
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`set up a test network, verify its operation, conduct the tests, and ensure the results
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`were accurate. I would also often compare the product to other products in the
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`same class or category.
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`12.
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`In the 1997 to 2000 time frame, I was particularly focused on remote
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`access products including modems, ISDN, and virtual private networking products,
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`technologies, and standards as well as network and host-based firewalls.
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`13.
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`I am the author of several books and publications devoted to secure
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`networking technologies. I also have taught a number of courses on systems and
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`technologies used in networking security, particularly focused on Internet security
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`solutions. These books and courses are listed on my C.V. (Ex. 1004).
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`C. Compensation and Prior Testimony
`I am being compensated at a rate of $250 per hour for my study and
`14.
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`testimony in this matter. I am also being reimbursed for reasonable and customary
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`expenses associated with my work and testimony in this investigation. My
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`compensation is not contingent on the outcome of this matter or the specifics of my
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`testimony.
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`15.
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`16.
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`I have never testified in Federal District Court.
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`I have provided declarations that were submitted in inter partes
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`reexamination proceedings based on patents owned by Patent Owner. These
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`proceedings include Control No. 95/001,682, 95/001,679, 95/001,788 and
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`95/001,789.
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`17.
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`I have provided declarations that were submitted in inter partes
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`review proceedings based on patents owned by Patent Owner. These proceedings
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`include IPR2013-00348, -00349, -00354, -00393, -00394, -00397, and -00398 filed
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`by Petitioner Apple, IPR2014-00237 and -00238 filed by Petitioner Apple, and
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`IPR2014-00171, -00172, -00172, -00174, -00175, -00176, and -00177 filed by
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`another petitioner.
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`Information Considered
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`D.
`18. My opinions are based on my years of education, research and
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`experience, as well as my investigation and study of relevant materials. In forming
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`my opinions, I have considered the materials I identify in this report and those
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`listed in Appendix A.
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`19.
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`I may rely upon these materials and/or additional materials to respond
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`to arguments raised by the Patent Owner. I may also consider additional
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`documents and information in forming any necessary opinions — including
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`documents that may not yet have been provided to me.
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`20. My analysis of the materials produced in this investigation is ongoing
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`and I will continue to review any new material as it is provided. This report
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`represents only those opinions I have formed to date. I reserve the right to revise,
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`supplement, and/or amend my opinions stated herein based on new information
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`and on my continuing analysis of the materials already provided.
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`II. LEGAL STANDARDS FOR PATENTABILITY
`In expressing my opinions and considering the subject matter of the
`21.
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`claims of the ’274 patent, I am relying upon certain basic legal principles that
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`counsel has explained to me.
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`22. First, I understand that for an invention claimed in a patent to be
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`found patentable, it must be, among other things, new and not obvious from what
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`was known before the invention was made.
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`23.
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`I understand the information that is used to evaluate whether an
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`invention is new and not obvious is generally referred to as “prior art” and
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`generally includes patents and printed publications (e.g., books, journal
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`publications, articles on websites, product manuals, etc.).
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`24.
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`I understand in this proceeding Apple has the burden of proving that
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`the ’274 patent are anticipated by or obvious from the prior art by a preponderance
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`of the evidence. I understand that “a preponderance of the evidence” is evidence
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`sufficient to show that a fact is more likely true than it is not.
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`25.
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`I understand that in this proceeding, the claims must be given their
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`broadest reasonable interpretation consistent with the specification. The claims
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`after being construed in this manner are then to be compared to the information in
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`the prior art.
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`26.
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`I understand that in this proceeding, the information that may be
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`evaluated is limited to patents and printed publications. My analysis below
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`compares the claims to patents and printed publications that are prior art to the
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`claims.
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`27.
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`I understand that there are two ways in which prior art may render a
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`patent claim unpatentable. First, the prior art can be shown to “anticipate” the
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`claim. Second, the prior art can be shown to have made the claim “obvious” to a
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`person of ordinary skill in the art. My understanding of the two legal standards is
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`set forth below.
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`A. Anticipation
`I understand that the following standards govern the determination of
`28.
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`whether a patent claim is “anticipated” by the prior art.
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`29.
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`I have applied these standards in my evaluation of whether claims 1-5,
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`7-8, 10, 12-13, 15, and 17-18 of the ’274 patent would have been anticipated by the
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`prior art.
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`30.
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`I understand that the “prior art” includes patents and printed
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`publications that existed before the earliest filing date (the “effective filing date”)
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`of the claim in the patent. I also understand that a patent will be prior art if it was
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`filed before the effective filing date of the claimed invention, while a printed
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`publication will be prior art if it was publicly available before that date.
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`31.
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`I understand that, for a patent claim to be “anticipated” by the prior
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`art, each and every requirement of the claim must be found, expressly or
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`inherently, in a single prior art reference as recited in the claim. I understand that
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`claim limitations that are not expressly described in a prior art reference may still
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`be there if they are “inherent” to the thing or process being described in the prior
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`art. For example, an indication in a prior art reference that a particular process
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`complies with a published standard would indicate that the process must inherently
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`perform certain steps or use certain data structures that are necessary to comply
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`with the published standard.
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`32.
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`I understand that it is acceptable to consider evidence other the
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`information in a particular prior art document to determine if a feature is
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`necessarily present in or inherently described by that reference.
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`B. Obviousness
`I understand that a claimed invention is not patentable if it would have
`33.
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`been obvious to a person of ordinary skill in the field of the invention at the time
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`the invention was made.
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`34.
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`I understand that the obviousness standard is defined in the patent
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`statute (35 U.S.C. § 103(a)) as follows:
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`A patent may not be obtained though the invention is not identically
`disclosed or described as set forth in section 102 of this title, if the
`differences between the subject matter sought to be patented and the
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`prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the
`invention was made.
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`35.
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`I understand that the following standards govern the determination of
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`whether a claim in a patent is obvious. I have applied these standards in my
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`evaluation of whether claims 1-5, 7-8, 10, 12-13, 15, and 17-18 of the ’274 patent
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`would have been considered obvious in April of 2000.
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`36.
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`I understand that to find a claim in a patent obvious, one must make
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`certain findings regarding the claimed invention and the prior art. Specifically, I
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`understand that the obviousness question requires consideration of four factors
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`(although not necessarily in the following order):
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`• The scope and content of the prior art;
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`• The differences between the prior art and the claims at issue;
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`• The knowledge of a person of ordinary skill in the pertinent art; and
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`• Whatever objective factors indicating obviousness or non-obviousness
`may be present in any particular case.
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`37.
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` In addition, I understand that the obviousness inquiry should not be
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`done in hindsight, but must be done using the perspective of a person of ordinary
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`skill in the relevant art as of the effective filing date of the patent claim.
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`38.
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`I understand the objective factors indicating obviousness or non-
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`obviousness may include: commercial success of products covered by the patent
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`claims; a long-felt need for the invention; failed attempts by others to make the
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`invention; copying of the invention by others in the field; unexpected results
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`achieved by the invention; praise of the invention by the infringer or others in the
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`field; the taking of licenses under the patent by others; expressions of surprise by
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`experts and those skilled in the art at the making of the invention; and the patentee
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`proceeded contrary to the accepted wisdom of the prior art.
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`39.
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`I understand the combination of familiar elements according to known
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`methods is likely to be obvious when it does no more than yield predictable results.
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`I also understand that an example of a solution in one field of endeavor may make
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`that solution obvious in another related field. I also understand that market
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`demands or design considerations may prompt variations of a prior art system or
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`process, either in the same field or a different one, and that these variations will
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`ordinarily be considered obvious variations of what has been described in the prior
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`art.
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`40.
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`I also understand that if a person of ordinary skill can implement a
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`predictable variation, that variation would have been considered obvious. I
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`understand that for similar reasons, if a technique has been used to improve one
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`device, and a person of ordinary skill in the art would recognize that it would
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`improve similar devices in the same way, using that technique to improve the other
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`device would have been obvious unless its actual application yields unexpected
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`results or challenges in implementation.
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`41.
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`I understand that the obviousness analysis need not seek out precise
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`teachings directed to the specific subject matter of the challenged claim, but
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`instead can take account of the “ordinary innovation” and experimentation that
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`does no more than yield predictable results, which are inferences and creative steps
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`that a person of ordinary skill in the art would employ.
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`42.
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`I understand that sometimes it will be necessary to look to interrelated
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`teachings of multiple patents; the effects of demands known to the design
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`community or present in the marketplace; and the background knowledge
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`possessed by a person having ordinary skill in the art. I understand that all these
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`issues may be considered to determine whether there was an apparent reason to
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`combine the known elements in the fashion claimed by the patent at issue.
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`43.
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`I understand that the obviousness analysis cannot be confined by a
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`formalistic conception of the words “teaching, suggestion, and motivation.” I
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`understand that in 2007, the Supreme Court issued its decision in KSR Int'l Co. v.
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`Teleflex, Inc. where the Court rejected the previous requirement of a “teaching,
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`suggestion, or motivation to combine” known elements of prior art for purposes of
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`an obviousness analysis as a precondition for finding obviousness. It is my
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`understanding that KSR confirms that any motivation that would have been known
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`to a person of skill in the art, including common sense, or derived from the nature
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`of the problem to be solved, is sufficient to explain why references would have
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`been combined.
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`44.
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`I understand that a person of ordinary skill attempting to solve a
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`problem will not be led only to those elements of prior art designed to solve the
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`same problem. I understand that under the KSR standard, steps suggested by
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`common sense are important and should be considered. Common sense teaches
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`that familiar items may have obvious uses beyond the particular application being
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`described in a reference, that if something can be done once it is obvious to do it
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`multiple times, and in many cases a person of ordinary skill will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle. As such, the prior art
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`considered can be directed to any need or problem known in the field of endeavor
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`in April of 2000 and can provide a reason for combining the elements of the prior
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`art in the manner claimed. In other words, the prior art does not need to be
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`directed towards solving the same problem that is addressed in the patent. Further,
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`the individual prior art references themselves need not all be directed towards
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`solving the same problem.
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`45.
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`I understand that an invention that might be considered an obvious
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`variation or modification of the prior art may be considered non-obvious if one or
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`more prior art references discourages or lead away from the line of inquiry
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`disclosed in the reference(s). A reference does not “teach away” from an invention
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`simply because the reference suggests that another embodiment of the invention is
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`better or preferred. My understanding of the doctrine of teaching away requires a
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`clear indication that the combination should not be attempted (e.g., because it
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`would not work or explicit statements saying the combination should not be made.
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`46.
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`I understand that a person of ordinary skill is also a person of ordinary
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`creativity.
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`47.
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`I further understand that in many fields, it may be that there is little
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`discussion of obvious techniques or combination, and it often may be the case that
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`market demand, rather than scientific literature or knowledge, will drive design
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`trends. When there is such a design need or market pressure to solve a problem
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`and there are a finite number of identified, predictable solutions, a person of
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`ordinary skill has good reason to pursue the known options within their technical
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`grasp. If this leads to the anticipated success, it is likely the product not of
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`innovation but of ordinary skill and common sense. In that instance the fact that a
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`combination was obvious to try might show that it was obvious. The fact that a
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`particular combination of prior art elements was “obvious to try” may indicate that
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`the combination was obvious even if no one attempted the combination. If the
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`combination was obvious to try (regardless of whether it was actually tried) or
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`leads to anticipated success, then it is likely the result of ordinary skill and
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`common sense rather than innovation.
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`III. THE ’274 PATENT
`A. Effective Filing Date of the ’274 Patent
`I understand that the ’274 patent issued from U.S. Application No.
`48.
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`11/839,987, filed August 16, 2007.
`
`49.
`
`I understand that the ’987 application is a “continuation” of U.S.
`
`Application No. 11/679,416, filed on February 27, 2007. I understand the ’416
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`application became U.S. Patent No. 8,051,181.
`
`50.
`
`I understand that the ’416 application is a “continuation” of U.S.
`
`Application No. 10/702,486, filed November 7, 2003. I understand that the ’486
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`application became U.S. Patent No. 7,188,180. I understand that the ’486
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`application is a “division” of U.S. Application No. 09/558,209, filed April 26,
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`2000, now abandoned.
`
`51.
`
`I understand that the ’209 application is a “continuation-in-part” of
`
`U.S. Application No. 09/504,783, filed February 15, 2000. I understand the ’783
`
`application became U.S. Patent No. 6,502,135. I understand that the ’783
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`application is a “continuation-in-part” of U.S. Application No. 09/429,643, filed on
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`October 29, 1999. The ’783 and ’643 applications each claim priority under 35
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`U.S.C. 119(e) to Provisional Application Nos. 60/106,261, filed October 30, 1998
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`and 60/137,704, filed June 7, 1999.
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`52.
`
`I understand that a “continuation-in-part” application is a patent
`
`application that is related to an earlier filed patent application, but which adds to,
`
`changes or deletes information relative to what was in the previous application.
`
`53.
`
`I understand that a “continuation-in-part” application may describe an
`
`invention that is not described in the earlier application, and that this may result in
`
`a patent claim being evaluated using the filing date of the continuation-in-part
`
`application, rather than the earlier related application.
`
`54.
`
`I understand that claim 1 of the ’274 patent is an independent claim. I
`
`also understand that claims 2-18 depend from claim 1.
`
`55.
`
`I understand that a dependent claim incorporates all of the
`
`requirements of the independent claim from which it depends. So, in the case of
`
`the ’274 patent, claims 2-18 cannot enjoy an effective filing date earlier than that
`
`of claim 1, from which they depend.
`
`56.
`
`I understand that during an inter partes reexamination of the ’180
`
`patent, Control No. 95/001678, VirnetX acknowledged that the priority date of the
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`’180 patent was April 26, 2000. Ex. 1023 at 232 (Further, the closeness of
`
`proximity of the alleged publication date of Aventail to the April 26, 2000 priority
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`date of the ’180 Patent rasies further doubt as to the availability of the Aventail as
`
`prior art.”). The ’180 patent was issued from a parent of the ’274 patent.
`
`57.
`
`I have therefore used April 26, 2000, as the earliest effective filing
`
`date of the ’274 patent claims in my analysis.
`
`Prosecution History of the ’274 Patent
`
`B.
`58. The application from which the ’274 patent issued was filed on
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`August 16, 2007 as Application No. 11/839,987 and listed Victor Larson, among
`
`others, as an inventor.
`
`C. The Person of Ordinary Skill in the Art
`I believe a person of ordinary skill in the art in the field of the ’274
`59.
`
`patent would be someone who had a good working knowledge of networking
`
`protocols, including those employing security techniques, as well as computer
`
`systems that support these protocols and techniques. The person would have
`
`gained this knowledge either through several years of practical working experience
`
`or through education and training, or through a combination of these. The person
`
`also would be very familiar with Internet standards related to communications and
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`security, with software development techniques, and with a variety of client-server
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`systems and technologies.
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`D. Overview of the Claims of the ’274 Patent
`60. The ’274 patent claims generally concern processes and systems for a
`
`Domain Name Service (“DNS”) or name service used to establish a virtual private
`
`network communication link between devices.
`
`E. Description of the Background Technology Relevant to the ’274
`Patent
`
`61.
`
`In April of 2000, all the technologies addressed in the ’274 patents
`
`were well known to those in the art. I will address some of the more pertinent
`
`technologies below.
`
`1.
`
`The Open Internet
`
`62. The Internet is a series of public, interconnected networks th