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`Paper No. 1
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION INTERNATIONAL
`CORPORATION,
`Patent Owner
`
`Patent No. 7,987,274
`Issued: July 26, 2011
`Filed: February 27, 2007
`Inventors: Victor Larson, et al.
`Title: METHOD FOR ESTABLISHING SECURE COMMUNICATION LINK
`BETWEEN COMPUTERS OF VIRTUAL PRIVATE NETWORK
`____________________
`
`Inter Partes Review No. IPR2014-00483
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW ............................................................................ 1
`A.
`Certification the ’274 Patent May Be Contested by Petitioner ............ 1
`B.
`Fee for Inter Partes Review (§ 42.15(a)) .............................................. 1
`C. Mandatory Notices (37 CFR § 42.8(b)) ............................................... 1
`1.
`Real Party in Interest (§ 42.8(b)(1)) ........................................... 1
`2.
`Related Matters (§ 42.8(b)(2)) ................................................... 1
`3.
`Designation of Lead and Backup Counsel ................................. 2
`4.
`Service Information (§ 42.8(b)(4)) ............................................ 2
`Proof of Service (§§ 42.6(e) and 42.105(a)) ........................................ 2
`D.
`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§ 42.104(B)) .................................................................................................. 3
`III. RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT ......................................................................................................... 3
`A.
`Effective Filing Date and Prosecution History of the ’274 patent ....... 3
`B.
`Person of Ordinary Skill in the Art ...................................................... 5
`C.
`Construction of Terms Used in the Claims .......................................... 5
`2.
`“Secure Network Address” ...................................................... 10
`4.
`“Secure Domain (Name) Service” ........................................... 13
`5.
`“[X], [Y], [Y], Or Any Combination Thereof” ........................ 14
`6.
`“Tunnel Packeting” .................................................................. 15
`7.
`“Tunneling” .............................................................................. 16
`IV. PRECISE REASONS FOR RELIEF REQUESTED ................................... 17
`A.
`[GROUND 1] – Provino Anticipates Claims 1, 7, 8, 10, 12, 13,
`15, and 17 ........................................................................................... 17
`[GROUND 2] – Provino in View of Kosiur Renders Claims 2-5
`Obvious............................................................................................... 34
`[GROUND 3] – Provino in view of Xu Renders Claim 18
`Obvious............................................................................................... 38
`
`B.
`
`C.
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`i
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
`
`D.
`
`[GROUND 4] – RFC 2543 Anticipates Claims 1-5, 7-8, 10, 12-
`13, 15, and 17-18 of the 274 Patent ................................................... 40
`1.
`RFC 2543 Anticipates Claims 1 .............................................. 40
`2.
`RFC 2543 Anticipates Claims 2-5 ........................................... 45
`3.
`RFC 2543 Anticipates Claim 7-8 ............................................. 46
`4.
`RFC 2543 Anticipates Claim 10 .............................................. 47
`5.
`RFC 2543 Anticipates Claims 12-13 ....................................... 47
`6.
`RFC 2543 Anticipates Claim 15 .............................................. 48
`7.
`RFC 2543 Anticipates Claim 17 .............................................. 48
`8.
`RFC 2543 Anticipates Claim 18 .............................................. 49
`[GROUND 5] RFC 2543 In View of RFC 2543, RFC 1889,
`RFC 2327, and RFC 2401 Renders Obvious Claims 1-5, 7-8,
`10, 12-13, 15, and 17-18 .................................................................... 50
`[GROUND 6] RFC 2543 In View of SIP Mobility Renders
`Claim 18 Obvious ............................................................................... 51
`CONCLUSION ............................................................................................. 52
`
`E.
`
`F.
`
`V.
`
`Attachment A. Proof of Service of the Petition
`Attachment B. List of Evidence and Exhibits Relied Upon in Petition
`
`
`
`
`ii
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
`
`I.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`A. Certification the ’274 Patent May Be Contested by Petitioner
`Petitioner certifies that U.S. Patent No. 7,987,274 (the ’274 patent) (Ex.
`
`1027) is available for inter partes review. Petitioner certifies that it is not barred or
`
`estopped from requesting inter partes review of the claims of the ’274 patent on
`
`the grounds identified in this Petition. Neither Petitioner, nor any party in privity
`
`with Petitioner, has filed a civil action challenging the validity of any claim of the
`
`’274 patent. The ’274 patent has not been the subject of a prior inter partes review
`
`by Petitioner or a privy of Petitioner. Petitioner also certifies that it has not been
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`served with a complaint alleging infringement of the ’274 patent.
`
`Fee for Inter Partes Review (§ 42.15(a))
`
`B.
`The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)
`
`to Deposit Account No. 50-1597.
`
`C. Mandatory Notices (37 CFR § 42.8(b))
`Real Party in Interest (§ 42.8(b)(1))
`1.
`The real party of interest of this petition pursuant to § 42.8(b)(1) is Apple
`
`Inc. (“Apple”) located at One Infinite Loop, Cupertino, CA 95014.
`
`2.
`The ’274 patent is the subject of at least two other IPR proceedings,
`
`Related Matters (§ 42.8(b)(2))
`
`IPR2014-00403 and IPR2014-00404, and Grounds (i) through (iii) below are
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`1
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`substantially similar to the grounds presented in IPR2014-00403.
`
`Apple is aware of two terminal disclaimers filed during original prosecution
`
`of the ’274 patent. The first terminal disclaimer was filed on January 8, 2010, Ex.
`
`1028 at 284, with regard to U.S. Patent No. 7,188,180, see Ex. 1001, which is the
`
`subject of IPR Nos. 2014-0000481 and -00482, filed concurrently herewith. The
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`second terminal disclaimer was filed on January 10, 2011 with regard to U.S.
`
`Application No. 11/679,416, Ex. 1028 at 634, which has since issued as U.S.
`
`Patent No. 8,051,181, Ex. 1025, and which is the subject of IPR Nos. 2014-00485
`
`and-00486, filed concurrently herewith.
`
`Apple is aware that the ’274 patent has been asserted against another party in
`
`VirnetX Inc. et al. v. Microsoft Corp., Docket No. 6:13-cv-351 (E.D. Tex).
`
`3.
`
`Designation of Lead and Backup Counsel
`
`Lead Counsel
`Jeffrey P. Kushan
`Reg. No. 43,401
`jkushan@sidley.com
`(202) 736-8914
`
`Backup Lead Counsel
`Joseph A. Micallef
`Reg. No. 39,772
`jmicallef@sidley.com
`(202) 736-8492
`Service Information (§ 42.8(b)(4))
`
`4.
`Service on Petitioner may be made by e-mail, mail or hand delivery to:
`
`Sidley Austin LLP, 1501 K Street, N.W., Washington, D.C. 20005. The fax
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`number for lead and backup counsel is (202) 736-8711.
`
`Proof of Service (§§ 42.6(e) and 42.105(a))
`D.
`Proof of service of this petition is provided in Attachment A.
`
`2
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
`
`II.
`
`Identification of Claims Being Challenged (§ 42.104(b))
`Claims 1-5, 7, 8, 10, 12, 13, 15, and 17-18 of the ’274 patent are
`
`unpatentable as being anticipated under 35 U.S.C. § 102(a), (b) & (e), and/or for
`
`being obvious over the prior art under 35 U.S.C. § 103. Specifically:
`
`(i)
`
`Claims 1, 7, 8, 10, 12, 13, 15, and 17 are anticipated under § 102(e)
`by to Provino (Ex. 1003).
`
`(ii) Claims 2-5 are obvious under § 103 based on Provino (Ex. 1003) in
`view of Kosiur (Ex. 1006)
`
`(iii) Claim 18 is obvious under § 103 based on Provino (Ex. 1003) in view
`of Xu (Ex. 1007)
`
`(iv) Claims 1-5, 7, 8, 10, 12, 13, 15, and 17-18 are anticipated under
`§ 102(b) by RFC 2543 (Ex. 1033);
`
`(v) Claims 1-5, 7, 8, 10, 12, 13, 15, and 17-18 are obvious under § 103
`based on RFC 2543 (Ex. 1033) in view of RFC 1889 (Ex. 1034), RFC
`2327 (Ex. 1035), and RFC 2401 (Ex. 1032).
`
`(vi) Claim 18 is obvious under § 103 based on RFC 2543 (Ex. 1033) in
`view of Mobility Support Using SIP (Ex. 1075).
`
`Petitioner’s proposed construction of the claims, the evidence relied upon, and the
`
`precise reasons why the claims are unpatentable are provided in § IV, below. The
`
`evidence relied upon in support of this petition is listed in Attachment B.
`
`III. Relevant Information Concerning the Contested Patent
`A. Effective Filing Date and Prosecution History of the ’274 patent
`The ’274 patent issued from a string of applications dating back to an
`
`original application filed on October 30, 1998. However, the effective filing date
`
`for the embodiments recited by claims 1-5, 7, 8, 10, 12, 13, 15, and 17 of the ’274
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`patent is no earlier than April 26, 2000. This is consistent with Patent Owner’s
`
`position taken during an inter partes reexamination of the ’180 patent, where it
`
`acknowledged that the priority date of the ’180 patent was April 26, 2000. Ex.
`
`1023 at 232. The effective filing date for the embodiment recited by claim 18 of
`
`the ’274 patent is no earlier than August 16, 2007. Claim 18 finds no support in
`
`any of the applications to which the ’274 patent claims priority, as no application
`
`uses the terms “mobile device” or “cellular network.” Therefore, to the extent that
`
`it is even valid under 35 U.S.C. §112, claim 18 should not be afforded a priority
`
`date any earlier than the filing of the ’274 patent, which is August 16, 2007.
`
`Provino is prior art under 35 U.S.C § 102(e) with regard to claims 1-5, 7, 8,
`
`10, 12, 13, 15, and 17 and under 35 U.S.C § 102(b) with regard to claim 18, as it
`
`was filed on May 29, 1998, and issued on April 29, 2003. Kosiur is prior art under
`
`35 U.S.C § 102(b), as it was published at the latest on September 1, 1998. Kosiur
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`was cited during the original prosecution of the ’274 patent in one of the eleven
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`IDSs filed by VirnetX, which together cited hundreds of references. Xu qualifies
`
`as prior art under 35 U.S.C. § 102(b) and (e) with regard to claim 18, which is the
`
`claim against which Xu is being applied. Specifically, Xu was filed on May 29,
`
`1998, and issued on April 29, 2003. Xu also qualifies as prior art under 35 U.S.C §
`
`102(e), because it was filed before any of the applications to which the ’274 patent
`
`claims priority. RFC 2543 is prior art under 35 U.S.C § 102(b) as it was published
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`in March 1999. RFCs 1889 and 2327 are prior art under 35 U.S.C § 102(b) as they
`
`were published in January 1996 and April 1998, respectively. RFC 2401 is prior
`
`art under 35 U.S.C § 102(b) as it was published in November 1998.
`
`Person of Ordinary Skill in the Art
`
`B.
`A person of ordinary skill in the art in the field of the ’274 patent would
`
`have been someone with 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 also would be very familiar
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`with Internet standards related to communications and security, and with a variety
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`of client-server systems and technologies. The person would have gained this
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`knowledge either through education and training, several years of practical
`
`working experience, or through a combination of these. Ex. 1029 ¶ 59.
`
`C. Construction of Terms Used in the Claims
`In this proceeding, claims must be given their broadest reasonable
`
`interpretation in light of the specification. 37 CFR § 42.100(b). The broadest
`
`reasonable interpretation should take account of Patent Owner’s contentions as to
`
`what the claims literally encompass and constructions Patent Owner has advanced
`
`in litigation. The ’274 patent shares a common disclosure and uses several of the
`
`same terms as the ’697, ’135, ’151, ’504 and ’211 patents, in respect of which
`
`Patent Owner has previously advanced constructions during litigation. Also, if
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`Patent Owner contends terms in the claims should be read as having a special
`
`meaning, those contentions should be disregarded unless Patent Owner also
`
`amends the claims compliant with 35 U.S.C. § 112 to make them expressly
`
`correspond to those contentions. See 77 Fed. Reg. 48764 at II.B.6 (August 14,
`
`2012); cf. In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012). In the
`
`constructions below, Petitioner identifies representative subject matter within the
`
`scope of the claims, read with their broadest reasonable interpretation. Petitioner
`
`expressly reserves its right to advance different constructions in district court
`
`litigation, which employs a different claim construction standard.
`
`Accordingly, for purposes of this proceeding only, Apple submits
`
`constructions for the following terms. All remaining terms should be given their
`
`plain meaning. Under the law applicable to claim construction in IPR proceedings,
`
`the following claim terms should be construed applying the broadest reasonable
`
`interpretation to be broad enough to be covered by the corresponding definition:
`
`Claim Term
`
`Definition Encompassed by Broadest
`Reasonable Interpretation
`“virtual private network” a network of computers that privately communicate
`with each other by encrypting traffic on insecure
`communication paths between the computers
`any communication link between two end points in
`a virtual private network
`
`“virtual private network
`communication link”
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`“secure network address” a network address that requires authorization for
`access and is associated with a computer configured
`to be accessed through a virtual private network
`
`“secure domain name”
`
`“secure domain (name)
`service”
`
`“[x], [y], [z], or any
`combination thereof”
`
`“tunnel packeting”
`
`a non-standard domain name that corresponds to a
`secure computer network address and cannot be
`resolved by a conventional domain name service
`(DNS)
`a service that can resolve secure computer network
`addresses for a secure domain name for which a
`conventional domain name service cannot resolve
`addresses
`any one of the elements [x], [y], or [z] or any
`combination of the elements [x], [y], or [z].
`
`encapsulating a first packet of a first protocol in a
`second packet of a second protocol
`
`“tunneling”
`
`encapsulating a payload of a first protocol in a
`second protocol
`
`
`
`The Federal Circuit has held that “the 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.” Microsoft Corp. v. Multi-Tech
`
`Systems, Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004). As described above, the ’274
`
`patent purports to be a continuation of a continuation of the ’180 patent, and both
`
`stem from U.S. App. No. 09/558,209. Therefore, the following analysis includes
`
`reference to the ’180 patent and its prosecution history, as well as a court’s analysis
`
`of these with regard to the same or similar terms.
`
`1.
`
` “Virtual Private Network” and “Virtual Private Network
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`Communication Link”
`
`The ’274 patent does not provide an explicit definition for “virtual private
`
`network.” However, the specification of the parent ‘180 patent states, “[i]f the user
`
`is not authorized to access the secure site, then a ‘host unknown’ message is
`
`returned (step 2705). If the user has sufficient security privileges, then in step
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`2706 a secure VPN is established between the user’s computer and the secure
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`target site.” Ex 1027 at 39:21-25.1 This excerpt shows how a “virtual private
`
`network” establishes a secure connection between nodes where security may not
`
`otherwise exist. Ex. 1016 at 5.
`
`Similarly, the ’274 patent does not provide an explicit definition for
`
`“communication link.” However, the specification refers to “software module
`
`3309 access[ing] secure server 3320 through VPN communication link 3321.” Ex.
`
`1027 at 52:55-56. In FIG. 33, the communication link 3321 is illustrated as only
`
`the portion of the path between computer 3301 and server 3320 that is over
`
`network 3302. In the currently pending Inter Partes Reexamination No.
`
`95/001,792 (“the ’792 Reexamination”), which involves the parent ‘180 patent,
`
`
`1 The description of FIGS. 26-28, which was originally included in the parent ’180
`
`patent, was missing from the filed specification of the ’274 patent, even though the
`
`’274 patent purports to be a continuation of a continuation of the ’180 patent.
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`VirnetX has not proposed a specific definition for a virtual private network or a
`
`virtual private network communication link. Instead, VirnetX simply argued that
`
`messages sent before a communication link has been established cannot be sent
`
`using that same communication link. Ex. 1024 at 314-316. Similarly, the
`
`Examiner did not provide an explicit definition, though the Examiner asserted that
`
`“the claim term ‘private’ modifies the claim term ‘network’ and as such, [a
`
`reference] must teach the ‘privacy’ of the ‘network’ and not just the privacy of the
`
`‘communication link’ to anticipate the claims.” Ex.1024 at 225. In VirnetX Inc. v.
`
`Microsoft Corp., Docket No. 6:07CV80 (the 2007 VirnetX litigation), which
`
`involved the parent ‘180 patent, VirnetX contended that “virtual private network”
`
`means “a network of computers capable of privately communicating with each
`
`other by encrypting traffic on insecure communication paths between the
`
`computers, and which is capable of expanding to include additional computers and
`
`communication paths.” Ex. 1016 at 4. However, the Court more broadly
`
`construed “virtual private network” to mean “a network of computers which
`
`privately communicate with each other by encrypting traffic on insecure
`
`communication paths between the computers.” Id. The Court clarified that “[t]he
`
`Court’s construction does not limit a ‘virtual private network’ to any particular
`
`number of computers or communication paths. Thus, VirnetX’s proposed
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`language [regarding expansion to include additional computers] is superfluous.”
`
`Ex. 1016 at n.3.
`
`In light of the parent ’180 patent’s specification, the ’792 reexamination, and
`
`the Court’s explanation of why it rejected VirnetX’s proposed construction, Apple
`
`submits that the broadest reasonable interpretation of the term “virtual private
`
`network” should at least be as broad as the Court’s construction from the 2007
`
`VirnetX litigation: “a network of computers that privately communicate with
`
`each other by encrypting traffic on insecure communication paths between the
`
`computers.” The same Court determined that the term “communication link,”
`
`while not requiring specific construction, should not be limited to “the entire
`
`communication path between computers in a virtual private network.” Ex. 1016 at
`
`26. Thus, Apple submits that the broadest reasonable interpretation of the term
`
`“virtual private network communication link” should be broad enough to
`
`encompass “any communication link between two end points in a virtual private
`
`network.” These constructions are not inconsistent with the ’274 patent’s
`
`specification, as well as the ’792 reexamination and the 2007 VirnetX litigation.
`
`Ex. 1011 at ¶¶ 19-21.
`
`2.
`The ’274 patent does not provide an explicit definition for “secure network
`
`“Secure Network Address”
`
`address.” The specification simply states that “SDNS 3313 stores a computer
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`network address corresponding to the secure domain name.” Ex. 1027 at 47:17-19.
`
`In a reexamination of the parent ’180 patent, VirnetX suggested that a computer
`
`having a “secure network address” requires authorization for access or
`
`communication. Ex. 1023 at 230. This was preceded, in the 2007 VirnetX
`
`litigation, by VirnetX suggesting that “secure computer network address” means “a
`
`network address associated with a computer capable of virtual private network
`
`communications.” Ex. 1016 at 28. With no clear definition presented by the ’274
`
`patent specification, Apple submits that the broadest reasonable interpretation (for
`
`this proceeding) of the term “secure computer network address” should encompass
`
`the features referenced by VirnetX in each proceeding. As such, Apple submits
`
`that the broadest reasonable interpretation of “secure network address” should be
`
`broad enough to encompass “a network address that requires authorization for
`
`access and is associated with a computer configured to support virtual private
`
`network communications,” as this is not inconsistent with the ’274 patent’s
`
`specification and the scope that VirnetX has advanced during both reexamination
`
`and litigation involving the parent ’180 patent. Ex. 1011 at ¶ 22.
`
`“Secure Domain Name”
`
`3.
`The ’274 patent describes that a “secure domain name” is a domain name
`
`that corresponds to a secure computer 3320. Ex. 1027 at 47:48-51. The ’274
`
`patent describes that, “[b]ecause the secure top-level domain name is a non-
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`standard domain name, a query to a standard domain name service (DNS) will
`
`return a message indicating that the universal resource locator (URL) is unknown.”
`
`Ex. 1027 at 46:41-44.
`
`In Inter Partes Reexamination No. 95/001,270 (“‘270 Reexamination”),
`
`which involved the parent ’180 patent, VirnetX asserted that a “secure domain
`
`name” is a name that “cannot be resolved by a conventional domain name service.”
`
`Ex. 1023 at 230. Accepting VirnetX’s arguments, the Examiner in the ’270
`
`Reexamination asserted that “a secure domain name is a nonstandard 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.” Ex. 1023 at
`
`119.
`
`Accordingly, Apple submits that the broadest reasonable interpretation of
`
`the term “secure domain name” should be broad enough to encompass “a non-
`
`standard domain name that corresponds to a secure computer network address
`
`and cannot be resolved by a conventional DNS,” as this is not inconsistent with
`
`the ’274 patent’s specification and the scope that VirnetX has advanced during
`
`both reexamination and litigation. Ex. 1011 at ¶ 23. In fact, this interpretation is
`
`identical to the construction to which VirnetX agreed in the VirnetX Inc. v. Cisco
`
`Systems, Inc. litigation numbered 6:10-CV-417, which involved the parent ’180
`
`patent. Ex. 1017 at 19-20.
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`4.
`The ’274 patent describes that, “for each secure domain name, SDNS 3313
`
`“Secure Domain (Name) Service”
`
`stores a computer network address corresponding to the secure domain name.” Ex.
`
`1027 at 47:17-19. Accordingly, “[a]n entity can register a secure domain name in
`
`SDNS 3313 so that a user who desires a secure communication link to the website
`
`of the entity can automatically obtain the secure computer network address for the
`
`secure website.” Ex. 1027 at 47:19-22.
`
`Claim 1 of the ’274 patent uses both of the terms “a secure domain service”
`
`and “the secure domain name service” to apparently refer to the same limitation.
`
`In particular, claim 1 recites “sending a query message . . . to a secure domain
`
`service” and “receiving . . . a response message from the secure domain name
`
`service.” Moreover, the term “secure domain service” is not used anywhere in the
`
`’274 patent outside of the claims.
`
`In the ’270 Reexamination that involved the parent ’180 patent, VirnetX
`
`argued that the claim term “secure domain name service” should be understood to
`
`refer to something “different from a conventional domain name service.” Ex. 1023
`
`at 232. In making this argument, VirnetX noted that “the ‘180 Patent explicitly
`
`states that a secure domain name service can resolve addresses for a secure domain
`
`name; whereas, a conventional domain name service cannot resolve addresses for a
`
`secure domain name.” Id. at 7. The Examiner in the ’270 Reexamination agreed
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`with VirnetX, finding that “the ‘180 patent explains that a secure domain name
`
`service can resolve addresses for a secure domain name whereas a conventional
`
`domain name service cannot resolve addresses for a secure domain name.” Ex.
`
`1023 at 119.
`
`In the 2007 VirnetX litigation that involved the parent ‘180 patent, VirnetX
`
`asserted that a “secure domain name service” is “a service that receives requests
`
`for secure computer network addresses corresponding to secure domain names, and
`
`is capable of providing trustworthy responses.” Ex 1016 at 31. The Court adopted
`
`a similar construction, construing a “secure domain name service” as “a lookup
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`service that returns a secure network address for a requested secure domain name.”
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`Id.
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`Apple submits that the broadest reasonable interpretation of the term “secure
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`domain name service” in the patent should be broad enough to encompass “a
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`service that can resolve secure computer network addresses for a secure domain
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`name for which a conventional domain name service cannot resolve addresses,”
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`as this is not inconsistent with the ’274 patent’s specification and the scope that
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`VirnetX has advanced during both reexamination and litigation that involved the
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`parent ’180 patent. Ex. 1011 at ¶ 24.
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`5.
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`“[X], [Y], [Y], Or Any Combination Thereof”
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`Claims 3-5 each include a list of elements that takes the form of “[x], [y], [z],
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`or any combination thereof.” In particular, claim 3 recites that “the plurality of
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`services comprises a plurality of communication protocols, a plurality of
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`application programs, multiple sessions, or any combination thereof.” Claim 4
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`recites that “the plurality of application programs comprises video conferencing, e-
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`mail, a word processing program, telephony or any combination thereof.” Claim 5
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`recites that “the plurality of services comprises audio, video, or any combination
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`thereof.”
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`The plain meaning of “or” is disjunctive. See Schumer v. Laboratory
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`Computer Systems, Inc., 308 F.3d 1304, 1311 (Fed. Cir. 2002) (citing WEBSTER'S
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`THIRD NEW INTERNATIONAL DICTIONARY 1585 (1967)) (stating that “or”
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`is “used as a function word to indicate . . . an alternative between different or unlike
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`things, states, or actions”). Nothing in the specification of the ’274 patent suggests
`
`that the inventors intended a different meaning of the word “or.” Therefore, Apple
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`submits that the broadest reasonable interpretation of the form “[x], [y], [z], or any
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`combination thereof” should be broad enough to encompass “any one of the
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`elements [x], [y], or [z] or any combination of the elements [x], [y], or [z].”
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`6.
`Though recited in dependent claim 13, the term “tunnel packeting” does not
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`“Tunnel Packeting”
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`appear anywhere in the specification of the ’274 patent. Nor is the term “tunnel
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`packeting” a term of art. Ex. 1011 at ¶ 25. Though this term appears to lack the
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`necessary support under 35 U.S.C. § 112, Apple proposes a construction of this
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`term purely for rational analysis of a prior art rejection of claim 13. In this light, it
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`is noted that the term “tunnel packeting” uses the term tunnel. The ’274 patent
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`describes that “[t]he client-side proxy application program tunnels the
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`unencrypted, unprotected communication packets through a new protocol.” Ex.
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`1027 at 49:31-34. Based on this description, tunneling in the context of the ’274
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`patent involves encapsulating an item of one protocol in an item of another
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`protocol. See Ex. 1011 at ¶ 25. Accordingly, Apple submits that the broadest
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`reasonable interpretation of the term “tunnel packeting” should be broad enough
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`to encompass “encapsulating a first packet of a first protocol in a second packet
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`of a second protocol.” Id.
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`7.
`The ’274 patent describes that “[t]he client-side proxy application program
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`“Tunneling”
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`tunnels the unencrypted, unprotected communication packets through a new
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`protocol, thereby protecting the communications from a denial of service at the
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`server side.” Ex. 1027 at 49:31-34. This is an example of a tunnel implemented at
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`the network layer, since it is encapsulating individual packets. However, at the
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`time of the ’274 patent, it was well known that tunnels could also be implemented
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`at other levels, such as the application level (e.g., an HTTP tunnel). Ex. 1011 at
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`¶ 26. Accordingly, Apple submits that the broadest reasonable interpretation of the
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`term “tunneling” should be broad enough to encompass “encapsulating a payload
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`of a first protocol in a second protocol,” as this is not inconsistent with the ’274
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`patent’s specification. See id. This interpretation differentiates the term
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`“tunneling” recited in dependent claim 12 from the different term “tunnel
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`packeting” recited in dependent claim 13, which, as described above, is a tunnel at
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`the network layer.
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`While the broadest reasonable interpretations may encompass more than the
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`features set forth in the constructions above, Apple submits that the broadest
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`reasonable interpretations of the terms “secure domain name,” “secure domain
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`name service,” “secure computer network address,” and “virtual private network
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`communication link” at least encompass these features for purposes of this
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`proceeding.
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`IV. Precise Reasons for Relief Requested
`[GROUND 1] – Provino Anticipates Claims 1, 7, 8, 10, 12, 13, 15,
`A.
`and 17
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`The features of claims 1, 7, 8, 10, 12, 13, 15, and 17 of the ’274 patent are
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`anticipated by Provino, rendering each of these claims unpatentable under 35
`
`U.S.C. § 102(e).
`
`Provino describes “systems and methods for easing communications
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`between devices connected to public networks such as the Internet and devices
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`connected to private networks.” Ex. 1003 at 1:14-16; see Ex. 1011 at ¶ 27. In
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`particular, Provino describes a system that facilitates communications between a
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`client device 12(m) connected to ISP 11 and a server 31(s) located within virtual
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`private network (VPN) 15. See Ex. 1003 at 9:32 to 10:33; see Ex. 1011 at ¶ 28.
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`An example of the architecture of Provino’s system is illustrated in Figure 1 of
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`Provino. See Ex. 1011 at pp. 12-13, ¶ 27.
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`For a device 12(m) external to VPN 15 to communicate with a server 31(s)
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`within VPN 15, Provino describes a two phase process for establishing
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`communications. See Ex. 1003 at 12:1-2; Ex. 1011 at ¶ 28. In the first phase
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`described by Provino, the device 12(m) is securely connected to the VPN 15 via
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`the Internet 14. See Ex. 1003 at 12:2-4; Ex. 1011 at ¶¶ 28-29. As shown in
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`Annotation 1 below, the creation of the secure tunnel between device 12(m) and
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`VPN 15 effectively extends the VPN to include the device 12(m) via Internet 14.
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`See Ex. 1011 at ¶ 29. By relying upon a secure tunnel to extend the VPN 15,
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`Provino describes using tunneling over the VPN 15. See Ex. 1011 at ¶¶ 28-29.
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`Petition for Inter Partes Review of U.S. Patent No. 7,987,274
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`(Annotation 1)
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`
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`After creating a secure tunnel between device 12(m) and VPN 15, Provino