`
`Paper No. 1
`
`
`
`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. 8,504,697
`Issued: August 6, 2013
`Filed: December 28, 2011
`Inventors: Victor Larson, et al.
`Title: SYSTEM AND METHOD EMPLOYING AN AGILE NETWORK
`PROTOCOL FOR SECURE COMMUNICATIONS USING SECURE DOMAIN
`NAMES
`____________________
`
`Inter Partes Review No. IPR2014-00237
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`VIRNETX EXHIBIT 2019
`Apple v. VirnetX
`Trial IPR2014-00485
`
`Page 1 of 72
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW ............................................................................ 1
`A.
`Certification the ’697 Patent May Be Contested by Petitioner ............ 1
`B.
`Fee for Inter Partes Review (§ 42.15(a)) .............................................. 2
`C. Mandatory Notices (37 CFR § 42.8(b)) ............................................... 2
`1.
`Real Party in Interest (§ 42.8(b)(1)) ........................................... 2
`2.
`Other Proceedings (§ 42.8(b)(2)) ............................................... 2
`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)) .................................................................................................. 2
`III. RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT ......................................................................................................... 3
`A.
`Effective Filing Date and Prosecution History of the ’697 patent ....... 3
`B.
`Person of Ordinary Skill in the Art ...................................................... 5
`C.
`Construction of Terms Used in the Claims .......................................... 6
`1.
`Domain Name (Claims 1-11, 14-25, and 28-30) ....................... 6
`2.
`Secure Communication Link (Claims 1-11, 14-25, and
`28-30) ......................................................................................... 7
`Secure Communications Service (Claims 1-11, 14-25,
`28-30) ....................................................................................... 10
`Intercepting . . . a request (Claims 1-11, 14-25, and 28-
`30) ............................................................................................ 12
`5. Modulation (Claims 6-7 and 20-21) ........................................ 15
`IV. PRECISE REASONS FOR RELIEF REQUESTED ................................... 16
`A.
`Claims 1-11, 14-25, and 28-30 Are Anticipated by Beser ................. 16
`1.
`Beser Anticipates Claims 1 and 16 .......................................... 16
`2.
`Beser Anticipates Claim 2 and 24 ............................................ 23
`3.
`Beser Anticipates Claim 3 and 17 ............................................ 24
`
`3.
`
`4.
`
`i
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`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
`
`Beser Anticipates Claim 4 and 18 ............................................ 25
`4.
`Beser Anticipates Claims 5, 6, 7, 19, 20, and 21 ..................... 26
`5.
`Beser Anticipates Claim 8, 9, 22 and 23 .................................. 27
`6.
`Beser Anticipates Claim 10 and 29 .......................................... 28
`7.
`Beser Anticipates Claim 11 and 25 .......................................... 30
`8.
`Beser Anticipates Claim 14 and 28 .......................................... 30
`9.
`10. Beser Anticipates Claim 15 and 30 .......................................... 32
`Beser In View of RFC 2401 Renders Obvious Claims 1-11, 14-
`25, and 28-30 ...................................................................................... 33
`1.
`Claims 2 and 24 Would Have Been Obvious .......................... 33
`2.
`Dependent Claims 3 and 17 Would Have Been Obvious ........ 37
`3.
`Claims 1, 16, 4-11, 16, 18-23, 25, and 28-30 Would Have
`Been Obvious ........................................................................... 38
`Claims 1-11, 14-25, and 28-30 Are Anticipated by RFC 2543 ......... 39
`1.
`RFC 2543 Anticipates Claims 1 and 16 ................................... 39
`2.
`RFC 2543 Anticipates Claim 2 and 24 .................................... 48
`3.
`RFC 2543 Anticipates Claim 3 and 17 .................................... 49
`4.
`RFC 2543 Anticipates Claim 4 and 18 .................................... 50
`5.
`RFC 2543 Anticipates Claim 5, 6, 7, 19, 20, and 21 ............... 50
`6.
`RFC 2543 Anticipates Claim 8, 9, 22, and 23 ......................... 52
`7.
`RFC 2543 Anticipates Claim 10 and 29 .................................. 53
`8.
`RFC 2543 Anticipates Claim 11 and 25 .................................. 54
`9.
`RFC 2543 Anticipates Claim 14 and 28 .................................. 54
`10. RFC 2543 Anticipates Claim 15 and 30 .................................. 56
`RFC 2543 In View of RFC 1889, RFC 2327 Renders Obvious
`Claims 1-11, 14-25, and 28-30 ........................................................... 56
`1.
`Independent Claims 1 and 16 Would Have Been Obvious ..... 56
`2.
`Dependent Claims 2-11, 14-15, 17-25, and 28-30 Would
`Have Been Obvious ................................................................. 57
`
`B.
`
`C.
`
`D.
`
`ii
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`Page 3 of 72
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
`
`E.
`
`RFC 2543 In View of Mobility Support Using SIP Renders
`Obvious Claims 8-9 and 22-23........................................................... 58
`CONCLUSION ............................................................................................. 60
`
`V.
`
`Attachment A. Proof of Service of the Petition
`Attachment B. List of Evidence and Exhibits Relied Upon in Petition
`
`
`
`
`iii
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`Page 4 of 72
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`

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`I.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`A. Certification the ’697 Patent May Be Contested by Petitioner
`Petitioner certifies that U.S. Patent No. 8,504,697 (the ’697 patent) (Ex.
`
`1001) 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 ’697 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
`
`’697 patent. The ’697 patent has not been the subject of a prior inter partes review
`
`by Petitioner or a privy of Petitioner.
`
`Petitioner also certifies this petition for inter partes review is filed within
`
`one year of the date of service of a complaint alleging infringement of a patent. On
`
`August 5, 2013, VirnetX filed a complaint in the Eastern District of Texas
`
`asserting the ’697 patent in case No. 6:13-cv-00581. The case was dismissed
`
`without prejudice. On August 27, 2013, VirnetX amended its complaint in the
`
`6:12:cv-00855 proceeding to add the ’697 patent. Because the date of this petition
`
`is less than one year from August 27, 2013, this petition complies with 35 U.S.C.
`
`§ 315(b). Petitioner also notes that the timing provisions of 35 U.S.C. § 311(c) and
`
`37 C.F.R. § 42.102(a) do not apply to the ’697 patent, as it pre-dates the first-to-
`
`file system. See Pub. L. 112-274 § 1(n), 126 Stat. 2456 (Jan. 14, 2013).
`
`
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
`
`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.
`
`Other Proceedings (§ 42.8(b)(2))
`
`2.
`The ’697 patent is not subject to any other proceedings. The ’697 patent is
`
`also the subject of IPR2014-00238 being filed concurrently by Petitioner.
`
`Designation of Lead and Backup Counsel
`
`3.
`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 mail or hand delivery to: Sidley
`
`Austin LLP, 1501 K Street, N.W., Washington, D.C. 20005. The fax 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.
`
`II.
`
`Identification of Claims Being Challenged (§ 42.104(b))
`
`2
`
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`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
`
`Claims 1-11, 14-25, and 28-30 of the ’697 patent are unpatentable as being
`
`anticipated under 35 U.S.C. § 102(a) & (e), and/or for being obvious over the prior
`
`art under 35 U.S.C. § 103. Specifically:
`
`(i)
`
`Claims 1-11, 14-25, and 28-30 are anticipated under § 102(e) by U.S.
`Patent No. 6,496,867 to Beser (“Beser”) (Ex. 1009);
`
`(ii) Claims 1-11, 14-25, and 28-30 are obvious under § 103 based on
`Beser (Ex. 1009) in view of RFC 2401 (Ex. 1010);
`
`(iii) Claims 1-11, 14-25, and 28-30 are obvious under § 103 based on
`Beser (Ex. 1009) in view of RFC 2401 (Ex. 1010) and the knowledge
`of a person of ordinary skill in the art;
`
`(iv) Claims 1-11, 14-25, and 28-30 are anticipated under § 102(a) by RFC
`2453 (Ex. 1012);
`
`(v) Claims 1-11, 14-25, and 28-30 are obvious under § 103 based on RFC
`2453 (Ex. 1012) in view of RFC 1889 (Ex. 1013) and RFC 2327 (Ex.
`1014).
`
`(vi) Claims 8-9 and 22-23 are obvious under § 103 based on RFC 2453
`(Ex. 1012) in view of Mobility Support Using SIP (Ex. 1015).
`
`Petitioner’s proposed construction of the contested 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 ’697 patent
`The ’697 patent issued from U.S. Ser. No. 13/339,257. The ’257 application
`
`claims the benefit as a continuation of the following applications: (i) 13/049,552
`
`3
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`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
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`(issued as U.S. Patent No. 8,572,247); 11/840,560 (issued as U.S. Patent No.
`
`7,921,211); 10/714,849 (issued as U.S. Patent No. 7,418,504); and 09/558,210. It
`
`also is designated a continuation-in-part of 09/504,783, filed on February 15,
`
`2000, which is a continuation-in-part of 09/429,643, filed on October 29, 1999.
`
`The ’210, ’783 and ’643 applications also claim priority to 60/106,261, filed
`
`October 30, 1998 and 60/137,704, filed June 7, 1998.
`
`Claims 1 and 16 of the ’697 patent are independent claims. Claims 2-11 and
`
`14-15 depend directly or indirectly from claim 1, and claims 17-25 and 28-30
`
`depend directly or indirectly from claim 16. Claims 2-11, 14-15, 17-25, and 28-30
`
`cannot enjoy an effective filing date earlier than that of claims 1 and 16,
`
`respectively, from which they depend (i.e., no earlier than February of 2000).
`
`Claims 1 and 16 of the ’697 patent rely on information found only in the
`
`’783 application. For example, claim 1 of the ’697 patent specifies “intercepting . .
`
`. a request to look up an internet protocol (IP) address . . . based on a domain
`
`name . . . .” Claim 16 specifies “[a] system . . . including one or more servers
`
`configured to intercept . . . a request to look up an internet protocol (IP) address . . .
`
`based on a domain name . . . .” No application filed prior to the ’783 application
`
`even mentions the term “domain name,” much less provides a written description
`
`of systems or processes corresponding to the ’697 patent claims. In proceedings
`
`involving the related ’135, ’151, ’211 and ’504 patents, Patent Owner has not
`
`4
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`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
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`disputed that claims reciting a “domain name” are not entitled to an effective filing
`
`date prior to February 15, 2000. See, e.g., Patent Owner Preliminary Oppositions
`
`in IPR2013-00348, -00349, -00354, -00375, -00376, -00377, -00378, -00393, -
`
`00394, -00397, and -00398. See also inter partes reexamination nos. 95/001,682,
`
`95/001,679, 95/001,697, 95/001,714, 95/001,788, and 95/001,789. Also, while
`
`claims 1 and 16 recite a “secure communications service,” there is no mention,
`
`whether explicit or implicit, of this term anywhere in the disclosure of the ’697
`
`patent, nor in any application filed prior to the ’783 application. Thus, the effective
`
`filing date of claims 1-11, 14-25, and 28-30 of the ’697 patent is not earlier than
`
`February 15, 2000.
`
`Person of Ordinary Skill in the Art
`
`B.
`A person of ordinary skill in the art in the field of the ’697 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
`
`with Internet standards related to communications and security, and with a variety
`
`of client-server systems and technologies. The person would have gained this
`
`knowledge either through education and training, several years of practical
`
`working experience, or through a combination of these. Ex. 1003 ¶ 63.
`
`5
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`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
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`C. Construction of Terms Used in the Claims
`In this proceeding, claims must be given their broadest reasonable
`
`construction in light of the specification. 37 CFR § 42.100(b). The broadest
`
`reasonable construction should take account of Patent Owner’s contentions as to
`
`what the claims literally encompass and constructions Patent Owner has advanced
`
`in litigation. The ’697 patent shares a common disclosure and uses several of the
`
`same terms as the ’135, ’151, ’504 and ’211 patents, in respect of which Patent
`
`Owner has advanced constructions. Also, if 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.
`
`Domain Name (Claims 1-11, 14-25, and 28-30)
`1.
`The ’697 patent does not define the term “domain name.” A person of
`
`ordinary skill would understand that the ordinary meaning of a “domain name” is a
`
`6
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`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
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`hierarchical sequence of words in decreasing order of specificity that corresponds
`
`to a numerical IP address. Ex. 1003 at ¶¶ 89-91; see generally ¶¶ 86-94. Patent
`
`Owner, however, has asserted a “domain name” is simply “a name corresponding
`
`to an IP address.” Ex. 1046 at 14-15. The broadest reasonable construction of
`
`“domain name” should encompass Patent Owner’s contention that it can be “a
`
`name corresponding to an IP address.” See Ex. 1003 at ¶¶ 199-201.
`
`2.
`
`Secure Communication Link (Claims 1-11, 14-25, and 28-
`30)
`
`The broadest reasonable construction of the phrase “secure communication
`
`link” can include communications over a virtual private network (VPN), would
`
`encompass communications that are encrypted or not encrypted, and would
`
`encompass direct communications between computers involved in the secure
`
`communications link that are transported via intermediary computers or devices.
`
`First, the ’697 patent explains a “secure communication link” is “a virtual
`
`private communication link over the computer network.” Ex. 1001 at 6:63-65. A
`
`“secure communication link” therefore must encompass virtual private networks.
`
`Ex. 1003 at ¶¶ 202-210; see Ex. 1001 at claims 3 and 17. It also suggests that a
`
`“secure communication link” is one that permits computers to privately
`
`communicate with each other over a public network – a communication link would
`
`be “secure” if it protects the anonymity of the computers involved in the
`
`communications. See, e.g., Ex. 1001 at 39:49-58.
`
`7
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`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
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`Second, dependent claims 2 and 24 of the ’697 patent specify that data being
`
`sent over a “secure communication link” must be encrypted. See, e.g., Ex. 1001 at
`
`claim 2 (“…wherein at least one of the video data and the audio data is encrypted
`
`over the secure communication link.”). By contrast, claims 1 and 16 specify only
`
`that the “secure communication link [be used] to communicate at least one of video
`
`data and audio data” between the two network devices. Under the doctrine of
`
`claim differentiation, the broadest reasonable construction of a “secure
`
`communication link” means that data being sent over the secure communication
`
`link may or may not be encrypted.1
`
`
`1
`In proceedings involving the ’135,’504, and ’211 patents, Patent Owner has
`
`contended a VPN requires network traffic to be encrypted, a contention that is
`
`inconsistent with the common disclosure of the ’135, ’504, ’211, and ’697 patents.
`
`See, e.g., Ex. 1001 at 1:57-59 (“Data security is usually tackled using some form of
`
`data encryption”); 2:44-54 (referring to technique that does not use encryption to
`
`protect the anonymity of the VPN); see also Ex. 1003 ¶¶ 200-208. In addition,
`
`while the ’697 patent shows use of TARP routers that do encrypt all network
`
`traffic (Ex. 1001 at 3:16-3:46), it does not state that TARP routers are required for
`
`the disclosed DNS-based VPN scheme. See, e.g., Ex. 1001 at 40:10-14 (“The VPN
`
`is preferably implemented using the IP address “hopping” features of the basic
`(Footnote continued)
`
`8
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`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
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`Third, based on Patent Owner’s representations in other proceedings
`
`involving related patents, the broadest reasonable construction of a “secure
`
`communication link” would encompass direct communications between computers
`
`that are transmitted via intermediary computers and devices. For example, one
`
`district court has found, based on the disclosure of the common disclosure of the
`
`’697 and ’135 patents, that the “…routers, firewalls, and similar servers that
`
`participate in typical network communication do not impede ‘direct’
`
`communication between a client and target computer.” Ex. 1049 at 8 (FN2).
`
`The broadest reasonable construction of “secure communication link” thus
`
`encompasses “a communication link in which computers privately and directly
`
`communicate with each other on insecure paths between the computers where the
`
`
`invention described above…” (emphasis added)). The ’697 patent also does not
`
`show any encryption steps in the DNS-related VPN scheme it describes. See Ex.
`
`1001 at 39:28-42:16. Also, in February of 2000, it was understood that a VPN
`
`could be established without encryption (e.g., by using “obfuscation” techniques to
`
`ensure the security and anonymity of the network traffic over a public network).
`
`See Ex. 1003 ¶ 208; Ex. 1073 at 2.
`
`9
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`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
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`communication is both secure and anonymous, and where the data transferred may
`
`or may not be encrypted.” 2 See Ex. 1003 at ¶¶ 202-210.
`
`Secure Communications Service (Claims 1-11, 14-25, 28-30)
`3.
`The ’697 patent does not expressly define the term “secure
`
`communications service.” Instead, its manner of use of this phrase in the two
`
`places in the disclosure where it appears (excluding the abstract) indicates that a
`
`“secure communications service” is simply referring to the capacity of two
`
`computers to participate in secure communications link. For example, the ’697
`
`patent states:
`
`The method comprises: receiving, from the first network device, a
`request to look up a network address of the second network device
`based on an identifier associated with the second network device;
`determining, in response to the request, whether the second network
`device is available for a secure communications service; and
`initiating a secure communication link between the first network
`device and the second network device based on a determination that
`
`
`2
`In the grandparent of the present patent (i.e., the ’504 patent), Patent Owner
`
`unequivocally disclaimed secure communication links that did not employ
`
`encryption. See Ex. 1056 at 25. This disclaimer limits the scope of the claims,
`
`including the ’697 claims, that use this term in district court proceedings, which do
`
`not employ the broadest reasonable construction used in these proceedings.
`
`10
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`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
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`the second network device is available for the secure
`communications service; wherein the secure communications
`service uses the secure communication link to communicate at
`least one of video data and audio data between the first network
`device and the second network device.
`
`Ex. 1001 at 8:9-24; see also id. at 40:4-9 (“a specialized DNS server traps DNS
`
`requests and, if the request is from a special type of user (e.g., one for which
`
`secure communication services are defined), the server . . . automatically sets up
`
`a virtual private network between the target node and the user”).
`
`The capacity of two computers to participate in a secure communications
`
`link means that the computers must be configured to enable them to handle the
`
`communications that are required for that secure communications link. The term
`
`“service” is often used by persons of ordinary skill in the art to refer to the
`
`configuration of a computer that provides the computer with some functional
`
`capability. Ex. 1003 at ¶ 214. The ’697 patent, however, provides no description
`
`of any software or logic that confers on computers the ability to participate in a
`
`secure communications link.
`
`The broadest reasonable construction of the term “secure communications
`
`service” thus refers to the functional configuration of a computer that enables it to
`
`participate in a secure communications link with another computer.
`
`11
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`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
`
`Intercepting . . . a request (Claims 1-11, 14-25, and 28-30)
`4.
`The broadest reasonable construction of “intercepting … a request” would
`
`include a proxy computer or device receiving and acting on a request sent by a first
`
`computer that was intended for another computer.3 This interpretation is consistent
`
`with the use of the term “intercepting” in the independent and dependent claims, in
`
`the specification, and in its conventional meaning.
`
`The ’697 patent does not expressly define the phrase “intercepting ... a
`
`request.” Also, as used in the claims, the term “intercepting” refers to a single
`
`event – receiving a particular type of request (i.e., a request to look up an IP
`
`address of a second network device based on a domain name of that device).
`
`Dependent claims 10 and 29 also specify that “intercepting” must necessarily
`
`encompass “receiving” a request. For example, claim 10 specifies the step of
`
`“intercepting … the request” in claim 1 consists of “receiving the request to
`
`determine whether the second network device is available for the secure
`
`communications service.” Similarly, claim 29 provides that the servers of claim 16
`
`are configured to “intercept the request by receiving the request to determine
`
`
`3 Claim 1 uses the phrase “intercepting … a request” while claim 16 uses the term
`
`“intercept … a request.” There is no substantive distinction apparent from the
`
`tense of the word “intercept.” See Ex. 1003 at ¶ 218.
`
`12
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`Petition for Inter Partes Review of U.S. Patent No. 8,504,697
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`whether the second network device is available for the secure communications
`
`service.”
`
`The specification uses the term “intercepting” in a consistent manner. For
`
`example, the specification describes a process where a proxy server will
`
`“intercept” a request instead of a DNS server, and then act on the request. See,
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`e.g., Ex. 1001 at 40:31-33 (“According to one embodiment, DNS proxy 2610
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`intercepts all DNS lookup functions from client 2605 and determines whether
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`access to a secure site has been requested.” (emphasis added)). The specification
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`also shows the network configuration will send all DNS requests to the DNS proxy
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`server – it is pre-configured to route the traffic to a known destination (i.e., the
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`DNS proxy server) instead of a DNS server, which ordinarily would receive and
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`resolve the domain name in the request. Id. This use of “intercept” in the
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`specification as meaning receipt of a message by a proxy server instead of the
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`intended destination is consistent with the ordinary meaning of the term “intercept”
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`– which is to receive a message intended for another. See Ex. 1079 at 3 (“…to
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`obtain covertly (a message, etc. intended for another)…”)
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`The prosecution history of the ’697 patent is relevant to what the claims in
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`their broadest reasonable interpretation encompass. Claims 1 and 16 originally
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`recited “receiving … a request to look up a network address.” These claims were
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`rejected as being obvious over Wesinger (Ex. 1008). Rather than arguing the
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`claims were not obvious, Patent Owner amended claims 1 and 16 to: (i) recite
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`“intercepting … a request” instead of “receiving … a request”; and (ii) changing
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`“network address” to “Internet Protocol (IP) address.” Patent Owner also added
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`new claims 10 and 29, which depend from claims 1 and 16, respectively.
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`Following the amendments, the Examiner found the claims allowable, explaining
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`in the Notice of Allowance that the prior art “may not clearly disclose the feature
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`of ‘intercepting a request to look up an IP address based on a domain name of a
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`secure web site (i.e., the second network device) and determining whether or not to
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`establish a secure connection.’” Ex. 1002 (FH) at 1034 (emphasis in original).
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`The file history demonstrates that the Examiner failed to appreciate the
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`impact of Patent Owner’s newly added dependent claims 10 and 29; namely, that
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`they caused the broadest reasonable interpretation of independent claims 1 and 16
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`to necessarily encompass “receiving” a request. 4 This is notable because the
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`claims employing the “receiving … the request” language had previously been
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`found unpatentable over Wesinger by the Examiner, and that the Patent Owner
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`4
`The Examiner also appears to have used the incorrect legal standard (i.e.,
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`anticipation) to assess obviousness when he found the claims patentable (i.e.,
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`because the prior art “may not clearly disclose the feature of ‘intercepting a request
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`…’”). Ex. 1002 (FH) at 1034.
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`acquiesced to that finding by amending the claims, rather than arguing that the
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`“receiving” claims were not obvious. Given that the claims in their broadest
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`reasonable construction must necessarily encompass “receiving … a request”
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`pursuant to claims 10 and 29, they are clearly unpatentable over Wesinger, and
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`Patent Owner cannot now dispute otherwise, given its acquiescence to this finding
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`of unpatentability by the Examiner.5
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`5. Modulation (Claims 6-7 and 20-21)
`The ’697 patent does not define the term “modulation.” A person of
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`ordinary skill would understand that the term “modulation” refers to the process of
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`encoding data for transmission over a physical medium by varying or
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`“modulating” a carrier signal. Ex. 1003 at ¶¶ 235-239. Any data transmitted via a
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`5
`See, e.g., Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1261 (Fed. Cir.
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`2012) (Federal Circuit vacated grant of a preliminary injunction, finding a
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`“substantial question of invalidity” was raised in part by the Examiner’s overt error
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`in the prosecution history, and that “[o]ther than recognizing that the prosecution
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`history was ‘puzzling,’ the district court did not discuss the prosecution history,
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`which demonstrates that the examiner concluded that the claims with an upper
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`Tmax limit of 7.5 were not patentable in view of Cheng and that the applicant
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`acquiesced in that conclusion and cancelled those claims.”).
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`modem (i.e., a “modulator-demodulator” device) would be transmitted using
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`modulation. Ex. 1003 at ¶¶ 235-239. Similarly, any data transmitted via a cellular
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`network would be transmitted using modulation. Ex. 1003 at ¶¶ 235-239. The
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`broadest reasonable interpretation of “modulation” thus would encompass the
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`process of encoding data for transmission over a physical or electromagnetic
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`medium by varying a carrier signal.
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`IV. Precise Reasons for Relief Requested
`A. Claims 1-11, 14-25, and 28-30 Are Anticipated by Beser
`Beser has an effective filing date of August 27, 1999, and is prior art under
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`at least under §102(e). Ex. 1009 at 1. Petitioner submits that claims 1-4, 8-11, 14-
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`16, 21-25, and 28-30 of the ’697 patent are unpatentable in view of Ex. 1009
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`(Beser), considered alone or in conjunction Ex. 1010 (RFC 2401) and knowledge
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`in the field of the ’697 patent, for the reasons set forth below, as supported by
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`¶¶ 255-454 of Ex. 1003.
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`Beser Anticipates Claims 1 and 16
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`1.
`Claims 1 and 16 are defined using the same operative limitations. Claim 1 is
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`cast in the form of a method of connecting devices, while claim 16 is cast in the
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`form of a server system configured to execute the steps of the method defined in
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`claim 1. In this analysis, the steps of the method of claim 1 are first addressed, and
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`then the corresponding system elements of claim 16 are addressed.
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`Beser (Ex. 1009) describes systems that establish an IP tunneling association
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`16
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`between two end devices with the aid of a first and second network device and a
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`trusted-third-party network device on a public network. Ex. 1003 at ¶¶ 255-264,
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`265-269, 292-293. Beser explains the trusted-third-party network device can be a
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`domain name server. Ex. 1003 at ¶¶ 262-264, 287-291, 306. Beser explains that
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`the first and second network devices may be edge routers, “gateway” computers,
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`cable modems, or other network devices. Ex. 1003 at ¶¶ 261, 280-286. Beser
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`shows the trusted-third-party network device can be a domain name server, and can
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`be one device or a distributed server system. Ex. 1003 at ¶ 290.
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`To establish an IP tunnel, the originating end device sends a request
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`containing a unique identifier specifying a destination (i.e., a terminating end
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`device). Ex. 1003 at ¶¶ 295-300. The unique identifier can be a domain name.
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`Ex. 1003 at ¶¶ 263, 300, 301. The first network device receives the request,
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`evaluates it, and then sends it to the trusted-third-party network device, if
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`appropriate. Ex. 1003 at ¶¶ 295-296, 309-313. The trusted-third-party network
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`device evaluates the request, and if it corresponds to a terminating device,
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`facilitates a