MCKOOL SMITH
`
`Benjamin Levi
`Direct Dial: (202) 370-8320
`
`blevi®mckoolsmithcom
`Admitted in New York
`Admission pending in DC.
`
`1999 K'Street NW
`State 600
`Washington, DC. 20006-1 101
`
`.. :"
`
`elephone: (2033 dip-8300
`elecopier: (203$W8344
`
`
`
`u?
`at
`
`.
`
`November 4, 2011
`
`VIA HAND DELIVERY
`
`The Honorable James R. Holbein
`
`.
`
`Secretary, US. International Trade Commission
`500 E Street, S.W., Room 112
`Washington, DC. 20436
`
`.-cououqooona-aga.4--..u-ccucomumowu
`
`
`
`Office of the
`Secretary
`lot‘i trade Conimission
`
`
`RE:
`
`In the Matter of Certain Devices with Secure Communication Capabilities,
`Components Thereof, and Products Containing the Same.
`
`Dear Secretary Holbein:
`
`Enclosed for filing on behalf of VirnetX, Inc. (“VirnetX”) are the documents listed below
`in support of VirnetX’s request that the Commission institute an investigation pursuant to
`Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337. A request for confidential
`treatment of Confidential Exhibit Nos. 3C, 23C, and 27C is transmitted concurrently herewith.
`
`We note that your office granted VirnetX permission to file several of the required copies
`of exhibits to the Complaint as Compact Disks (“CD5”) rather than in paper form. We are
`grateful for this courtesy.
`
`We have conferred with Supervisory Attorney—Adviser Jennifer Rohrbach of Docket
`Services, and, in consultation with Lisa Barton, have taken steps to ensure that exhibits filed on
`CD may be readily accessed by the Commission and Proposed Respondents. We have further
`determined that there are no viruses, password protection, or subfolders on any CD. In addition,
`we have included electronic indices for each CD for ease of reference.
`
`Complainant has requested, but has not yet received, an original certified copy of the
`Patent, Assignment, and File History for US. Patent 8,051,181. We will submit original certified
`copies as soon as the copies are received from the United States Patent and Trademark Office.
`Additionally, we have conferred with Lisa Barton regarding outstanding technical references to
`Appendix B. We intend to supplement Appendix B as soon as we receive the additional technical
`references.
`'
`
`Accordingly, VirnetX submits the following documents for filing:
`
`McK001400779v2
`Page 1 of 25
`
`1
`
`VIRNETX EXHIBIT 2022
`
`Apple v. VirnetX
`Trial |PR2014-00485
`
`VIRNETX EXHIBIT 2022
`Apple v. VirnetX
`Trial IPR2014-00485
`
`Page 1 of 25
`
`

`

`1.
`One ( 1) original and twelve (12) copies of the verified non—confidential
`Complaint pursuant to 19 CF.R. §§ 201.6(a), 210.4(i)(2) and 2108(a) (original and one copy
`unbound, without tabs pursuant to 19 CF.R. § 201. 8(d));
`
`One (1) original and one (1) copy of the non—confidential exhibits to the
`2.
`Complaint pursuant to 19 C.F.R. §§ 201.6(a), 210.4(i)(2) and 210.8(a) (original and (1) copy
`unbound, without tabs pursuant to 19 CPR. § 201.8(d));
`
`One (1) original and one (1) copy of the confidential version of the exhibits to the
`3.
`Complaint pursuant to 19 CPR. §§ 201 .6(c), 210.4(t)(2) and 210.8(a) (original and (1) copy
`unbound, without tabs pursuant to 19 CPR. § 201 .8(d));
`
`Six (6) sets of CDs loaded with the accompanying Non—Confidential Exhibits for
`4.
`Commission use;
`
`Six (6) sets of CDs loaded with the accompanying Confidential Exhibits for
`5.
`Commission use;
`
`One (1) additional copy of both the Complaint and accompanying non-
`6.
`confidential exhibits for service upon the proposed respondent; and one (1) additional copy
`of the confidential exhibits for service upon counsel for the respondent once appropriate
`subscriptions to the protective order have been filed, pursuant to 19 C.F.R. § § 210.8(a) and
`210.11 (a)(1));
`
`One (1) uncertified copy1 of US. Patent No. 8,051,181 ("the ’181 patent") is
`7.
`included as Exhibit 1 to the Complaint pursuant to 19 C.F.R. § 210.12(a)(9)(i);
`
`One (1) uncertified copy2 of the assignment for the ‘181 patent is included as
`8.
`Exhibit 2 to the Complaint pursuant to 19 C.F.R. § 210.12(a)(9)(i);
`
`One (1) original3 andthree (3) CD5 loaded with the certified prosecution history
`9.
`of the ‘181 patent are included as Appendix A pursuant to 19 C.F.R. § 210.12(c)(1);
`
`Four (4) CDs loaded with each technical reference mentioned1n the prosecution
`10.
`history of the ‘181 patent are included as Appendix B4 pursuant to 19 C.F.R. § 210. 12(c)(2);
`
`‘ Complainant has requested, but has not yet received, an original certified copy of the ‘ 181 patent. An uncertified
`copy has been submitted as Exhibit 1. Complainant will submit an original certified copy as soon as the copy is
`received from the United States Patent and Trademark Office.
`
`2 Complainant has requested, but has not yet received, an original certified copy of the ‘ 181 patent assignment. An
`uncertified copy has been submitted as Exhibit 2. Complainant will submit an original certified copy as soon as the
`copy is received from the United States Patent and Trademark Office.
`
`3 Complainant has requested, but has not yet received, an original certified copy of the prosecution history of the
`‘ 181 patent. An uncertified copy has been submitted as Appendix A. Complainant will submit an original certified
`copy as soon as the copy is received from the United States Patent and Trademark Office.
`
`4 Complainant has requested, but has not yet received, each technical reference mentioned in the prosecution history
`of the ‘ 181 patent. We enclose 543 of the 754 total references. VirnetX will supplement Appendix B as soon as we
`receive the additional technical references.
`
`McKool 400779v2
`
`Page 2 of 25
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`

`

`A letter pursuant to Commission Rule 201.6(b) requesting confidential treatment
`11.
`of Confidential Exhibit Nos. 3C, 23C, and 270.
`
`Thank you for your attention to this matter.
`
`Respectfully submitted,
`
`amt
`
`Benjamin Levi
`
`Enclosure
`
`McKool 400779v2
`
`Page 3 of 25
`
`Page 3 of 25
`
`

`

`MCKOOL SMITH
`
`Benjamin Levi
`Direct Dial: (202) 370-8320
`blevi
`ckoolsmith.com
`Admitted in New York
`Admission pending in DC.
`
`1999 K‘ Street NW
`Suite 600
`Washington, DC. 20006—1 101
`
`November 4, 2011
`
`Telephone: (202) 37043300
`Telecopier: (202) 370-8344
`
`VIA HAND DELIVERY
`
`The Honorable James R. Holbein
`
`Acting Secretary, US. International Trade Commission
`500 E Street, SW. Suite 112
`Washington, DC. 20436
`
`RE:
`
`In the Matter of Certain Devices with Secure Communication Capabilities,
`Components Thereof, and Products Containing the Same
`
`Dear Secretary Holbein:
`
`Complainant VirnetX, Inc. (“VimetX”) by counsel, hereby requests, pursuant to 19
`CFR. § 201.6, confidential treatment of the confidential business information contained in
`Confidential Exhibit Nos. 3C, 23C, and 27C to VimetX’s Section 337 Complaint transmitted
`herewith.
`
`Confidential treatment is sought for the following Confidential Exhibits:
`
`1.
`
`2.
`
`3.
`
`Confidential Exhibit No. 3C, which discloses the identity of all licensees of the
`asserted patent;
`
`Confidential Exhibit No. 23C which describes, among other things, facts and
`information supporting the domestic industry; and,
`
`Confidential Exhibit No. 27C which is a copy of a license agreement.
`
`The information described above qualifies as confidential information pursuant to 19
`C.F.R. § 201.6 because it is not available to the public; unauthorized disclosure of such
`information could cause substantial harm to VirnetX’s competitive position; and the disclosure
`of the information for which VirnetX seeks confidential treatment could impair the
`Commission’s ability to obtain information necessary to perform its statutory functions.
`
`Respectfully Submitted,
`
`amt»
`
`Benjamin Levi
`
`Enclosure
`
`McKool 40mm
`
`Page 4 of 25
`
`Page 4 of 25
`
`

`

`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`WASHINGTON, D.C.
`
`
` In the Matter of
`
`
`CERTAIN DEVICES WITH SECURE
`
`COMMUNICATION CAPABILITIES,
`
`
`
`
`
`
`
`Investigation No. 337-TA-
`
`COMPONENTS THEREOF, AND PRODUCTS
`CONTAINING THE SAME
`
`COMPLAINT OF VIRNETX, INC.
`UNDER SECTION 337 OF THE TARIFF ACT OF 1930, AS AMENDED
`
`COMPLAINANT
`
`PROPOSED RESPONDENT
`
`VimetX, Inc.
`
`308 Dorla Court,
`
`Suite 206,
`Zephyr Cove, Nevada 89448
`Tel: (831) 438-8200
`
`COUNSEL FOR COMPLAINANT
`
`Apple Inc.
`One Infinite Loop
`Cupertino, CA 95014
`Tel: (408) 996—1010
`
`Douglas A. Cawley
`Luke F. McLeroy
`MCKOOL SMITH, RC.
`300 Crescent Court, Suite 1500
`
`Dallas, Texas 75201
`Telephone: (214) 978-4000
`Telecopier: (214) 978-4035
`
`Benjamin Levi
`Jeffrey I. Frey
`Michael G. McManus
`
`Brandon Jordan
`
`MCKOOL SMITH, RC.
`1999 K Street, N.W., Suite 600
`Washington, DC. 20006
`Telephone: (202) 370-8300
`Telecopier; (202) 370—8344
`
`McKee] 3981 l9v5
`
`Page 5 of 25
`
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`

`

`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................................... 1
`
`THE PARTIES .....................................................................................................................2
`
`A.
`
`B.
`
`Complainant .............................................................................................................2
`
`Proposed Respondent ...............................................................................................2
`
`III.
`
`THE TECHNOLOGY AND PRODUCTS AT ISSUE .......................................................4
`
`IV.
`
`THE ASSERTED PATENT —- US. Patent No. 8,051,181 .................................................. 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`Identification of the Patent and Ownership by VirnetX ..........................................4
`
`Nontechnical Description of the ’ 181 Patent ........................................................... 5
`
`Foreign Counterparts to the ’181 Patent .................................................................. 5
`
`Licensees .................................................................................................................. 6
`
`V.
`
`UNLAWFUL AND UNFAIR ACTS OF RESPONDENT ................................................. 6
`
`VI.
`
`SPECIFIC INSTANCES OF UNFAIR IMPORTATION AND
`
`SALE .................................................................................................................................... 8
`
`VII.
`
`TARIFF CLASSIFICATION UNDER THE HARMONIZED
`TARIFF SCHEDULE .......................................................................................................... 8
`
`VIII. RELATED LITIGATION ................................................................................................... 8
`
`IX.
`
`DOMESTIC INDUSTRY .................................................................................................... 9
`
`A.
`
`VirnetX’s Activities
`
`and Investments
`
`in Plant
`
`and
`
`Equipment, or Employment of Labor or Capital .....................................................9
`
`B.
`
`C.
`
`D.
`
`VimetX’s Engineering and Research and Development ....................................... 10
`
`The Activities and Investments of VimetX’s Licensee ......................................... 11
`
`VimetX’s Licensing of the ‘181 Patent ................................................................. 13
`
`X.
`
`RELIEF REQUESTED ...................................................................................................... 14
`
`McKool 398119v5
`
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`Mom
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`
`

`

`TABLES OF SUPPORTING MATERIALS
`
`INDEX OF EXHIBITS
`
`
`
`
`
`
`
`3C
`
`4
`
`15
`16
`17
`18
`
`
`l
`Uncertified Cgpy of US Patent No. 8,051,181
`2
`TUncertified Copy of the Recorded Assignments for US. Patent No.
`
`8,05 1 , 1 8 1
`CONFIDENTIAL List of Licensees
`
`A ple Inc’s 2010 10—K Re ort
`5
`Agple FaceTime for Mac
`
`
`6
`. Apple iCloud
`,
`7
`Exemplary Infringement Chart for Claims 1, 2, 24, 26, 28, and 29 of US.
`
`Patent No. 8,051,181 for Apple Accused Products
`
`8
`Using FaceTime
`
`9
`Usipg FaceTime Behind Firewall
`
`1 O
`FaceTiine i084
`
`1_
`11
`‘ FaceTime on iPhone
`12
`Rumor: Apple Capturing Information on FaceTiine Calls (updated with
`
`pApple Response)
`4
`
`13
`Freguently Asked Questions About Apple ID
`
`14
`How Does FaccTime Work?
`”7
`
`FaceTime Calls are Encrypted
`
`Special Look at Face Time
`
`Mobile Me
`Receipt Evidencing Purchase of Apple iPhone 4S, Apple Ipad2, Apple W1
`
`Macbook Air Computer and Apple iPod Touch (4th Generation)
`
`Photo Indicating Apple iPhone 48 is Marked as Made in China
`19
`
`20
`Photo Indicating Apple Ipad2 is Marked as Made in China
`
`21
`Photos Indicatin A 1e Macbook Air Com uter is Marked as Made in China
`
`
`
`
`
`
`
`22
`Photo Indicating Apple iPod Touch (4 Generation) is Marked as Made in
`
`China
`
`I
`23C
`L CONFIDENTIAL Declaration of Sameer Mathur
`4
`24
`Exemplary Domestic Industry Chart for Claim 2 of U.S. Patent No.
`
`8,051,181 for GABRIEL Connection Technology
`
`25
`GABRIEL Connection Technology White Paper
`
`26
`VirnetX Technologp
`27C
`CONFIDENTIAL License Agreement between VirnetX and Microsoft
`
`Corporation
`
`Microsoft Corporation’s 2010 10-K Report
`,
`A
`28
`29
`Exemplary Domestic Industry Chart for Claim 2 of US. Patent No.
`
`L 8,051,181 for Microsoft’s Window’s Peernet APIs
`
`T_i\/Iicrosoft’s Securing Peer Channel Applications
`30
` ”A
`31
`Microsoft’s Peer Name Resolution Protocol
`
`McKool 398119v5
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`
`

`

`
`
`
`
`
`
`
`
`
`32
`A Introduction to Windows Peer—to~Peer Networking
`
`33
`Microsoft - Windows Peer—to-Peer Networking
`
`34
`fir Microsoft — About PNRPV
`
`35 A Microsoft - Peer-To—Peer based Features in Win 7
`36
`Developing P2P Applications Using Windows Vista and the Windows
`
`Communication Foundation ("Indigo") PeerChannel
`Microsoft — PeerChannel Security
`37
`A le’s 2011 IO-K Regort
`38
`
`39 fiad User Guide for iOS 4.3 Software
`
`L
`
`McKool 398119v5
`
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`
`

`

`TABLE OF APPENDICES
`
`
`
`
` Q
`
`
`Uncertified Copy of Prosecution History of US. Patent No. 8,051,181
`Copies of Technical References from Prosecution History for US. Patent No.
`8,05 1 ,1 81
`
`McKool 398119v5
`
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`
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`
`

`

`I.
`
`INTRODUCTION
`
`1.
`
`VirnetX, Inc. (“VirnetX” or “Complainant”) files this Complaint under Section
`
`337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, based on the unlawful importation
`
`into the United States, the sale for importation, and the sale within the United States after
`
`importation by owners, importers, or consignees of certain devices with secure communication
`
`capabilities, components thereof, and products containing the same (collectively “Accused
`
`Products”) that infringe at least claims 1, 2, 4-12, 17, 19, 21, 22, 24—29 of US. Patent No.
`
`8,051,181 (“the ‘ 1 81 patent” or the “Asserted Patent”).
`
`2.
`
`The proposed respondent
`
`is Apple Inc.
`
`(“Apple,
`
`proposed respondent” or
`
`93
`
`CC
`
`“respondent”).
`
`3.
`
`An uncertified copy of the ‘181 patent is attached as Exhibit 1.1 An uncertified
`
`copy of the recorded assignments for the ‘1‘81 patent is attached as Exhibit 2. VirnetX owns by
`
`assignment all right, title, and interest in and to the ‘ 1 81 patent.
`
`4.
`
`An industry as required by 19 U.S.C. §§ 1337 (a)(2) and (a)(3)(A), (B), and/or (C)
`
`exists and/or is in the process of being established.
`
`5.
`
`VirnetX seeks as relief an exclusion order, barring from entry into the United
`
`States infringing devices with secure communication capabilities, components thereof, and
`
`products containing the same, manufactured or imported by or on behalf of respondent. VirnetX
`
`also seeks orders directing respondent and its related entities to cease and desist the importation
`
`into the United States, the sale for importation, and the sale after importation of infringing
`
`Certified copies of the ‘181 patent and the assignments for that patent have been ordered and will be
`1
`submitted upon receipt.
`
`MeKool 398119v5
`
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`
`PAGE 1
`
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`
`

`

`devices with secure communication capabilities, components thereof, and products containing
`
`the same, and to cease and desist all commercial activity relating to those infringing goods.
`
`II.
`
`THE PARTIES
`
`A.
`
`6.
`
`Complainant
`
`VimetX is a corporation organized under the laws of Delaware with its principal
`
`place of business at 308 Doria Court, Suite 206, in Zephyr Cove, Nevada. VirnetX previously
`
`had its principal place of business at 5615 Scotts Valley Drive, Suite 110, in Scotts Valley,
`
`California.
`
`7.
`
`VimetX is an Internet security software and technology company. VirnetX’s
`
`software and technology solutions, including its secure domain name registry and GABRIEL
`
`Connection Technology“, are designed to facilitate secure communications and to create a
`
`secure environment for real-time communication applications such as instant messaging, VoIP,
`
`smart phones, eReaders and video conferencing.
`
`8.
`
`VimetX’s GABRIEL Connection Technology practices at least one claim of the
`
`‘181 patent.
`
`9.
`
`VimetX’s patent portfolio includes over 20 U.S. and 18 international patents and
`
`over 100 pending applications. VirnetX has licensed its patents, including the ‘ 181 patent. A list
`
`of such licensees is attached as Confidential Exhibit 3C.
`
`B.
`
`Proposed Respondent
`
`10.
`
`Apple is a corporation organized under the laws of California with its principal
`
`place of business at One Infinite Loop in Cupertino, California. Apple, among other things,
`designs, manufactures or has manufactured, and sells devices with secure communication
`
`capabilities, including Apple’s iPhone 4, iPhone 48, iPad 2, iPod Touch, and its Macintosh
`
`computers with the “Lion” operating system.
`
`PAGE 2
`
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`
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`
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`
`

`

`11.
`
`According
`
`to Apple,
`
`it
`
`“designs, manufactures
`
`and markets mobile
`
`communication and media devices, [and] personal computers .
`
`.
`
`.
`
`.'
`
`[Its] products and services
`
`include iPhone®, iPad®, Mac®, iPod®, Apple TV®, a portfolio of consumer and professional
`
`software applications, the iOS and Mac OS® X operating systems, [and] iCloud®.” Exhibit 38
`
`at l. Apple’s “Mac desktop and portable systems feature .
`
`.
`
`. [Apple’s] Mac OS X Lion
`
`operating system.” Id. at 3.
`
`12.
`
`In June 2010, Apple “introduced the iPhone 4 featuring .
`
`.
`
`. FaceTime® Video
`
`calling.” Exhibit 4 at 4.
`
`13.
`
`Apple’s “iPod line of portable digital music and media players [includes the] iPod
`
`touch.” Exhibit 4 at 4.
`
`f‘The iPod touch is a flash~memory-based iPod with a Widescreen display
`
`and a Multi-Touch user interface.
`
`[Apple’s] latest iPod touch, introduced in September 2010,
`
`includes features such as .
`
`.
`
`. FaceTime video calling.” Id.
`
`14.
`
`Apple’s iPad 2 also includes the FaceTime video calling feature. Exhibit 5.
`
`15.
`
`According to Apple, FaceTime “make[s] video calls to iPad 2, iPhone 4, the new
`
`iPod touch, or another Mac.” Exhibit 5.
`
`16.
`
`According to Apple, “Mac OS X Lion includes support for
`
`.
`
`.
`
`.
`
`iCloud
`
`integration.” Exhibit 38 at 5.
`
`17.
`
`According to Apple, iCloud “stores your music, photos, documents, and more and
`
`wirelessly pushes them to all your devices.” Exhibit 6. According to Apple, “iCloud’s features
`
`include iTunes in the Cloud, Photo Stream, Documents in the Cloud, Contacts, Calendar, Mail,
`
`automatic downloads and purchase history for applications and iBooks, and iCloud Backup.”
`
`Exhibit 38 at 4. Users can access iCloud “using a device running iOS 5 or a Mac running Mac
`
`OS X Lion.” 1d.
`
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`
`

`

`18.
`
`According to Apple, “substantially all” of its “Macs, iPhones, iPads, iPods, logic
`
`boards and other assembled products are manufactured by outsourcing partners, primarily in
`
`various parts of Asia.” Exhibit 4 at 8. “Sole-sourced third-party vendors in China perform final
`
`assembly of substantially all of [Apple’s] Macs, iPhones, iPads, and iPods.” Id. at 9.
`
`19.
`
`“As of September 24, 2011, [Apple] owned a manufacturing facility in Cork,
`
`Ireland .
`
`.
`
`. and facilities in Elk Grove, California, that included warehousing and distribution
`
`operations.” Exhibit 38 at 20.
`
`20.
`
`Upon information and belief, Apple is involved in at least the manufacture,
`
`importation into the United States, sale for importation, sale after importation in the United
`
`States, and/or the distribution in or into the United States of Accused Products.
`
`III.
`
`THE TECHNOLOGY AND PRODUCTS AT ISSUE
`
`21.
`
`The technology and products at issue generally concern secure communication
`
`applications between certain Apple products, including the latest iPhones, iPads,
`
`iPods, and
`
`Macintosh computers.
`
`IV.
`
`THE ASSERTED PATENT -- US. Patent No. 8,051,181
`
`A.
`
`Identification of the Patent and Ownership by VirnetX
`
`22.
`
`The ‘181 patent, entitled “Method for Establishing Secure Communication Link
`
`Between Computers of Virtual Private Network,” lists Victor Larson, Robert Durham Short, III,
`
`Edmund Colby Munger, and Michael Williamson as co-inventors. The ‘181 patent issued on
`
`November 1, 2011. Exhibit 1.
`
`23.
`
`The ‘ 181 patent issued from application number 11/679,416, filed on February 27,
`
`2007, and is a continuation of US. Patent No. 7,188,180, filed on November 7, 2003, which in
`
`turn is a divisional of application serial number 09/558,209, filed on April 26, 2000, which in
`
`turn is a CIP of US. Patent No. 6,502,135 filed on February 15, 2000, which in turn is a CIP of
`
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`
`

`

`US. Patent No. 7,010,604, filed on October 29, 1999, which in turn is based on provisional
`
`applications 60/106,261 and 60/137,704, respectively filed on October 30, 1998, and June 7,
`
`1999.
`
`24.
`
`25.
`
`VimetX owns by assignment all right, title, and interest in and to the ‘ 181 patent.
`
`The “181 patent is valid, enforceable, and in full force and effect.
`
`26.
`
`This Complaint
`
`is accompanied by a certified copy and three copies of the
`
`prosecution history of the “181 patent and by four copies of all cited references.2 Appendices A
`
`and B.
`
`B.
`
`Nontechnical Description of the ’181 Patent
`
`27.
`
`The c181 patent generally describes a method for establishing and/or using a
`
`secure communications link between two computer devices.3
`
`C.
`
`Foreign Counterparts to the ’181 Patent
`
`28.
`
`The following are believed to be foreign counterparts to the ‘ 181 patent:
`
`Date
`
`1
`
`Issue
`Country Case
`Status
`App.No.
`Filing
`Patent
`type
`Date
`No
`
`W0
`PCT
`EX ired PCT/USOl/13261
`04/25/2001
`
`EP
`{PCT
`Pending 019326297
`04/25/2001T
`
`EP
`DIV kPending 060144995
`04/25/2001
`EP
`DIV
`Pendin 060145000
`(14/25/2001
`EP
`DIV
`Pending_ 04/25/2001 4
`
`
`'EP
`kwDIV
`Pending
`10012357
`09/30/2010
`
`EP
`DIV LPending
`10012236
`09/30/2010
`
`
`
`
`
`
`
`
`
`
`
`HK
`Pending 071091127
`08/21/2001L
`LHK
`Pending 071091136
`’08/21/2007
`1,
`
`04/25/2001
`JP
`PCT ’Pendin
`2001583006
`
`i
`
`JP
`JP
`
`DIV
`Pending 2010239225
`DIV ,Pending 33011—085051
`
`04/25/2001
`04/07/2011_L
`
`Certified copies of the file history for the ‘ 181 patent have been ordered and will be submitted upon receipt.
`2
`Complainant has so far been able to obtain 543 of the 754 total references cited, and submits herewith copies of
`those references. Complainant intends to supplement upon receipt of the remaining references.
`
`No part of this Complaint, including any section herein or Exhibit hereto, construes, or is intended to
`3
`construe, the specification, file history, or claims of the ‘ l 81 patent.
`
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`LJP 04/07/2011 1 DIV [Pending 1 2011-085052
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`
`29.
`
`No other foreign patents or patent applications corresponding to the ‘181 patent
`
`have been filed, abandoned, Withdrawn, or rejected.
`
`D.
`
`Licensees
`
`30.
`
`Attached as Confidential Exhibit 3C is a list of licensees of the ‘ 181 patent.
`
`V.
`
`UNLAWFUL AND UNFAIR ACTS OF RESPONDENT
`
`31.
`
`On information and belief, Apple and its Accused Products directly and/or
`
`indirectly infringe at least claims 1, 2, 4-12, 17, 19, 21, 22, 24-29 of the ’181 patent. Discovery
`
`may reveal that Apple and its Accused Products infringe additional claims of the ‘ 181 patent.
`
`32.
`
`On information and belief, Apple, among other things, manufactures, has
`
`manufactured, distributes, imports into the United States, sells for importation, and/or sells after
`
`importation devices that operate in a manner covered by the assertedclaims of the ‘ 181 patent.
`
`33.
`
`On information and belief, exemplary products that infringe one or more claims
`
`of the Assorted Patent include, but are not limited to, Apple’s iPhone 4, iPhone 48, iPad 2, iPod
`
`Touch, and Macs running on the “Lion” operating system. Discovery may reveal additional
`
`products that infringe. This identification of specific products or types of products is intended
`
`only to be exemplary and is not intended to limit the scope of the investigation or remedy, which
`
`' should extend to all infringing goods.
`
`34.
`
`Attached as Exhibit 7 is a chart that applies independent claims 1, 2, 24, 26, 28,
`
`and 29 of the ‘ 181 patent to representative Accused Products. See also Exhibits 5, 8-17, 39.
`
`35.
`
`On information and belief, Apple manufactures, has manufactured, distributes,
`
`imports into the United States, sells for importation, and/or sells after importation all elements of
`
`the asserted claims, thereby directly and indirectly infringing those claims.
`
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`36.
`
`Upon information and belief, Apple directly infringes claims 1, 2, 4-12, l7, 19,
`
`21, 22, 24—29 of the ‘181 patent by providing certain devices with secure communication
`
`capabilities, components thereof and products containing the same.
`
`37.
`
`Upon information and belief, Apple indirectly infringes claims 1, 2, 4—12, 17, 19,
`
`21, 22, 24-29 of the ‘181 patent by contributing to the direct infringement of others, including
`
`users of the accused devices with secure communication capabilities, components thereof and
`
`products containing the same that are elements of VirnetX’s patented invention and/or by
`
`providing devices with secure communication capabilities, components thereof and products
`
`containing the same that are materials or apparatuses for use in practicing VirnetX’s patented
`
`methods and apparatuses, and constitute a material part of the invention. Apple knew or was
`
`willfully blind that
`
`the same was especially made or especially adapted for use in an
`
`infringement of such patent, and not a staple article or commodity of commerce suitable for
`
`substantial non-infiinging use.
`
`38.
`
`Upon information and belief, Apple further actively induces others, including
`
`users of the accused devices with secure communication capabilities, components thereof and
`
`products containing the same to directly infringe asserted claims 1, 2, 4—12, 17, 19, 21, 22, 24-29
`
`of the ‘181 patent by providing directions, demonstrations, guides, and/or manuals that
`
`encourage and facilitate others to perform actions known and intended by Apple to be acts of
`
`infringement. Upon information and belief, Apple knew or was willfully blind that its actions
`
`would cause infringement of the ’ 181 patent and did so with intent to encourage infringement.
`
`39.
`
`Apple knew of or was willfully blind to the existence of the ‘ 181 patent at least
`
`because on November 1, 2011, a district court action was brought against Apple alleging that it
`
`infringes the ‘ 181 patent.
`
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`VI.
`
`SPECIFIC INSTANCES OF UNFAIR IMPORTATION AND SALE
`
`40.
`
`Upon information and belief, Apple imports into the United States, sells for
`
`importation, and/or sells within the United States after importation products and/or products that
`
`infringe the asserted claims. Upon information and belief, Apple’s accused products are
`
`manufactured abroad, sold for importation, and sold in the United States after importation by
`
`Apple or its authorized agents.
`
`41.
`
`Prior to the filing of this Complaint, exemplary accused Apple products were
`
`purchased in the United States. Exhibit 18. Exhibits 19, 20, 21, and 22 show that those items
`
`were manufactured abroad.
`
`VII. TARIFF CLASSIFICATION UNDER THE HARMONIZED TARIFF
`
`SCHEDULE
`
`42.
`
`The products as to which VimetX seeks exclusion include, without limitation,
`
`computers classified under subheading 8471.30.01, HTSUS, cellular telephones classified under
`
`subheading 8517.12.00, HTSUS, and portable computing devices classified under subheading
`
`8471.30.01, or 8471.41.01, HTSUS.
`
`VIII. RELATED LITIGATION
`
`43.
`
`On August 11, 2010, VimetX filed a complaint in the US. District Court for the
`
`Eastern District of Texas against Apple, among others.
`
`In that lawsuit, VirnetX alleges that
`
`Apple infringes US. Patent No. 6,502,135, US Patent No. 7,418,504, US. Patent No.
`
`7,490,151, and US. Patent No. 7,921,211. That action, styled VirnetXInc. v. Cisco Systems, Inc.
`
`et al., Civil Action No. 6:10-cv—417, is pending.
`
`44.
`
`On November 1, 2011, VirnetX filed a complaint in the US. District Court for the
`
`Eastern District of Texas alleging that Apple infringes the ‘ 181 patent.
`
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`IX.
`
`DOMESTIC INDUSTRY
`
`A.
`
`and Investments
`VirnetX’s Activities
`Employment of Labor or Capital
`
`in Plant and Equipment, or
`
`45.
`
`Pursuant to Section 337 (a)(2) and (a)(3)(A), a domestic industry exists or is in
`
`the process of being established by virtue of VirnetX’s significant investments in plant and
`
`equipment made with respect to technology protected by the ‘ 181 patent.
`
`46.
`
`VimetX has made a significant investment in plant and equipment in the United
`
`States, including at its facilities in Zephyr Cove, Nevada and Scotts Valley, California, with
`
`'respect to VimetX’s technology protected by the Asserted Patent,
`
`including its GABRIEL
`
`Connection Technology.
`
`Further details of VimetX’s significant investments in plant and
`
`equipment are, provided in Confidential Exhibit No. 23C, 1i 2.
`
`47.
`
`Alternatively, or in addition, pursuant to Section 337 (a)(2) and (a)(3)(B), a
`
`domestic industry exists or is in the process of being established by virtue of VirnetX’s
`
`significant employment of labor or capital with respect to articles protected by the ‘ 181 patent.
`
`48.
`
`VirnetX has made a significant employment of labor or capital in the United
`
`States, including at its facilities in Zephyr Cove, Nevada and Scotts Valley, California, with
`
`respect to VirnetX’s technology protected by the Asserted Patent,
`
`including its GABRlEL
`
`Connection Technology. Further details of VimetX’s significant employment of labor or capital
`
`are provided in Confidential Exhibit No. 23C, 1i 3.
`
`49.
`
`There is a nexus between VimetX’s significant
`
`investments in plant and
`
`equipment and its significant employment of labor or capital and the technology that practices
`
`the Asserted Patent.
`
`50.
`
`As shown in the chart attached as Exhibit 24, VimetX’s GABRIEL Connection
`
`Technology practices at least claim 2 of the ‘181 patent. See also Exhibits 25 and 26. VimetX
`
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`reserves the right to demonstrate at the evidentiary hearing that its GABRIEL Connection
`
`Technology practices other claims of the ‘ 181 patent.
`
`51.
`
`In View of at least the foregoing, and pursuant to 19 U.S.C. § 1337(a)(3)(A)
`
`and/or (B), a domestic industry exists or is in the process of being established by virtue of
`
`VimetX’s significant investment in its plant and equipment and/or its significant employment of
`
`labor or capital with respect to technology protected by the Asserted Patent.
`
`B.
`
`L VirnetX’s Engineering and Research and Development
`
`52.
`
`Pursuant to Section 337 (a)(2) and (a)(3)(C), a domestic industry exists or is in the
`
`process of being established by Virtue of VirnetX’s substantial investments in the exploitation of
`
`the ‘ 181 patent through engineering and research and development.
`
`53.
`
`VirnetX has made a substantial investment in the exploitation of the ‘181 patent
`
`through its engineering and research and development activities in the United States, including at
`
`its facilities in Zephyr Cove, Nevada and Scotts Valley, California.
`
`These substantial
`
`investments include engineering and research and development activities designed to exploit the
`
`‘181 patent, and other efforts to engage potential investors, manufacturers, or licensees, and
`
`VimetX’s efforts to foster propagation or use of the ‘ 181 patent as well as efforts to facilitate or
`
`hasten the practical application of that invention by bringing it to market. Further details of
`
`VimetX’s substantial investment in the exploitation of the ‘181 patent through its engineering
`
`and research and development activities are provided in Confidential Exhibit No. 23C, 11 4.
`
`54.
`
`VirnetX has expended substantial and significant
`
`resources
`
`towards
`
`the
`
`commercialization of its technology, including its GABRIEL Connection Technology, based
`
`upon its ‘ 181 patent. However, respondent has increasingly saturated the market with infringing
`
`products, and respondent’s infringement has dampened and will continue to dampen the sales of
`
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`VimetX’s and its licensee’s products that are protected by or licensed under the ‘181 patent.
`
`Confidential Exhibit No