MCKOOL SMITH
`
`300 Crescent Court
`Suite 1500
`
`Douglas A, Cawley
`Direct Dial: (214)978-4972
`dcawleyQijmckoolsmith.com
`
`m '“l 173%)
`
`
`
`BY HAND DELIVERY
`
`The Honorable Lisa R. Barton
`
`September 13, 2012
`
`Dallas, Texas 75201
`
`' ......3%323.............
`
`Office of the
`Secretary
`
`Acting Secretary, US. International Trade Commission
`500 E Street, S.W., Room 112
`
`Washington, DC. 20436
`
`lnt't trade Commission
`
`RE:
`
`In the Matter of Certain Devices with Secure Communication Capabilities,
`Components Thereof, and Products Containing the Same
`
`Dear Secretary Barton:
`
`Enclosed for filing on behalf of VimetX, Inc. (“VimetX”) and Science Applications
`International Corporation (“SAIC”) (collectively, “Complainants”) are the documents listed
`below in support of Complainants request
`that
`the Commission institute an investigation
`pursuant to Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337. Requests for
`confidential treatment of Confidential Exhibit Nos. 3C, 4C, 5C, 6C, 7C, 36-1C, 36-2C, 42C,
`53C, 72C, 91 C, and 122C is transmitted concurrently herewith.
`
`Complainants have requested, but have not yet received, an updated 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.
`
`Accordingly, Complainants submit the following documents for filing:
`
`1. One (1) original and eight (8) copies of the verified non-confidential Complaint pursuant
`to 19 C.F.R. §§ 201.6(3) and (c), 210.4(f)(2), and 210.8(a) (original and one copy
`unbound, without tabs pursuant to 19 C.F.R. § 201 .8(d));
`
`2. One (1) CD containing a copy of the non-confidential exhibits to the Complaint pursuant
`to 19 CPR. §§ 201.6(3), 2]O.4(t)(2), and 210.8(a);
`
`3. One (1) CD containing a copy of the confidential version of the exhibits to the
`Complaint pursuant to 19 C.F.R. §§ 201.6(c), 210.4(f)(2), and 210.8(a);
`
`McKool 657724er
`
`Page 1 of 51
`
`VIRNETX EXHIBIT 2024
`
`Apple v. VirnetX
`Trial lPR2014—00485
`
`

`

`4. One (1) additional copy of the Complaint and one (1) CD containing the non-
`confidential exhibits for service upon the proposed respondent; and one (1) additional
`copy of a CD containing 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)(l);
`
`5. One (1) certified copy of US. Patent No. 8,051,181 (“the ’181 patent”) is included as
`Exhibit 1 to the Complaint pursuant to 19 C.F.R. § 210.12(a)(9)(i);
`
`6. One (1) copy1 of the assignment for the ’181 patent is included as Exhibit 2 to the
`Complaint pursuant to 19 CPR. § 210.12(a)(9)(i);
`
`7. One (1) original2 and three (3) CDs loaded with the prosecution history of the ’181
`patent are included as Appendix A pursuant to 19 C.F .R. § 210.12(c)(1 );
`
`8. Four (4) CDs loaded with each technical reference mentioned in the prosecution history
`of the ’18] patent are included as Appendix B pursuant to 19 C.F.R. § 210.12(c)(2);
`
`9. Eight (8) copies of the Statement of Public Interest pursuant to 19 C.F.R. § 210.8(b); and
`
`10. Two letters pursuant to Commission Rule 201.6(b) requesting confidential treatment of
`Confidential Exhibit Nos. 3C, 4C, 5C, 6C, 7C, 36-1C, 36-2C, 42C, 53C, 72C, 91C; and
`122C.
`
`Thank you for your attention to this matter.
`
`Respectfully submitte ,
`
`
`
`Enclosures:
`
`‘ Complainants have requested, but have not yet received, a certified copy of the corrected ’18] patent assignment.
`A prior certified copy (uncorrected) has been submitted as Exhibit 2. Complainants will submit an original
`corrected certified copy as soon as the copy is received from the United States Patent and Trademark Office.
`
`2 Complainants have requested, but have not yet received, a certified copy of the corrected prosecution history of the
`’181 patent. A prior certified copy (uncorrected) has been submitted as Appendix A. Complainants will submit an
`original corrected certified copy as soon as the copy is received from the United States Patent and Trademark Office.
`
`McKool 657724v2
`
`Page 2 of 51
`
`

`

`MCKOOL SMITH
`
`Douglas A_ Cawley
`Direct Dial. (214) 978'4972
`dcawley@mckoolsmith.com
`
`300 Crescent Court
`Suite 1500
`Dallas, Texas 75201
`
`September 13, 2012
`
`Telephone: (214) 978—4000
`Facsimile: (214) 978-4044
`
`BY HAND DELIVERY
`
`The Honorable Lisa R. Barton
`
`Acting Secretary, US. International Trade Commission
`500 E Street, S.W., Room 112
`Washington, DC. 20436
`
`RE:
`
`In the Matter of Certain Devices with Secure Communication Capabilities,
`Components Thereof, and Products Containing the Same
`
`Dear Secretary Barton:
`
`McKool Smith, P.C. represents complainant VirnetX, Inc. (“VimetX”). VimetX, by
`counsel, hereby requests, pursuant
`to 19 CPR.
`§ 201.6, confidential
`treatment of the
`confidential business information contained in Confidential Exhibit Nos. 3C, 4C, 5C, 6C, 36-IC,
`36-2C, 42C, 53C, 72C, and 91C to Complainants Section 337 Complaint transmitted herewith.
`
`Confidential treatment is sought for the following Confidential Exhibits:
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Confidential Exhibit No. 3C, which is a copy of a patent and license agreement;
`
`Confidential Exhibit No. 4C, which is a copy of a security agreement;
`
`Confidential Exhibit No. 5C, which is a copy of an amendment to a license
`agreement;
`
`Confidential Exhibit No. 6C, which is a copy of an amendment to a license
`agreement
`
`Confidential Exhibit No. 36-IC, which describes, among other things, facts and
`information supporting the domestic industry;
`
`Confidential Exhibit No. 36-2C, which describes, among other things, facts and
`information supporting the domestic industry;
`
`Confidential Exhibit No. 42C, which is a copy of a license agreement;
`
`McKool 657728v3
`
`Page 3 of 51
`
`

`

`8.
`
`9.
`
`Confidential Exhibit No. 53C, which is a copy of a license agreement;
`
`Confidential Exhibit No. 72C, which is a copy of a license agreement; and
`
`10.
`
`Confidential Exhibit No. 91 C, which is a copy of a license agreement.
`
`The information contained in these exhibits identified above qualifies as confidential
`information pursuant to 19 CPR. § 201.6 because it is not available to the public; unauthorized
`disclosure of such information could cause substantial harm to VimetX’s competitive position;
`and the disclosure of the information for which VimetX seeks confidential treatment could
`impair the Commission’s ability to obtain information necessary to perform its statutory
`functions.
`
`I certify that the confidential business information in Confidential Exhibits 3C, 4C, 5C,
`6C, 36-1C, 36-2C, 42C, 53C, 72C, and 91C or substantially-identical
`information is not
`reasonably available to the public and warrants confidential treatment under Commission Rule
`201.6.
`
`Thank you for your attention to this matter.
`
`Respectfully submitted,
`
`/
`
`McKool 657728v3
`
`Page 4 of 51
`
`

`

`Urrabazo
`
`Urrabazo Law, RC.
`2029 Century Park East, 14th Floor
`Los Angeles, CA 90067
`
`Donald S. Urrabazo
`
`Direct: (310) 388-9099
`Fax: (310) 388-9088
`Email: durrabazo@ulawpc.com
`
`September 13, 2012
`
`BY HAND DELIVERY
`
`The Honorable Lisa R. Barton
`
`Acting Secretary, U.S. lntemational Trade Commission
`500 E Street, S.W., Room 112
`Washington, DC. 20436
`
`RE:
`
`In the Matter of Certain Devices with Secure Communication Capabilities,
`Components Thereof, and Products Containing the Same
`
`Dear Secretary Barton:
`
`International
`complainant Science Applications
`represents
`Urrabazo Law, P.C.
`Corporation (“SAIC”). SAIC, by counsel, hereby requests, pursuant to 19 C.F.R. § 201.6,
`confidential treatment of the confidential business information contained in Confidential Exhibit
`
`Nos. 3C, 4C, 5C, 6C, 7C, and 122C to Complainants Section 337 Complaint
`herewith.
`
`transmitted
`
`Confidential treatment is sought for the following Confidential Exhibits:
`
`1.
`
`2.
`
`Confidential Exhibit No. 3C, which is a copy of a patent and license agreement;
`
`Confidential Exhibit No. 4C, which is a copy of a security agreement;
`
`Confidential Exhibit No. 5C, which is a copy of an amendment to a license
`agreement;
`
`Confidential Exhibit No. 6C, which is a copy of an amendment to a license
`agreement;
`
`Confidential Exhibit No. 7C, which discloses the identity of all licensees of the
`asserted patent; and,
`
`Confidential Exhibit No. 122C, which is a copy of a professional services
`contract.
`
`Page 5 of 51
`
`

`

`The information contained in these exhibits identified above qualifies as confidential
`information pursuant to 19 CPR. § 201.6 because it is not available to the public; unauthorized
`disclosure of such information could cause substantial harm to SAIC’s competitive position; and
`the disclosure of the information for which SAIC seeks confidential treatment could impair the
`Commission’s ability to obtain information necessary to perform its statutory functions.
`
`I certify that the confidential business information in Confidential Exhibits 3C, 4C, 5C,
`6C, 7C, and 122C or substantially-identical information is not reasonably available to the public
`and warrants confidential treatment under Commission Rule 201.6.
`
`Thank you for your attention to this matter.
`
`Respectfully submitted,
`
`MAMA
`
`Donald S. Urrabazo
`
`Page 6 of 51
`
`

`

`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`WASHINGTON, D.C.
`
`CERTAIN DEVICES WITH SECURE
`
`
`In the Matter of
`
`
`COMPONENTS THEREOF, AND PRODUCTS
`
`
`CONTAINING THE SAME
`
`
`
`COMMUNICATION CAPABILITIES,
`
`Investigation No. 337-TA-
`
`VIRNETX, INC. AND
`SCIENCE APPLICATIONS INTERNATIONAL CORPORATION ’8
`STATEMENT OF PUBLIC INTEREST
`
`Pursuant to Commission Rule 210.8(b), Complainants VirnetX, Inc. (“VimetX”) and
`
`Science Applications International Corporation (“SAIC”) (collectively, “Complainants”) submit
`
`this Statement of Public Interest
`
`in connection with the remedial orders they seek against
`
`proposed respondent Apple Inc. (“Apple” or “Respondent”).
`
`Complainants
`
`seek a permanent
`
`limited exclusion order specifically directed to
`
`Respondent and its products, excluding from entry into the United States certain devices with
`
`secure communication capabilities, components thereof, and products containing the same that
`
`infringe one or more of the asserted claims of US. Patent No. 8,051,181 (“the ’181 patent”),
`
`including computers (Mac), cellular telephones (iPhone), and portable computing devices (iPad,
`
`iPod Touch) (collectively, “Accused Products”). Complainants also seek a permanent cease and
`
`desist order prohibiting Respondent from engaging in the importation, sale for importation,
`
`marketing and/or advertising, distribution, offering for sale, sale, sale after importation, or other
`
`transfer within the United States of these same certain devices with secure communication
`
`capabilities, components thereof, and products containing the same that infringe one or more of
`
`the asserted claims of the ”181 patent. If the Commission issues these remedial orders as a result
`
`McKool 657698v3
`
`Page 7 of 51
`
`

`

`of this Investigation,
`
`there will be little or no adverse effect on public health and welfare,
`
`competitive conditions in the United States economy,
`
`the production of like or directly
`
`competitive articles in the United States, or United States consumers, and the public interest will
`
`be served by the issuance of the remedial orders.
`
`Issuance of the requested remedy orders including a permanent limited order is necessary
`
`to provide effective relief, and as such the public interest will be served by issuing the requested
`
`remedial orders and protecting important intellectual property rights in the United States.
`
`I.
`
`EXPLANATION OF HOW THE ARTICLES POTENTIALLY SUBJECT
`TO THE ORDERS ARE USED IN THE UNITED STATES.
`
`The Accused Products include, but are not limited to, Apple’s iPhone 4,
`
`iPhone 43,
`
`iPhone 5, iPad 2, new iPad (3rd generation or iPad 3), iPod Touch (4th or Sth generation), and
`
`Macs running on the “Lion” or “Mountain Lion” operating system.
`
`In particular, the Accused
`
`Products are those with Apple’s Facetime application. The FaceTime application is largely an
`
`entertainment application that, as Apple describes, allows users to “catch up, hang out, joke
`
`around, and stay in touch with just a click.” http://wwwapple.com/mac/facetime/.
`
`II.
`
`IDENTIFICATION OF ANY PUBLIC HEALTH, SAFETY, OR WELFARE
`CONCERNS IN THE UNITED STATES RELATING TO THE
`
`REQUESTED RELIEF.
`
`The issuance of an exclusion order and a cease and desist order would have little or no
`
`adverse effect upon the public health, safety, or welfare in the United States. The products at
`
`issue are not medical devices, are not health-related, and are not essential for public health. The
`
`products are not of the type raising public health, safety, or welfare concerns that historically,
`
`have been cited by the Commission.
`
`See Certain Fluidized Supporting Apparatus and
`
`Components Thereofi lnv. N0. 337-TA-l82/l88, Comm’n Op., '1 984 ITC LEXIS 256, at ** l, 35-
`
`37 (Oct. 1984) (denying exclusion of hospital burn beds); Certain Inclined-Field Acceleration
`
`McKool 657698v3
`
`Page 8 of 51
`
`

`

`Tubes, lnv. No. 337-TA-67, Comm’n Order (Dec. 1980) (denying exclusion for nuclear energy
`
`parts); and Certain Automatic Crankpin Grinders, lnv. No. 337-TA-60, Comm‘n Order (Dec.
`
`1979) (denying exclusion of automotive parts needed to manufacture fuel efficient automobiles
`
`on the timetable mandated by Congress). Here. the Accused Products are computers, cellular
`
`telephones, and portable computing devices containing an application largely used for
`
`entertainment and personal communication purposes and communications in the United States,
`
`the exclusion of which would not adversely impact the public interest.
`
`Moreover, in the event ofa finding ofa violation of Section 337, issuance ofan exclusion
`
`order and a cease and desist order would—far from adversely impacting competitive conditions
`
`in the United States—~have the beneficial effect of protecting intellectual property rights, which
`
`is in the public interest. See, e.g., Certain Two-Handle Centerset Faucets and Escutcheons, and
`
`Components Thereofl lnv. No. 337-TA-422, Comm’n Op. at 9; and Certain Battery-Powered
`
`Toy Vehicles, lnv. No. 337-TA-3l4, Comm’n Op, at 1] (Apr. 10, 1991).
`
`III.
`
`LIKE OR DIRECTLY COMPETITIVE ARTICLES THAT
`
`COMPLAINANTS, ITS LICENSEES. AND/OR THIRD PARTIES MAKE
`ARE READILY AVAILABLE AND COULD REPLACE THE SUBJECT
`ARTICLES.
`
`The Accused Products in this investigation, including computers, cellular telephones, and
`
`portable computing devices, are limited to the products of one particular Supplier, Apple. As
`
`such, there are many directly competitive products that could replace the Accused Products from
`
`multiple suppliers.
`
`IV.
`
`COMPLAINANTS AND ITS LICENSEES HAVE THE CAPACITY TO
`REPLACE THE VOLUME OF ARTICLES SUBJECT TO THE
`
`REQUESTED RELIEF IN A COMMERCIALLY REASONABLE TIME IN
`THE UNITED STATES.
`
`The presence of an adequate supply of substitute products is sufficient to override any
`
`public interest concerns. Certain Lens-Fitted Film Packages (LFFPs), Inv. No. 337-TA—406,
`
`McKool 657698v3
`
`3
`
`Page 9 of 51
`
`

`

`Comm’n Op., 1999 lTC LEXIS 202, at *40 (June 28, 1999). Complainants believe that
`
`VirnetX’s licensees and/or third-party suppliers will have the capacity to replace the volume of
`
`products potentially subject
`
`to an exclusion order and a cease and desist order within a
`
`commercially reasonable time. There is no evidence that the Accused Products have qualities,
`
`performance, or
`
`functionality of such overwhelming superiority over similar, competitive
`
`products supplied by VimctX’s licensees and/or third-parties in the United States market such
`
`that they are in any way indispensible to the public or unavailable from alternative sources in the
`
`event the Commission issues the orders sought in the Complaint. The United States personal
`
`electronics market is sufficiently deveIOped and competitive to produce and supply competitive
`
`products in the absence of the Accused Products.
`
`V.
`
`THE REQUESTED RELIEF WILL NOT ADVERSELY IMPACT UNITED
`STATES CONSUMERS.
`
`United States consumers have many options when buying personal electronic devices and
`
`computers.
`
`Personal electronic devices and computers are common consumer electronic
`
`products for which there are many suppliers and highly competitive markets. Thus, competing
`
`products exist and are readily available to replace the infringing products. Accordingly,
`
`it
`
`is
`
`unlikely that consumers would experience any impact if the requested exclusion orders were
`
`obtained. Given that competing products are easily available in the United States from other
`
`sources in the United States, the public interest should not bar issuance of any remedial orders.
`
`See Certain Wireless Commc’n Devices, Portable Music and Data Processing Devices,
`
`Computers and Componems Thereof, Inv. No. 337-TA-745, 2012 lTC LEXIS 1217, at *2—4,
`
`* 10—1 1 (May 9, 2012) (recommended determination on remedy and bond).
`
`McKool 657698v3
`
`Page 10 of 51
`
`

`

`Dated: September 14, 2012
`
`Respectfully submitted.
`
`DICKOOL SMITH, P.C.
`
`By:
`
`/5/ Douglas Cawley
`Douglas Cawley
`Mark Mathie
`
`Ivan Wang
`Jason Cassady
`Austin Curry
`Brad Caldwell
`MCKOOL SMITH RC.
`
`300 Crescent Court. Suite 1500
`
`Dallas, TX 75201
`
`Telephone: (214) 978-4000
`Telecopier: (214) 978-4044
`VirnetX_ApplelTC@mckoolsmith.c0m
`
`Benjamin Levi
`Robert A. Auchter
`Kent Stevens
`Brandon Jordan
`MCKOOL SMITH RC.
`
`1999 K Street, N.W., Suite 600
`
`Washington DC 20006
`Telephone: (202) 370-8300
`Telecopier: (202) 370-8344
`VirnetX_AppleITC@mckoolsmith.com
`
`Counsel for Complainant VirnetX, Inc.
`
`By:
`
`/s/ Donald Urrabazo
`Donald Urrabazo
`Arturo Padilla
`
`URRABAZO LAW, RC.
`
`2029 Century Park East, 14th Floor
`Los Angeles, CA 90067
`Direct: (310) 388-9096
`Facsimile: (310) 388—9088
`
`Counselfor Complainant Science
`Applications International Corporation
`
`McKool 6S7698v3
`
`Page 11 of 51
`
`

`

`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`WASHINGTON, D.C.
`
`In the Matter of
`
`CERTAIN DEVICES WITH SECURE
`
`COMMUNICATION CAPABILITIES,
`COMPONENTS THEREOF, AND PRODUCTS
`CONTAINING THE SAME
`
`
`
`Investigation No. 337-TA-
`
`COMPLAINT OF VIRNETX, INC. AND
`SCIENCE APPLICATIONS INTERNATIONAL CORPORATION
`UNDER SECTION 337 OF THE TARIFF ACT OF 1930 AS AMENDED
`
`COMPLAINANTS
`
`PROPOSED RESPONDENT
`
`Apple lnc.
`One Infinite Loop
`Cupertino, CA 95014
`Tel: (408) 996-1010
`
`VimetX, Inc.
`308 Dorla Court,
`Suite 206
`Zephyr Cove, Nevada 89448
`Tel: (831) 438-8200
`
`Science Applications lntemational Corporation
`1710 SAIC Drive
`
`McLean, VA 22102
`Tel. (703) 676-4300
`
`COUNSEL FOR C OMPLAINAN TS
`
`Counselfor VimeIX, Inc.
`
`Douglas A. Cawley
`Mark Mathie
`
`Ivan Wang
`Jason Cassady
`Austin Curry
`Brad Caldwell
`
`MCKOOL SMITH, P.C.
`300 Crescent Court, Suite 1500
`Dallas, Texas 75201
`Telephone: (214) 978-4000
`Telecopier: (214) 978-4035
`
`Benjamin Levi
`Robert A. Auchter
`Kent Stevens
`Brandon Jordan
`
`MCKOOL SMITH, RC.
`1999 K Street, N.W., Suite 600
`
`McKool 589506v7
`
`Page 12 of 51
`
`

`

`Washington, DC. 20006
`Telephone: (202) 370-8300
`Telecopier: (202) 370-8344
`
`Counsel for Science Applications International Corporalion
`
`Donald Urrabazo
`Arturo Padilla
`
`URRABAZO LAW, P.C.
`2029 Century Park East, l4th Floor
`Los Angeles, CA 90067
`Direct: (310) 388-9099
`Facsimile: (310) 388-9088
`
`McKool 589506v7
`
`Page 13 of 51
`
`

`

`W
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................................... I
`
`THE PARTIES ..................................................................................................................... 2
`
`A.
`
`B.
`
`Complainants ........................................................................................................... 2
`
`Proposed Respondent ............................................................................................... 3
`
`III.
`
`THE TECHNOLOGY AND PRODUCTS AT ISSUE ....................................................... 5
`
`IV.
`
`THE ASSERTED PATENT—US. Patent No. 8,051,181 .................................................. 7
`
`A.
`
`B.
`
`C.
`
`D.
`
`Background and Ownership ..................................................................................... 7
`
`Nontechnical Description of the ’18] Patent ........................................................... 8
`
`Foreign Counterparts to the ’ 181 Patent .................................................................. 8
`
`Licensees .................................................................................................................. 9
`
`V.
`
`UNLAWFUL AND UNFAIR ACTS OF RESPONDENT ................................................. 9
`
`VI.
`
`VII.
`
`SPECIFIC INSTANCES OF UNFAIR IMPORTATION AND
`SALE .................................................................................................................................. I 1
`
`TARIFF CLASSIFICATION UNDER THE HARMONIZED
`TARIFF SCHEDULE ........................................................................................................ 12
`
`VIII. RELATED LITIGATION ................................................................................................. 12
`
`IX.
`
`DOMESTIC INDUSTRY .................................................................................................. 13
`
`A.
`
`VirnetX’s Activities
`
`and
`
`Investments
`
`in Plant
`
`and
`
`Equipment, and/or Employment of Labor or Capital ............................................ 13
`
`B.
`
`C.
`
`VimetX’s Engineering and Research and Development ....................................... 16
`
`The Activities and Investments of VimetX’s Licensees........................................ I7
`
`1.
`
`2.
`
`3.
`
`4.
`
`Microsoft Corporation ............................................................................... I 7
`
`Aastra USA Inc. ......................................................................................... I 9
`
`Mitel Networks Corporation ...................................................................... 21
`
`NEC Corporation and NEC Corporation of America ................................23
`
`McKool 589506v7
`
`PAGEi
`
`Page 14 of 51
`
`

`

`D.
`
`VimelX's Licensing ofthe ‘18] Patent ................................................................. 26
`
`X.
`
`RELIEF REQUESTED ...................................................................................................... 27
`
`McKool 589506v7
`
`Page 15 of 51
`
`PAGE ii
`
`

`

`TABLES OF SUPPORTING MATERIALS
`
`INDEX OF EXHIBITS
`
`Exhibit.
`
`
`
`Certified Co. of U.S. Patent No. 8.051.181
`Certified Co. of the Recorded Assi_nments for U.S. Patent No. 8,051,181
`
` HHHIIII'HIH A 0 1e FaceTime for OS X Mountain Lion
`NNN-—t_.a—
`
`3C
`
`CONFIDENTIAL The Patent and License Assignment Agreement (PLAA)
`between VimetX and SAIC
`
`4C
`
`5C
`
`6C
`7C
`
`ll
`12
`
`Exemplary Infringement Chart for Claims 1, 2, 24, 26, 28, and 29 of U.S.
`Patent No. 8,051,181 for Apple Accused Products
`
` FaceTime
`
`l7—
`
`Rumor: Apple Capturing Information on FaceTime Calls (updated with
`A . 1e Res onse
`
`Fre-uentl Asked Questions About A . 1e ID
`
`How Does FaceTime Work?
`
`FaceTime Calls are Encr uted
`S ecial Look at Face Time
`
`21
`
`22
`23
`
`Mobile Me
`24
`
`25
`iPad User Guide for iOS 5.1 Software
`
`
`
`
`
`26 A nle iPhone 5 Built-In A s
`27
`A. 1e announces likel
`iPhone 5 event on Set. 12
`
`Apple iPod Touch (5‘ Generation) Built-In Apps
`Receipt Evidencing Purchase of Apple iPhone 45, Apple iPad2, Apple
`Macbook Air Com uter and A . le iPod Touch 4th Generation
`O
`Recei t Evidencin_ Purchase of A Ie New iPad 3" Generation or iPad 3
`Photo Indicatin_ A le iPhone 48 is Marked as Assembled in China
`31
`
`32
`Photo lndicating_Apple iPad2 is Marked as Assembled in China
`
`b.)
`
`' Prior certified copy (uncorrected) submitted. A certified copy of the corrected ‘18] patent assignments has been
`ordered and will be submitted upon receipt.
`
`McKool 589506v7
`
`Page 16 of 51
`
`PAGE iii
`
`,_
`
`.
`
`._Descripti'on
`
`’
`
`.
`
`.
`
`

`

`NO.
`
`I
`
`I
`
`j
`
`‘
`
`,
`
`,
`
`,
`
`DeScription .
`
`Assembled in China
`
`China
`
`in China
`36--CONFIDENTIAL1C Declaration ofSameer Mathur
`
`
`
`8,051,181 for GABRIEL Connection Technolo;
`
`‘
`
`
`
`
`
`
`- Photos Indicating Apple Macbook Air Computer is Marked as Assembled In
`
` Photo Indicating Apple iPod Touch (41" Generation) is Marked as Assembled
`
`
`
`
`
`
`
`
`VirnetX Technolo_
`“ News Release - VirnetX Publishes R0 alt Rates & Licensin Guidelines
`
`Gabriel Patent Licensin Guidelines
`
`
`
`
`
`
`42C
`CONFIDENTIAL License Agreement between VirnetX and Microsoft
`
`Cororation
`
`Microsofi Co oration s 2012 10-K Reort
`
`
`
`
`
`
`
`Exemplary Domestic Industry Chart for Claim 2 of U. S. Patent No.
`
`8,051,181 for Microsoft’s Window’s Peemet APIs
`
`Microsoft’s Securin; Peer Channel A u o lications
`Microsoft’s Peer Name Resolution Protocol
`
`
`
`Introduction to Windows Peer-to-Peer Networkin
`
`
`49
`
`Microsoft — About PNRP
`
`
`
`
`
`
`
`51
`
`
`
`
`
`
`
`Developing P2P Applications Using Windows Vista and the Windows
`Communication Foundation "Indi o" PeerChannel
`
`
`Microsofi - PeerChannel Securi
`‘
`
`CONFIDENTIAL Patent License Agreement between VirnetX and Aastra
`USA Inc.
`
`Communications E ui-ment Com an Overview of Aastra USA, Inc.
`Aastra 2011 Annual Reort
`
`Aastra USA Careers
`
`
`
`
`
`
`
`57
`
`
`
`Exemplary Domestic Industry Chart for Claim 2 of US. Patent No.
`8,051,181 for Aastra’s Pointsan SPN and Enc
`ted 1P Phones/PBX
`1 Aastra 67301 Datasheet
`lAastra 6731i Datasheet
`59
`
`' Aastra 6735i Datasheet
`
`
`
`
`Aastra 6739i Datasheet
`
`63
`Aastra 6753i Datasheet
`
`
`
`64
`Aastra 6755i Datasheet
`
`Aastra 6757i Datasheet
`
`McKool 589506v7
`
`Page 17 of 51
`
`PAGE iv
`
`

`

`
`
`DescriptiOn
`
`67
`
`Aastra 9143i Datasheet
`
`Aastra 9480i Datasheet
`
`SIP IP Phone Administrator Guide Release 2.6
`
`70
`
`Points nan® Release 5.4 General Availabili
`
`r
`
`72C
`
`4k_.
`
`73
`
`75
`
`76
`
`77
`
`78
`
`79
`
`82
`83
`
`84
`
`Pointsan 5.4 Enhancements
`
`CONFIDENTIAL Patent License Agreement between VirnetX and Mitel
`
`Networks Co noration
`Mitel Network Cororation’s 2012 lO-K Reoort
`
`Exemplary Domestic Industry Chart for Claim 2 of US. Patent No. 8,051,181 for Mitel’s Secure Mite} Servers and Secure Mitel IP Phones
`
`Mitel Communications Director Overview
`
`Mitel 5212/5224 IP Phones SIP User and Administrator Guide
`Mitel 5215/5220 IP Phones SIP User and Administrator Guide
`
`Mitel 5235 IP SIP Phone SIP User and Administrator Guide
`
`Mitel 5312/5324 IP Phones SIP User and Administrator Guide
`Mitel 5320/5330/5340 IP Phones SIP User and Admin Guide Release 8.0
`Mitel 5330/5340 IP Phones SIP User and Admin Guide Release 7.2 URI
`
`Mitel 3000 Communications S stems (u to 52 users
`Mitel Discover Series
`
`Mitel 3300 ICP Enc
`
`tion
`
`5m
`
`—
`
`_m
`
`—_
`
`Co . uration and NEC Cororation of America
`NBC Co oration’s 2012 Annual Re-ort
`
`_
`
`
`
`97
`
`NEC United States Offices
`
`__ E
`
`xemplary Domestic Industry Chart for Claim 2 of US. Patent No.
`8,051,181 for NBC UNIVERGE SV7000 IP Telephony and Unified
`Communications S stem
`
`1
`
`Exemplary Domestic Industry Chart for Claim 2 of US. Patent No.
`8,051,181 for NEC UNIVERGE SV8100 IP Telephony and Unified
`Communications S stem
`
`PAGE v
`
`McKool 589506v7
`
`Page 18 of 51
`
`

`

`
`
`
`' Description
`Exhibit
`
`
`2o
`
`
`
`Exemplary Domestic Industry Chart for Claim 2 of U.S. Patent No.
`
`8,051,181 for NEC UNlVERGE SV8300 1P Telephony and Unified
`
`Communications S stem
`
`
`Exemplary Domestic Industry Chart for Claim 2 ofU.S. Patent No.
`8,051,181 for NEC UNIVERGE SV8500 IP Telephony and Unified
`Communications S stem
`
`Exemplary Domestlc Industry Chart for Claim 2 of U.S. Patent No.
`8,051 181 for [PX Telehon and Unlfied Communlcations S stem
`UNIVERGE VolP Securit Best Practice Vol. 1
`
`UNIVERGE VoIP Securi Best Practice Vol. 11
`
`1111
`UNIVERGE VolP Securlt Best Practice Vol
`
`NEC SIP Termlnals
`NEC 1P Terminals
`
`
`
`
`
`
`NEC Dterm SP30 1P multlmedla softhone
`SV7000 Test Reort
`
`'
`
`
`.
`UNIVERGE SV8100 Features and S-ecifications Manual
`E. B 2’. 5 E :1 oa. O oBB=Eog oaU! ' '
`(D
`o .3
`<
`<
`CD931% Omfor:C)
`c
`
`N21mn®am830930o<9;53‘00E
`
`
`
`
`
`
`UNIVERGE® SV8300: The ultimate in Unified Communications
`
`UNIVERGE® SV8500: Empowering organizations with advanced Unified
`Communications
`
`NEAX 2400 IPX: The Promise Fulfilled
`
`
`
`
`
`
`NEAX 2400 IPX: lntemet Protocol eXchange (lPX): Long-Term Migration
`118
`
`_ and Investment Protection
`l UNIVERGE NEAX 2400 lPX: Internet Protocol eXchange: Flexible
`Networkin_ for Your Business
`UNIVERGE NEAX 2400 lPX: Dterm Series i / Dterm 1P User Guide
`
`102
`
`103
`
`104
`
`105
`
`107
`
`110
`111
`
`l 12
`
`113
`114
`115
`
`
`
`
`
`119
`
`
`
`
`122C
`
`
`
`NEAX 2400 IPX lntemet Protocol eXchan e: General Descri tion
`CONFIDENTIAL Professional Services Contract
`
`
`
`
`McKool 589506v7
`
`PAGE Vi
`
`Page 19 of 51
`
`

`

`TABLE OF APPENDICES
`
`Certified C0. ofProsecution Histor ofU. S. Patent No 8051,181 - Copies ofTechnical References from Prosecution History for US. Patent No.
`
`8,051,181
`
`Descri tion
`
`2 A certified copy of the prosecution history of the ‘181 patent is on file with the Commission. See lnv. No. 337-
`TA-SIS, Document ID 466278. Complainants have requested, but have not yet received, a certified copy of the
`corrected prosecution history of the ‘181 patent. A prior certified copy (uncorrected) has been submitted as
`Appendix A. Complainants will submit an original corrected certified copy as soon as the copy is received from the
`United States Patent and Trademark Office.
`
`McKooI 589506v7
`
`Page 20 of 51
`
`PAGE ‘r'il
`
`

`

`I.
`
`INTRODUCTION
`
`1.
`
`VirnetX, Inc. (“VirnetX”) and Science Applications International Corporation
`
`(“SAIC”) file this Complaint under Section 337 ofthe TariffAct of 1930, as amended, 19 U.S.C.
`
`§ 1337, based on the unlawfiil 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, 5-9, 14, 15, 17-19,
`
`22, 24, and 26-29 of US Patent No. 8,051,181 (“the ‘181 patent” or the “Asserted Patent”).
`,5
`‘4
`
`2.
`
`The proposed respondent
`
`is Apple Inc.
`
`(“Apple,
`
`proposed respondent” or
`
`“respondent”).
`
`3.
`
`A certified copy of the ‘181 patent is attached as Exhibit 1. A certified copy of
`
`the recorded assignments3 for the ‘18] patent is attached as Exhibit 2. VimetX owns the ‘181
`
`patent by assignment. Copies of agreements between VimetX and SAlC concerning the patent
`
`in suit are attached as Exhibit 2 and Confidential Exhibits 3C-6C (“Patent Agreements”). SAlC
`
`was previously found by the Commission to be a necessary party to an action asserting the ‘181
`
`patent
`
`in Inv. No. 337-TA-818. VirnetX and SAIC’s rights are identified in the Patent
`
`Agreements. See, e.g., Confidential Exhibits 3C-6C.
`
`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.
`
`VimetX and SAlC seek as relief an exclusion order, barring from entry into the
`
`United States infringing devices with secure communication capabilities, components thereof,
`
`3 A certified copy of the recorded assignments of the ‘ 181 patent is on file with the Commission. See lnv. No. 337-
`TA~818, Document ID 465058 (File 10 683l68). Complainants have requested, but have not yet received, a new
`certified copy of the assignments of the ‘181 patent. Complainants will submit a new certified copy in this
`Investigation as soon as the copy is received from the United States Patent and Trademark Office.
`
`PAGE 1
`
`McKool 589506v7
`
`Page 21 of 51
`
`

`

`and products containing the same, manufactured or imported by or on behalf of respondent.
`
`VirnetX and SAIC also seek 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 devices with secure communication capabilities, components thereof,
`
`and products containing the same, and to cease and desist all domestic commercial activity
`
`relating to those infringing goods.
`
`I].
`
`THE PARTIES
`
`A.
`
`6.
`
`Complainants
`
`VirnetX is a corporation organized under the laws of Delaware with its principal
`
`place of business at 308 Dorla 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.
`
`VirnetX is an Internet security software and technology company. VirnetX’s
`
`software and technology solutions, including its secure domain name registry and GABRIEL
`
`Connection TechnologyTM (“GABRIEL”), are designed to facilitate secure communications and
`
`to create a secure environment
`
`for real-time communication applications such as instant
`
`messaging, VolP, smart phones, eReaders and video conferencing. VimetX’s security software
`
`and technology provide benefits to customers, developers, and manufacturers of chips, servers,
`
`smart phones, tablets, e-Readers, laptops, net books and other devices, w