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`Paper No. 1
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION INTERNATIONAL
`CORPORATION,
`Patent Owner
`
`Patent No. 8,051,181
`Issued: November 1, 2011
`Filed: February 27, 2007
`Inventors: Victor Larson, et al.
`Title: METHOD FOR ESTABLISHING SECURE COMMUNICATION LINK
`BETWEEN COMPUTERS OF VIRTUAL PRIVATE NETWORK
`____________________
`
`Inter Partes Review No. IPR2014-00486
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`

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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW ............................................................................ 1
`A.
`Certification the ’181 Patent May Be Contested by Petitioner ............ 1
`B.
`Fee for Inter Partes Review (§ 42.15(a)) .............................................. 1
`C. Mandatory Notices (37 CFR § 42.8(b)) ............................................... 1
`1.
`Real Party in Interest (§ 42.8(b)(1)) ........................................... 1
`2.
`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)) ........................................ 3
`D.
`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`(§ 42.104(B)) .................................................................................................. 3
`III. RELEVANT INFORMATION CONCERNING THE CONTESTED
`PATENT ......................................................................................................... 3
`A.
`Effective Filing Date and Prosecution History of the ’181 patent ....... 3
`B.
`Relationship to U.S. Patent Nos. 7,987,274 and 7,188,180 ................. 5
`C.
`Person of Ordinary Skill in the Art ...................................................... 6
`D.
`Construction of Terms Used in the Claims .......................................... 7
`1.
`Secure Name .............................................................................. 7
`2.
`Secure Domain Name ................................................................ 9
`3.
`Unsecured Name ...................................................................... 10
`4.
`Secure Name Service ............................................................... 11
`5.
`Secure Communication Link ................................................... 12
`IV. PRECISE REASONS FOR RELIEF REQUESTED ................................... 13
`A.
`Claims 1-29 Are Anticipated by Beser .............................................. 13
`1.
`Beser Anticipates Claims 1 and 29 .......................................... 14
`2.
`Beser Anticipates Claims 2 and 28 .......................................... 18
`3.
`Beser Anticipates Claims 24 and 26 ........................................ 22
`4.
`Beser Anticipates Claim 3 ....................................................... 26
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`5.
`Beser Anticipates Claim 4 ....................................................... 27
`Beser Anticipates Claims 5-6 ................................................... 27
`6.
`Beser Anticipates Claim 7 ....................................................... 28
`7.
`Beser Anticipates Claim 8 ....................................................... 28
`8.
`Beser Anticipates Claim 9 ....................................................... 29
`9.
`10. Beser Anticipates Claims 10-11............................................... 29
`11. Beser Anticipates Claim 12 ..................................................... 30
`12. Beser Anticipates Claim 13 ..................................................... 31
`13. Beser Anticipates Claims 14-17............................................... 31
`14. Beser Anticipates Claim 18 ..................................................... 33
`15. Beser Anticipates Claims 19-20............................................... 33
`16. Beser Anticipates Claim 21 ..................................................... 33
`17. Beser Anticipates Claim 22 ..................................................... 34
`18. Beser Anticipates Claim 23 ..................................................... 35
`19. Beser Anticipates Claim 25 ..................................................... 35
`20. Beser Anticipates Claim 27 ..................................................... 36
`Beser In View of RFC 2401 Renders Obvious Claims 1-29 ............. 36
`1.
`Claims 1, 2, 24, 26, 28, and 29 Would Have Been
`Obvious .................................................................................... 37
`Claims 3-23, 25, and 27 Would Have Been Obvious .............. 41
`2.
`Beser In View of Kiuchi Renders Obvious Claims 3-4 and 23 ......... 41
`Beser In View of RFC 2543 Renders Obvious Claims 22, 24-27 ..... 42
`Claims 1-6, 8-9, 13-19, and 21-29 Are Anticipated by Kiuchi .......... 43
`1.
`Claims 1 and 29........................................................................ 44
`2.
`Claims 2 and 28........................................................................ 48
`3.
`Claims 24 and 26...................................................................... 51
`4.
`Claims 3-4 and 23 .................................................................... 54
`5.
`Claims 5 and 6 .......................................................................... 54
`6.
`Claim 8 ..................................................................................... 55
`
`B.
`
`C.
`D.
`E.
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`7.
`Claim 9 ..................................................................................... 55
`Claim 13 ................................................................................... 55
`8.
`Claims 14-17 ............................................................................ 56
`9.
`10. Claim 18 ................................................................................... 57
`11. Claim 19 ................................................................................... 57
`12. Claim 21 ................................................................................... 57
`13. Claim 22 ................................................................................... 58
`14. Claim 25 ................................................................................... 58
`15. Claim 27 ................................................................................... 59
`CONCLUSION ............................................................................................. 59
`
`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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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
`
`I.
`
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`A. Certification the ’181 Patent May Be Contested by Petitioner
`Petitioner certifies that U.S. Patent No. 8,051,181 (the ’181 patent) (Ex.
`
`1025) is available for inter partes review. Neither Petitioner, nor any party in
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`privity with Petitioner, has filed a civil action challenging the validity of any claim
`
`of the ’181 patent. The ’181 patent also has not been the subject of a prior inter
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`partes review by Petitioner or a privy of Petitioner.
`
`The ’181 patent was asserted against Petitioner in proceedings alleging
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`infringement as explained in § C.2, below. This petition is nonetheless proper as it
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`is accompanied by a motion for joinder to (i) IPR2014-00483 and -00484 filed by
`
`Apple, and (ii) IPR2014-00403 and -00404 filed by Microsoft. The one-year
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`period specified in § 315(b) does not apply to a petition that is accompanied by a
`
`request for joinder under 35 U.S.C. § 315(c). For the reasons in § III.B below and
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`in the accompanying motion for joinder, proceedings based on the petitions should
`
`be joined to enable review of these admittedly patentably indistinct patent claims.
`
`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.
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`1
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`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.
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`2. Other Proceedings (§ 42.8(b)(2))
`On November 1, 2011, Petitioner was served with a complaint for
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`infringement of the ’181 patent, which resulted in civil action no. 11-cv-00563-
`
`LED (E.D. TX). This action was stayed after Patent Owner, on November 4, 2011,
`
`filed a complaint in the International Trade Commission, which resulted in
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`investigation no. 0337-TA-818. That investigation was withdrawn on July 20,
`
`2012. On September 28, 2012, Patent Owner filed another complaint in the ITC,
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`resulting in investigation no. 337-TA-858, which also was withdrawn (on May 15,
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`2013). In June 2013, the stay in the Texas litigation was lifted and the action
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`consolidated with civil action no. 6:12-cv-00855-LED. Patent Owner did allege
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`infringement of the ’181 patent in the latter action.
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`The ’181 patent also is the subject of inter partes reexamination Control No.
`
`95/001,949 where all claims stand finally rejected. The Office issued a Right of
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`Appeal Notice in the ’949 proceeding on August 16, 2013.
`
`Designation of Lead and Backup Counsel
`
`3.
`Lead Counsel
`Jeffrey P. Kushan (Reg. No. 43,401)
`jkushan@sidley.com
`(202) 736-8914
`4.
`
`Backup Lead Counsel
`Joseph A. Micallef (Reg. No. 39,772)
`jmicallef@sidley.com
`(202) 736-8492
`Service Information (§ 42.8(b)(4))
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`2
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`Service on Petitioner may be made by e-mail, or by mail or hand delivery to:
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`Sidley Austin LLP, 1501 K Street, N.W., Washington, D.C. 20005. The fax
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`number for lead and backup counsel is (202) 736-8711.
`
`Proof of Service (§§ 42.6(e) and 42.105(a))
`D.
`Proof of service of this petition is provided in Attachment A.
`
`II.
`
`Identification of Claims Being Challenged (§ 42.104(b))
`
`Claims 1-29 of the ’181 patent are unpatentable as being anticipated under
`
`35 U.S.C. § 102(a), (b) & (e), and/or for being obvious over the prior art under 35
`
`U.S.C. § 103. Specifically:
`
`(i)
`
`Claims 1-29 are anticipated under § 102(e) by U.S. Patent No.
`6,496,867 to Beser (“Beser”) (Ex. 1031);
`
`(ii) Claims 1-29 are obvious under § 103 based on Beser (Ex. 1031) in
`view of RFC 2401 (Ex. 1032);
`
`(iii) Claims 3-4 and 23 are obvious under § 103 based on Beser (Ex. 1031)
`in view of Kiuchi (Ex. 1004);
`
`(iv) Claims 22 and 24-27 are obvious under § 103 based on Beser (Ex.
`1031) in view of RFC 2543 (Ex. 1032);
`
`(v) Claims 1-6, 8-9, 13-19 and 21-29 are anticipated under § 102(b) by
`Kiuchi (Ex. 1004).
`
`Petitioner’s proposed construction of the claims, the evidence relied upon, and the
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`precise reasons why the claims are unpatentable are provided in § IV, below. The
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`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 ’181 patent
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`The ’181 patent issued from U.S. Application No. 11/679,416, filed
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`February 27, 2007, which is a continuation of U.S. Application No. 10/702,486
`
`(issued as U.S. Patent No. 7,188,180) (the ’180 patent). Ex. 1025 at 81. The ’486
`
`application is a division of U.S. Application No. 09/558,209, filed April 26, 2000,
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`which is a continuation-in-part of U.S. Application No. 09/504,783, filed on
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`February 15, 2000 (issued as U.S. Patent No. 6,502,135) (the ’135 patent). The
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`’783 application is a continuation-in-part of U.S. Application No. 09/429,643, filed
`
`on October 29, 1999, and claims priority to Provisional Application Nos.
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`60/106,261, filed October 30, 1998 and 60/137,704, filed June 7, 1998.
`
`Claims 1, 2, 24, 26, 28, and 29 are independent claims. Each of these claims
`
`relies on information found only in the disclosures of applications filed on or after
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`April 26, 2000, the date the ’209 application was filed. For example, each
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`independent claim recites a “secure name” or a “secure name service.” There is
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`no mention of the terms “secure name” and “secure name service” in any
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`application filed prior to the ’209 application, much less a sufficient written
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`description of these terms as they are used in the claims of the ’181 patent. In fact,
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`even the ’209 and subsequently filed applications themselves provide no written
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`description support for these claim elements and concepts. Instead, they describe a
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`“secure domain name service.”0F1 Accordingly, the effective filing date for
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`claims 1-29 of the ’181 patent cannot be earlier than the filing date of the’209
`
`application, April 26, 2000. This also is consistent with Patent Owner’s position
`
`during the inter partes reexamination of the ’180 patent, where it acknowledged
`
`the priority date of the ’180 patent was not earlier than April 26, 2000. Ex. 1023 at
`
`232.
`
`B. Relationship to U.S. Patent Nos. 7,987,274 and 7,188,180
`Patent Owner has admitted the claims of the ’181 patent are not patentably
`
`distinct from claims in the ’180 patent (parent of the ’181 patent) and U.S. Patent
`
`No. 7,987,274 (the ’274 patent) (child of the ’181 patent). During prosecution of
`
`the ’181 patent, the Office imposed obviousness-type double patenting rejections
`
`of the pending claims over (i) claim 1 of co-pending application 11/839,987, which
`
`issued as the ’274 patent, and (ii) claim 1 of the ’180 patent. Ex. 1026 at 815.
`
`Patent Owner did not dispute these findings, but instead filed terminal disclaimers
`
`to obviate the rejections. Ex. 1026 at 795-797, 815, 1045 (10/8 & 11/4/2010).
`
`Similarly, the Office rejected claims that issued in the ’274 patent for obviousness-
`
`
`1
`During prosecution of the ’181 patent, Patent Owners contended a “secure
`
`name” and “Secure name service” was a subset of a “secure name service.” Ex.
`
`1029 at ¶¶ 224-226; see Ex. 1026 at 813 (Remarks Oct. 8, 2010).
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`type double patenting over claims in each of the ’180 and ’181 patents. Ex. 1028
`
`at 183-186, 250, 380-381. Again, Patent Owner did not dispute these findings, but
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`instead filed terminal disclaimers over the ’180 and ’181 patents to obviate the
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`double patenting rejections. See Ex. 1028 at 2741 and 296; see id. at 632 and 282.
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`By acquiescing to, rather than contesting, the findings of obviousness-type double
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`patenting, Patent Owner has conceded the ’180, ’181 and ’274 claims are not
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`patentably distinct. A final written decision finding the subject matter of claims in
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`either of the ’274 or the ’180 patents unpatentable would estop Patent Owner from
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`contending the claims in the ’181 are patentable. See 37 C.F.R. 42.73(d)(3).
`
`Among other things, such a finding would preclude Patent Owner from asserting
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`the ’181 patent claims are patentable in the currently pending inter partes
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`reexamination proceeding (i.e., Reexamination Control No. 95/001,949).
`
`Person of Ordinary Skill in the Art
`
`C.
`A person of ordinary skill in the art in the field of the ’181 patent would
`
`have been someone with a good working knowledge of networking protocols,
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`including those employing security techniques, as well as computer systems that
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`support these protocols and techniques. The person also would be very familiar
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`with Internet standards related to communications and security, and with a variety
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`of client-server systems and technologies. The person would have gained this
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`knowledge either through education and training, several years of practical
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`working experience, or through a combination of these. Ex. 1029 ¶ 59.
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`D. Construction of Terms Used in the Claims
`In this proceeding, claims must be given their broadest reasonable
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`interpretation in light of the specification. 37 CFR § 42.100(b). In reaching its
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`conclusions about the meaning of the claims, the Board should consider Patent
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`Owner’s contentions in concurrent litigation involving the ’181 and closely related
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`patents including the ’697, ’135, ’151, ’504 and ’211 patents. Also, if Patent
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`Owner contends terms in the claims have a special meaning, those contentions
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`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
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`Fed. Reg. 48764 at II.B.6 (August 14, 2012); cf. In re Youman, 679 F.3d 1335,
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`1343 (Fed. Cir. 2012). In the constructions below, Petitioner identifies
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`representative subject matter within the scope of the claims read with their
`
`broadest reasonable interpretation. Petitioner expressly reserves its right to
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`advance different constructions in district court litigation, which employs a
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`different claim construction standard.
`
`Secure Name
`1.
`The ’181 patent disclosure does not use, much less define, the term “secure
`
`name.” In the claims, a “secure name” is said to be associated with a network
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`address of a first or second device. See, e.g., claim 2 (“…the message requesting a
`
`network address associated with the secure name of the second device”). The
`
`claims also differentiate a “secure name” from an “unsecured name.” See, e.g.,
`
`claims 21, 26. The portrayal of a “secure name” in this manner is consistent with
`
`arguments Patent Owner made during prosecution. See, e.g., Ex. 1026 (’181 FH)
`
`at 813 (“… Applicant submits that a “secure name” is a name associated with a
`
`network address associated of a first device. The name can be registered such that
`
`a second device can obtain the network address associated with the first device
`
`from a secure name registry and send a message to the first device. The first
`
`device can then send a secure message to the second device.”).
`
`Patent Owner also contended during prosecution that a “secure name” is
`
`broader in its meaning than a “secure domain name.” As it stated:
`
`The claimed “secure name” includes, but is not limited to, a secure
`domain name. For example, a “secure name” can be a secure non-
`standard domain name, such as a secure non-standard top-level
`domain name (e.g., .scom) or a telephone number.
`
`Ex. 1026 (181 FH) at 813; Ex. 1029 at ¶¶ 212-214.
`
`Patent Owner discussed the meaning of the term “secure domain name” in
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`two reexaminations of the ’180 patent. In Control No. 95/001,270, Patent Owner
`
`argued that the claim terms “secure domain name” and “secure domain name
`
`service” had meanings different than the conventional meaning of the terms
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`“domain name” and “domain name service.” Specifically, Patent Owner
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`contended “a secure domain name is a [sic] ‘a non-standard domain name.’” Ex.
`
`1023 at 229-31. Patent Owner also explained that a “secure domain name” was
`
`different from a standard domain name because a secure domain name cannot be
`
`resolved using a conventional domain name server. See Ex. 1029 at ¶¶ 210-235.
`
`The Office adopted Patent Owner’s contentions in the ACP, stating:
`
`The ’180 patent distinguishes the claimed secure domain names and
`secure domain name service from a conventional domain name
`service by explaining that a secure domain name is a non-standard
`domain name and that querying a convention[al] domain name server
`using a secure domain name will result in a return message indicating
`that the URL is unknown (’180 patent at 51:25-35) and that a secure
`domain name service can resolve addresses for a secure domain name
`whereas a conventional domain name service cannot resolve addresses
`for a secure domain name (’180 patent at 51:25-35). (emphasis added)
`
`Ex. 1023 (95/001,270 FH) at 129-130 (ACP (Jun. 16, 2010)).
`
`In view of these considerations, the broadest reasonable interpretation of the
`
`term “secure name” would encompass a “non-standard domain name that cannot
`
`be resolved by a conventional domain name server.” Ex. 1029 at ¶¶ 209-215.
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`Included within this definition would be non-standard domain names such as
`
`telephone numbers or non-standard top-level domains.
`
`2.
`
`Secure Domain Name
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`The ’181 patent does not define the term “secure domain name.” As
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`explained in § 1 above, Patent Owner represented during prosecution of the ‘181
`
`patent that a “secure name” is not a conventional domain name and cannot be
`
`resolved using a conventional domain name server. The term “secure domain
`
`name,” because it uses an additional term, is arguably narrower than a “secure
`
`name” by the use of a “domain name” rather than simply a “name.” A “domain
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`name” would be understood by a person of ordinary skill to be a hierarchical
`
`sequence of words in decreasing order of specificity that corresponds to a
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`numerical IP address. Ex. 1029 at ¶¶ 85-87; see generally ¶¶ 82-90. Patent Owner
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`has contended, however, the term “domain name” is simply “a name corresponding
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`to an IP address” (see, e.g., Ex. 1066 at 14-15). Considering these points, the term
`
`“secure domain name” in its broadest reasonable interpretation would encompass
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`a “non-standard domain name that corresponds to a network address and cannot
`
`be resolved by a conventional domain name server.” See Ex. 1029 at ¶¶ 209-242.
`
`Unsecured Name
`3.
`The ’181 patent does not expressly define the term “unsecured name.” In
`
`contrast to a “secure name”, a person of ordinary skill would understand that an
`
`“unsecured name” would include a conventional domain name that can be resolved
`
`by a conventional domain name server. The use of “name” rather than “domain
`
`name,” however, indicates the term in its broadest reasonable interpretation is
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`broader than simply a “domain name,” and would include any name that identifies
`
`a computer. Ex. 1029 at ¶¶ 247-250. This interpretation is consistent with Patent
`
`Owner’s contentions in litigation, where it asserted an “unsecured name” is “a
`
`name that can be resolved by a conventional name service.” Ex. 1071 at 2. Thus,
`
`the term “unsecured name” in its broadest reasonable interpretation at least
`
`encompasses “a name that can be resolved by a conventional name service.”
`
`Secure Name Service
`4.
`There is no mention of the term “secure name service” in the ’181 patent
`
`disclosure. Instead, this phrase appears only in the claims, and was first added by
`
`an amendment to the claims during examination. Ex. 1026 at 806 (Claims Oct. 8,
`
`2010). In connection with that amendment, Patent Owner argued a “secure name
`
`service is a service for resolving secure names into network addresses.” Ex. 1026
`
`at 812 (Remarks Oct. 8, 2010) (emphasis in original). Based on Patent Owner’s
`
`contentions, a “secure name service” in its broadest reasonable interpretation
`
`would include any type of name service that can act on secure names (e.g., by
`
`providing the network address corresponding to the secure name), including a
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`“secure domain name service” specified in the ’180 patent claims. Ex. 1029 at
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`¶¶ 224-226, 233-234. The broadest reasonable interpretation of a “secure name
`
`service” thus would include “a service that can resolve network addresses for a
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`secure name for which a conventional name service cannot resolve addresses.”
`
`Ex. 1029 at ¶ 235; see id. at ¶¶ 216-234.
`
`Secure Communication Link
`
`5.
`The ’181 patent explains a “secure communication link” is “a virtual private
`
`communication link over the computer network.” Ex. 1025 at 6:57-59. A “secure
`
`communication link” therefore encompasses a VPN. Ex. 1029 at ¶¶ 252-256. In
`
`its broadest reasonable interpretation, a “secure communication link” (like a VPN)
`
`enables computers to privately and directly communicate with each other over a
`
`public network. See, e.g., Ex. 1025 at 39:4-13. A person of ordinary skill would
`
`have understood in April of 2000 that any technique that protects the anonymity of
`
`the computers involved in the communications could be used to establish a VPN.
`
`Such a person would have understood that a VPN could be established without
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`encrypting the network traffic (e.g., by using “obfuscation” techniques to ensure
`
`the security and anonymity of the network traffic over a public network). See Ex.
`
`1029 ¶¶ 258-260; id. at ¶¶ 124-126, 137-140; Ex. 1043 at 2; Ex. 1044 at 2-4. This
`
`is consistent with ’181 patent disclosure. See, e.g., Ex. 1025 at 1:50-51 (“Data
`
`security is usually tackled using some form of data encryption”); 2:37-47 (referring
`
`to technique that does not use encryption to protect the anonymity of the VPN); see
`
`also Ex. 1029 ¶¶ 258-260. The ’181 patent also shows use of TARP routers that
`
`do encrypt all network traffic (Ex. 1025 at 3:6-3:36), but does not state that TARP
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`routers are required for the disclosed DNS-based VPN scheme. See, e.g., Ex. 1025
`
`at 39:32-36 (“The VPN is preferably implemented using the IP address “hopping”
`
`features of the basic invention described above…” (emphasis added)). The ’181
`
`patent also does not show any encryption steps in the DNS-related VPN schemes it
`
`describes. See Ex. 1025 at 38:51-41:40.
`
`Patent Owner also has contended in other proceedings involving related
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`patents that a “secure communication link” (e.g., a VPN) encompasses direct
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`communications between computers transmitted via intermediary computers and
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`devices. One district court has found, for example, that the common disclosure in
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`the ’181 and ’135 patents suggests that the “…routers, firewalls, and similar
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`servers that participate in typical network communication do not impede ‘direct’
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`communication between a client and target computer.” Ex. 1018 at 8 (FN2).
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`In view of these considerations, the broadest reasonable interpretation of
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`“secure communication link” would encompass “a communication link in which
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`computers privately and directly communicate with each other on insecure paths
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`between the computers where the communication is both secure and anonymous,
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`and where the data transferred may or may not be encrypted.” See Ex. 1029 at
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`¶¶ 251-260.
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`IV. Precise Reasons for Relief Requested
`A. Claims 1-29 Are Anticipated by Beser
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`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. 1031 at 1. Petitioner submits that claims 1-29 of the
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`’181 patent are unpatentable in view of Ex. 1031 (Beser), considered alone or in
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`conjunction Ex. 1032 (RFC 2401) and knowledge in the field of the ’181 patent,
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`for the reasons set forth below, as supported by ¶¶ 277-371 of Ex. 1029.
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`Beser Anticipates Claims 1 and 29
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`1.
`Beser (Ex. 1031) describes systems that establish an IP tunneling association
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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. 1029 at ¶¶ 277-286.
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`Beser shows that the originating end device is associated with the first network
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`device and the terminating end device is associated with the second network
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`device. Ex. 1029 at ¶¶ 282-283, 285, 302-305; see id. at ¶¶ 329-339. Beser
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`explains that the first and second network devices may be edge routers, “gateway”
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`computers, or other network devices. Ex. 1029 at ¶¶ 282-283, 286, 302-305, 316-
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`317, 337-339. Beser explains the trusted-third-party network device can be a
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`domain name server, and it also can include a subscriber phone number directory
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`service. Ex. 1029 at ¶¶ 284-287, 305-309; see id. at ¶¶ 282, 324-331.
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`Beser explains the originating and terminating devices can be VOIP devices
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`such as phones or personal computers. Ex. 1029 at ¶¶ 279, 282-283, 294-299; see
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`id. at ¶¶ 286-287. Beser shows each end device is associated with multiple
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`identifiers, including a unique identifier that is registered with the trusted-third-
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`party network device and is used to initiate secure IP tunnels. Ex. 1029 at ¶¶ 318-
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`323. Beser describes a configuration where each end device is associated with a
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`phone number, a domain name, and a public IP address. Ex. 1029 at ¶¶ 290-291,
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`322-323; see id. at ¶¶ 306, 336, 339. Beser shows that, in that configuration, the
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`phone number can be the unique identifier registered with the trusted-third-party
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`network device, (Ex. 1029 at ¶¶ 306-309, 319-323), while the domain name is a
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`standard domain name registered with a standard name server. Ex. 1029 at ¶¶ 322-
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`323, 379-380, 551. Therefore the terminating end device has a secure name (e.g.,
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`the phone number that is registered with the trusted-third-party network device)
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`and an unsecured name (e.g., its domain name). See §§ III.D.1-III.D.3.
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`The Beser systems are implemented using programmed computers and other
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`programmable devices that have storage media containing code that configures
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`how those devices function. Ex. 1029 at ¶ 382. Beser thus shows “A non-
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`transitory machine-readable medium comprising instructions for a method of
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`communicating with a first device associated with a secure name and an unsecured
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`name” as specified in claim 1. Ex. 1029 at ¶¶ 372-383. Beser also shows “A non-
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`transitory machine-readable medium comprising instructions for a method of
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`communicating with a device having a secure name,” as specified in claim 29. Ex.
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`1029 at ¶¶ 615-623.
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`To establish an IP tunnel, the originating end device sends a request
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`containing a unique identifier (e.g., a phone number) specifying a destination (i.e.,
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`a terminating end device). Ex. 1029 at ¶¶ 285, 314-324. The first network device
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`receives the request, evaluates it, and then sends it to the trusted-third-party
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`network device, if appropriate. Ex. 1029 at ¶¶ 316-317; see id. at ¶¶ 302-305.
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`Beser explains that after the trusted-third-party network device receives the
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`request, it evaluates the request to determine whether it contains a unique identifier
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`that is associated with a secure terminating device. Ex. 1029 at ¶¶ 324-331. For
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`example, if the identifier (e.g., a phone number) is listed in the trusted-third-party
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`network device’s directory of subscribers, the identifier corresponds to a secure
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`destination. Ex. 1029 at ¶¶ 284-286, 305-309, 324-331. The trusted-third-party
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`network device’s directory of subscribers associates each subscriber’s phone
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`number to the IP addresses of that subscriber’s end device and second network
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`device. Ex. 1029 at ¶¶ 284-287, 324-329. Thus, the IP address of the second
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`network device is associated with the terminating end device. Ex. 1029 at ¶ 388.
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`If the unique identifier corresponds to a secure destination, the trusted-third-
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`party network device will automatically initiate an IP tunnel between the end
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`devices by negotiating private IP addresses that will be used to transmit data
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`between these end devices across a public network. Ex. 1029 at ¶¶ 278-281, 326-
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`338. First, the trusted-third-party network device will send a message to the
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`Petition for Inter Partes Review of U.S. Patent No. 8,051,181
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`second network device requesting to negotiate private IP addresses. Ex. 1029 at
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`¶¶ 329-331. Then, the private IP address for the originating device will be
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`transmitted from the first network devi