IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Larson et al.
`U.S. Patent No.: 7,418,504 Attorney Docket No.: 38868-0005IP2
`Issue Date:
`August 26, 2008
`Appl. Serial No.: 10/714,849
`Filing Date:
`November 18, 2003
`Title:
`AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS
`
`USING SECURE DOMAIN NAMES
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT NO. 7,418,504
`PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`

`

`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`III. 
`
`IV. 
`
`V. 
`
`3. 
`4. 
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ........................................... 1 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................................ 1 
`B.  Related Matters Under 37 C.F.R. § 42.8(b)(2) .................................................... 1 
`C.  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ................................. 2 
`D.  Service Information .............................................................................................. 2 
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................................ 3 
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104 .......................................... 3 
`A.  Grounds for Standing Under 37 C.F.R. § 42.104(a) ............................................ 3 
`B.  Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested .......................... 3 
`C.  Claim Construction under 37 C.F.R. §§ 42.104(b)(3) .......................................... 5 
`1. 
`Domain Name (Claims 1, 2, 6, 14-17, 19-23, 26-41, 43-47, and 50-60) ... 6 
`2. 
`Domain Name Service System (Claims 1, 2, 6, 14-17, 19-23, 26-41, 43-
`47, and 50-60) ........................................................................................... 6 
`Indication (Claims 1, 2, 6, 14-17, 19-23, 26-41, 43-47, and 50-60)........... 7 
`Secure Communication Link (Claims 1, 16-17, 20-23, 26-27, 31-32, 35-
`36, 47, 51, and 60) .................................................................................... 8 
`Transparently (Claims 27 and 51) ............................................................. 9 
`5. 
`Between [A] and [B] (Claims 16, 27, 33, 40, 51, and 57) .......................... 9 
`6. 
`SUMMARY OF THE ‘504 PATENT ........................................................................... 10 
`A.  Brief Description ................................................................................................. 10 
`B.  Summary of the Prosecution History of the ’504 Patent .................................... 10 
`C.  The Effective Priority Date of the Claims of the ‘504 Patent .............................. 12 
`MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR WHICH AN
`IPR IS REQUESTED, THUS ESTABLISHING A REASONABLE LIKELIHOOD THAT
`AT LEAST ONE CLAIM OF THE ‘504 PATENT IS UNPATENTABLE ..................... 13 
`A. 
`[GROUND 1] – Aventail Anticipates Claims 1, 2, 6, 14-17, 19-23, 26-41, 43-47,
`and 50-60 ........................................................................................................... 14 
`1. 
`Aventail Anticipates Claim 1 .................................................................... 22 
`2. 
`Aventail Anticipates Claim 36 .................................................................. 27 
`3. 
`Aventail Anticipates Claim 60 .................................................................. 30 
`4. 
`Aventail Anticipates Claims 2 and 37 ...................................................... 33 
`5. 
`Aventail Anticipates Claim 6 .................................................................... 35 
`6. 
`Aventail Anticipates Claims 14 and 38 .................................................... 35 
`7. 
`Aventail Anticipates Claims 15 and 39 .................................................... 36 
`8. 
`Aventail Anticipates Claims 16 and 40 .................................................... 37 
`9. 
`Aventail Anticipates Claims 17 and 41 .................................................... 40 
`
`i
`
`

`

`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`10.  Aventail Anticipates Claims 19 and 43 .................................................... 41 
`11.  Aventail Anticipates Claims 20 and 44 .................................................... 41 
`12.  Aventail Anticipates Claims 21 and 45 .................................................... 42 
`13.  Aventail Anticipates Claims 22 and 46 .................................................... 43 
`14.  Aventail Anticipates Claims 23 and 47 .................................................... 44 
`15.  Aventail Anticipates Claims 26 and 50 .................................................... 44 
`16.  Aventail Anticipates Claims 27, 33, 51, and 57 ....................................... 45 
`17.  Aventail Anticipates Claims 28 and 52 .................................................... 46 
`18.  Aventail Anticipates Claims 29 and 53 .................................................... 46 
`19.  Aventail Anticipates Claims 30 and 54 .................................................... 47 
`20.  Aventail Anticipates Claims 31 and 55 .................................................... 48 
`21.  Aventail Anticipates Claims 32 and 56 .................................................... 49 
`22.  Aventail Anticipates Claims 34 and 58 .................................................... 49 
`23.  Aventail Anticipates Claims 35 and 59 .................................................... 50 
`[GROUND 2] – Aventail Connect In View of Aventail Extranet Center Renders
`Claims 1, 2, 6, 14-17, 19-23, 26-41, 43-47, and 50-60 Obvious ........................ 51 
`[GROUND 3] – Aventail In View of RFC 1034 Renders Obvious Claims 20, 21,
`35, 44, 45, and 59 .............................................................................................. 52 
`[GROUND 4] – Aventail In View of Lindblad Renders Claims 32 and 56 Obvious
` ........................................................................................................................... 53 
`[GROUND 5] – Aventail In View of RFC 2660 Renders Obvious Claims 16, 27,
`33, 40, 51, and 57 .............................................................................................. 55 
`REDUNDACY ............................................................................................................ 59 
`VI. 
`VII.  CONCLUSION .......................................................................................................... 59 
`
`
`C. 
`
`B. 
`
`D. 
`
`E. 
`
`ii
`
`

`

`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`
`EXHIBITS
`
`MSFT-1001
`
`U.S. Patent No. 7,418,504 to Larson et al. (“the ‘504 patent”)
`
`MSFT-1002
`
`Excerpts from the Prosecution History of the ‘504 Patent (“the Prose-
`cution History”)
`
`MSFT-1003
`
`(Reserved)
`
`MSFT-1004
`
`Curriculum Vitae of Roch Guerin
`
`MSFT-1005
`
`Declaration of Chris A. Hopen re the ’504 Patent
`
`MSFT-1006
`
`Declaration of James Chester re the ’504 Patent
`
`MSFT-1007
`
`Aventail Connect v3.01/2.51 Administrator’s Guide and Aventail Ex-
`traNet Server v3.0 Administrator’s Guide (UNIX and Windows NT)
`(1996-1999)
`
`MSFT-1008
`
`(Reserved)
`
`MSFT-1009
`
`U.S. Patent No. 6,225,993 to Lindblad et al. (“Lindblad”)
`
`MSFT-1010
`
`MSFT-1011
`
`MSFT-1012
`
`MSFT-1013
`
`MSFT-1014
`
`Mockapetris, P., RFC 1034, “Domain Names – Concepts and Facili-
`ties,” November 1987
`
`Postel, J., et al., RFC 1591, “Domain Name System Structure and
`Delegation,” March 1994
`
`Rescorla, E., et al., RFC 2660, draft 01, “The Secure HyperText Trans-
`fer Protocol,” February 1996
`
`VirnetX’s Opening Claim Construction Brief in VirnetX Inc. v. Cisco
`Systems, Inc., et al., 6:10-CV-417 (11/4/11) (EDTX)
`
`VirnetX’s Reply Claim Construction Brief in VirnetX Inc. v. Cisco Sys-
`tems, Inc., et al., 6:10-CV-417 (12/19/11) (EDTX)
`
`iii
`
`

`

`MSFT-1015
`
`MSFT-1016
`
`MSFT-1017
`
`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`Memorandum Opinion and Order in VirnetX Inc. v. Cisco Systems,
`Inc., et al., 6:10-CV-417 (4/25/12) (EDTX)
`
`Final Office Action in Inter Partes Reexamination – Right of Appeal
`Notice, Control No. 95/001,788, June 25, 2013 (USPTO)
`
`
`Final Office Action in Inter Partes Reexamination – Right of Appeal
`Notice, Control No. 95/001,851, June 25, 2013 (USPTO)
`
`
`
`
`MSFT-1018
`
`(Reserved)
`
`MSFT-1019
`
`IPR2013-00393, Patent Owner’s Preliminary Response
`
`MSFT-1020
`
`IPR2013-00394, Patent Owner’s Preliminary Response
`
`MSFT-1021
`
`(Reserved)
`
`MSFT-1022
`
`Declaration of Dr. Roch Guerin re the ’504 Patent and Aventail
`
`MSFT-1023 to MSFT-1040 (Reserved)
`
`MSFT-1041
`
`Bradner, S., RFC 2026, “The Internet Standards Process – Revision
`3,” October 1996
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`Microsoft Corporation (“Petitioner” or “Microsoft”) petitions for Inter Partes Review
`
`(“IPR”) under 35 U.S.C. §§ 311–319 and 37 C.F.R. § 42 of claims 1, 2, 6, 14-17, 19-23, 26-
`
`41, 43-47, and 50-60 (“the Challenged Claims”) of U.S. Patent No. 7,418,504 (“the ‘504 pa-
`
`tent”). As explained in this petition, there exists a reasonable likelihood that Microsoft will
`
`prevail with respect to at least one of the Challenged Claims.
`
`The Challenged Claims are unpatentable based on teachings set forth in at least the
`
`references presented in this petition. Microsoft respectfully submits that an IPR should be
`
`instituted, and that the Challenged Claims should be canceled as unpatentable.
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1)
`
`A.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`
`
`Petitioner, Microsoft Corporation, is the real party-in-interest.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The ‘504 patent is the subject of a number of civil actions including: (i) Civ. Act. No.
`
`6:13-cv-00211-LED (E.D. Tex.), filed February 26, 2013; (ii) Civ. Act. No. 6:12-cv-00855-
`
`LED (E.D. Tex.), filed November 6, 2012; (iii) Civ. Act. No. 6:10-cv-00417-LED (E.D. Tex.),
`
`filed August 11, 2010; (iv) Civ. Act. No. 6:11-cv-00018-LED (E.D. Tex), (iv) Civ. Act. No.
`
`6:13-cv-00351-LED (E.D. Tex), filed April 22, 2013 (“the 2013 VirnetX litigation”); (v) Civ.
`
`Act. No. 6:13-mc-00037 (E.D. Tex); and (vi) Civ. Act. No. 9:13-mc-80769 (E.D. Fld).
`
`The ‘504 patent is also the subject of two inter partes reexamination nos. 95/001,788
`
`and 95/001,851. On June 25, 2013, the Office issued a Right of Appeal Notice in the ‘788
`
`1
`
`

`

`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`proceeding, maintaining rejections of all 60 claims in the ‘504 patent. Ex. 1016 at 3, 7-15.
`
`Similarly, on June 25, 2013, the Office issued a Right of Appeal Notice in the ‘851 proceed-
`
`ing maintaining rejections of all 60 claims (with the exception of claim 11) in the ‘504 patent.
`
`Ex. 1017 at 3, 6.
`
`The ‘504 patent is the subject of two petitions for inter partes review filed by RPX
`
`Corporation, which have been designated as IPR2014-00176 and IPR2014-00177. The
`
`‘504 patent was also the subject of petitions for inter partes review filed by New Bay Capital,
`
`LLC, which was designated as IPR2013-00377 and subsequently dismissed, and by Apple,
`
`Inc., which were designated as IPR2013-00393 and IPR2013-00394 and not instituted.
`
`Concurrently with this petition, the Petitioner is filing two other petitions for inter
`
`partes review of the ‘504 patent, identified as attorney docket numbers 38868-0005IP1 and
`
`38868-0005IP3.
`
`Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`C.
`Microsoft provides the following designation of counsel.
`
`LEAD COUNSEL
`W. Karl Renner, Reg. No. 41,265
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 202-783-2331
`
`
`D.
`
`Service Information
`
`BACKUP COUNSEL
`Kevin E. Greene, Reg. No. 46,031
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-626-6376
`F: 202-783-2331
`
`Please address all correspondence and service to counsel at the address provided
`
`2
`
`

`

`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`in Section I(C). Microsoft also consents to electronic service by email at IPR38868-
`
`0005IP2@fr.com.
`
`II.
`
`PAYMENT OF FEES – 37 C.F.R. § 42.103
`
`Microsoft authorizes the Patent and Trademark Office to charge Deposit Account No.
`
`06-1050 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and further authorizes pay-
`
`ment for any additional fees to be charged to this Deposit Account.
`
`III.
`
`REQUIREMENTS FOR IPR UNDER 37 C.F.R. § 42.104
`
`A.
`
`Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Microsoft certifies that the ‘504 Patent is eligible for IPR. The present petition is be-
`
`ing filed within one year of service of a complaint against Microsoft in the 2013 VirnetX liti-
`
`gation.1 Microsoft is not barred or estopped from requesting this review challenging the
`
`Challenged Claims on the below-identified grounds.
`
`B.
`
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`
`Microsoft requests an IPR of the Challenged Claims on the grounds set forth in the
`
`table shown below, and requests that each of the Challenged Claims be found unpatenta-
`
`ble. An explanation of how these claims are unpatentable under the statutory grounds iden-
`
`tified below is provided in the form of a detailed description that indicates where each ele-
`
`ment can be found in the cited prior art, and the relevance of that prior art. Additional ex-
`
`
`1The complaint in the 2013 VirnetX litigation was served on April 23, 2013.
`
`3
`
`

`

`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`planation and support for each ground of rejection is set forth in Exhibit MSFT-1022, the
`
`Declaration of Dr. Roch Guerin (“Guerin Declaration”), referenced throughout this Petition.
`
`Ground
`Ground 1
`
`Ground 2
`
`Ground 3
`
`‘504 Patent Claims
`1, 2, 6, 14-17, 19-23, 26-
`41, 43-47, 50-60
`1, 2, 6, 14-17, 19-23, 26-
`41, 43-47, 50-60
`20, 21, 35, 44, 45, 59
`
`Ground 4
`
`32, 56
`
`Ground 5
`
`16, 27, 33, 40, 51, 57
`
`Basis for Rejection
`Anticipated under § 102 by Aventail
`
`Obvious under § 103 based on Aventail Con-
`nect in view of Aventail Extranet Center
`Obvious under § 103 based on Aventail in
`view of RFC 1034
`Obvious under § 103 based on Aventail in
`view of Lindblad
`Obvious under § 103 based on Aventail in
`view of RFC 2660, draft 01
`
`The ‘504 patent issued from a string of applications allegedly dating back to an origi-
`
`nal application filed on October 30, 1998. However, as outlined in section IV.C, the effective
`
`filing date for the embodiments recited by the Challenged Claims of the ‘504 patent is no
`
`earlier than February 15, 2000.
`
`Aventail qualifies as prior art under 35 U.S.C. §§ 102(a) and (b). Specifically, Aven-
`
`tail (Ex. 1007) is a printed publication that was publicly distributed no later than January 31,
`
`1999. Ex. 1005 at ¶¶ 11-36; Ex. 1006 at ¶¶ 11-24.
`
`RFC 1034 qualifies as prior art under 35 U.S.C. § 102(b). Specifically, RFC 1034
`
`(Ex. 1010) was published in November 1987 by the Internet Engineering Task Force (IETF).
`
`Ex. 1010.
`
`4
`
`

`

`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`Lindblad qualifies as prior art under 35 U.S.C. § 102(e). Specifically, Lindblad (Ex.
`
`1009) is a patent that was filed on April 22, 1996 and issued May 1, 2001. Ex. 1009.
`
`Therefore, Lindblad is a patent that issued on an application that was filed before any of the
`
`applications to which the ‘504 patent claims priority.
`
`RFC 2660 qualifies as prior art under 35 U.S.C § 102(b). Specifically, draft 01 of
`
`RFC 2660 (Ex. 1012) was published in February 1996 by the Internet Engineering Task
`
`Force (IETF). RFC 2660 was publically distributed no later than February 1996. Ex. 1012.
`
`Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`C.
`A claim subject to IPR is given its “broadest reasonable construction in light of the
`
`
`
`specification of the patent in which it appears.” 2 37 C.F.R. § 42.100(b). For purposes of
`
`this proceeding only, Microsoft submits constructions for the following terms. All remaining
`
`terms should be given their plain meaning.
`
`
`
`
`2 Because the standards of claim interpretation applied in litigation differ from PTO proceed-
`
`ings, any interpretation of claim terms in this IPR is not binding upon Microsoft in any litiga-
`
`tion related to the subject patent. See In re Zletz, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
`
`Additionally, Microsoft does not acquiesce to Patent Owner’s or the district court’s (or any-
`
`one else’s) constructions, and otherwise reserves all of its rights to argue, contest, and/or
`
`appeal the constructions.
`
`5
`
`

`

`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`1. Domain Name (Claims 1, 2, 6, 14-17, 19-23, 26-41, 43-47, and
`50-60)
`The Patent Owner has asserted to the PTAB that that a “domain name” means “a
`
`name corresponding to a network address.” See Ex. 1019 at 32-33; Ex. 1020 at 28-29. In
`
`view of the Patent Owner’s assertion, it is reasonable, for purposes of this proceeding in
`
`which the broadest reasonable construction standard applies, to consider the term “domain
`
`name” as encompassing “a name corresponding to a network address.”
`
`2. Domain Name Service System (Claims 1, 2, 6, 14-17, 19-23, 26-
`41, 43-47, and 50-60)
`The Patent Owner has asserted to the PTAB and in litigation that no construction of
`
`“domain name service system” was necessary.” Ex. 1013 at 24-25; Ex. 1019 at 38-39; Ex.
`
`1020 at 34-35. According to the Patent Owner, the claims themselves define the character-
`
`istics of the domain name service system. Id. In view of the Patent Owner’s assertions, it is
`
`reasonable, for purposes of this proceeding in which the broadest reasonable construction
`
`standard applies, to consider the term “domain name service system” as encompassing any
`
`system with the characteristics described by the claims.
`
`In general, under a broadest reasonable construction standard, a “system” can in-
`
`clude one or more discrete computers or devices. Ex. 1022 at ¶ 15. This is consistent with
`
`the ‘504 patent’s specification at col. 40, lines 35-48. This section describes a domain
`
`name service system that includes a modified DNS server 2602 and a gatekeeper server
`
`2603, which is shown as being separate from the modified DNS server. Ex. 1001 at col. 4,
`
`6
`
`

`

`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`lines 35-48 and fig. 26. Moreover, this sections states that “although element 2602 [(the
`
`modified DNS server)] is shown as combining the functions of two servers [(the DNS proxy
`
`2610 and DNS server 2609)], the two servers can be made to operate independently.” Ex.
`
`1001 at col. 40, lines 46-48.
`
`Also, the Examiner in the ’788 and ‘851 reexamination proceedings concluded that
`
`the broadest reasonable construction of a system encompasses a single or multiple devic-
`
`es. Ex. 1016 at 19-21 , Ex. 1017 at 23-25 (a “DNS system is reasonably interpreted as
`
`comprising a single device or multiple devices.”).
`
`Accordingly, it is reasonable, for purposes of this proceeding in which the broadest
`
`reasonable construction standard applies, to consider the term “domain name service sys-
`
`tem” as encompassing any system with the characteristics specified by the claims, where
`
`the system may include one or more devices or computers.
`
`3. Indication (Claims 1, 2, 6, 14-17, 19-23, 26-41, 43-47, and 50-60)
`The Patent Owner has asserted to the PTAB that no construction of “indication” is
`
`necessary. Ex. 1019 at 44-46; Ex. 1020 at 40-42. Similarly, in litigation for the ‘504 patent,
`
`the Patent Owner asserted no construction of “indication” was necessary, and the Court al-
`
`so declined to construe the term. Ex. 1013 at 31; Ex. 1015 at 28. In light of this, we consider
`
`the previous reexamination proceedings. In the ’788 and ‘851 reexamination proceedings,
`
`the Examiner found that, under the broadest reasonable construction, the term encom-
`
`passed:
`
`7
`
`

`

`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`... the ability of the user to communicate using a secure link after boot-
`
`up.” If the user attempts to establish a secure communication link using a
`
`DNS system after booting and is able to do so, then the user has been pro-
`
`vided a broadly recited and discernible “indication” that the DNS in some
`
`manner supports establishing a communication link.
`
`Ex. 1016 at 22; Ex. 1017 at 26 (emphasis original).
`
`The Examiner also found that, under the broadest reasonable construction, the term
`
`encompassed:
`
` “a visible message or signal to a user that the DNS system supports
`
`establishing a secure communication link
`
`Ex. 1016 at 28, Ex. 1017 at 32 (emphasis original).
`
`The Examiner further concluded that, under the broadest reasonable construction,
`
`“[n]either the specification nor the claim language provides a basis for limiting 'indicating' to
`
`a visual indicator.” Ex. 1016 at p. 22, Ex. 1017 at 26.
`
`The broadest reasonable construction of “indication” should thus encompass a visi-
`
`ble or non-visible message or signal that the DNS system supports establishing a secure
`
`communication link, including the establishment of the secure communication link itself.
`
`4. Secure Communication Link (Claims 1, 16-17, 20-23, 26-27, 31-
`32, 35-36, 47, 51, and 60)
`The Patent Owner has asserted to the PTAB that “secure communication link”
`
`should mean a “direct communication link that provides data security through encryption.”
`
`8
`
`

`

`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`Ex. 1019 at 40-44; Ex. 1020 at 36-40. In view of the Patent Owner’s assertions, it is rea-
`
`sonable, for purposes of this proceeding in which the broadest reasonable construction
`
`standard applies, to consider the term “secure communication link” as encompassing a “di-
`
`rect communication link that provides data security through encryption.”
`
`5. Transparently (Claims 27 and 51)
`
`The Patent Owner has asserted to the PTAB that “transparently” means that “the us-
`
`er need not be involved in creating the [secure communication link]/[secure link].” Ex. 1019
`
`at 47; Ex. 1020 at 43. In view of the Patent Owner’s assertions, it is reasonable, for purpos-
`
`es of this proceeding in which the broadest reasonable construction standard applies, to
`
`consider the term “transparently” as encompassing “the user need not be involved in creat-
`
`ing the [secure communication link]/[secure link].”
`
`6. Between [A] and [B] (Claims 16, 27, 33, 40, 51, and 57)
`In prior litigation on the ‘504 patent, the Patent Owner argued against the Defend-
`
`ant’s construction that “between” should mean “extend from one endpoint to the other,” and
`
`instead stated that “between” should only apply to the “public communication paths.” Ex.
`
`1014 at 11. Under the Patent Owner’s contentions, a secure communication link is “be-
`
`tween” two endpoints where encryption is used on the public communication paths between
`
`the two endpoints, regardless of whether the encryption extends completely from the first
`
`endpoint to the second endpoint. Id. In view of the Patent Owner’s assertions, it is reason-
`
`able, for purposes of this proceeding in which the broadest reasonable construction stand-
`
`9
`
`

`

`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`ard applies, to consider a secure communication link “between [A] and [B]” to encompass a
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`secure communication link on the public communication paths between the two endpoints,
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`regardless of whether that secure communication link fully extends from the first endpoint to
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`the second endpoint.
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`IV.
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`SUMMARY OF THE ‘504 PATENT
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`A.
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`Brief Description
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`Generally, the ‘504 patent purportedly provides a domain name service for establish-
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`ing a secure communication link. Ex. 1001 at Abstract, Col. 3, line 14. In particular, the ‘504
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`patent generally describes a domain name service system configured: (1) to be connected
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`to a communication network, (2) to store a plurality of domain names and corresponding
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`network addresses, (3) to receive a query for a network address, and (4) to comprise an in-
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`dication that the domain name service system supports establishing a secure communica-
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`tion link. Ex. 1001 at Col. 55, lines 49-56.
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`The ‘504 patent includes 60 claims, of which claims 1, 36, and 60 are independent.
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`Summary of the Prosecution History of the ’504 Patent
`B.
`U.S. 7,418,504 issued on August 26, 2008 from U.S. Patent Application No.
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`10/714,849 (“the ‘849 application”), which was filed on November 18, 2003 with 23 claims
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`as a continuation of U.S. Patent Application No. 09/558,210 (“the ’210 application”).
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`Ex.1002 at 600-603, 651-655 . In a preliminary amendment filed May 18, 2004, the Appli-
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`cants responded to rejections from the parent ‘210 application by amending various claims,
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`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`adding new claims 24-27, and arguing that U.S. 6,119,171 to Alkhatib (“Alkhatib”) “fails to
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`teach or suggest a top-level domain reserved for secure network connections, as amended
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`in claim 1.” Ex.1002 at 505-508.
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` In a first Office action dated December 7, 2006, the Examiner entered a two-way
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`Restriction Requirement. Ex. 1002 at 290-292. The Applicants elected without traverse
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`Group I, corresponding to claims 1-12 and 26-27. Ex. 1002 at 287. In a second Office ac-
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`tion dated March 21, 2007, the Examiner rejected most claims as being obvious under §103
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`over IP Security, Chapter 13 of the XP-002167283 reference (“XP”), submitted by the appli-
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`cants on an Information Disclosure Statement. Ex. 1002 at 269-273. The Examiner also
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`rejected all of the claims as being indefinite under § 112 because, for example, “it is unclear
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`where a query is coming from or who queries to the server and what is being queried.” Ex.
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`1002 at 271. Claims 9-12 were objected to, and the examiner indicated that they would be
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`allowable if rewritten in independent form. Ex. 1002 at 273.
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`In response, the Applicants canceled claim 1 and added new claim 28 (correspond-
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`ing to issued claim 1) as a substitute (amending the dependent claims to instead depend
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`from claim 28). Ex. 1002 at 243-257. Regarding the rejections based on XP, the Applicants
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`summarized their understanding of the XP disclosure and broadly asserted that it did not
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`describe or suggest a system having all of the limitations of claim 28. Ex. 1002 at 253. The
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`Applicants also added new dependent claims 29-51 depending off of claim 28, and new in-
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`dependent claims 52 and 53 (corresponding to issued claims 36 and 60, respectively). Ex.
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`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
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`1002 at 248-252.
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`The Examiner then issued a Notice of Allowance with the following statement of rea-
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`sons for allowance:
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`The prior arts of record do not teach or a domain name service system
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`configured to be connected to a communication network, to store a plurality of
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`domain names and corresponding network addresses, to receive a query for
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`a network address, and to comprise an indication that the domain name ser-
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`vice system supports establishing a secure communication link.
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`Ex. 1002 at 229-230.
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`The Applicants did not pay the issue fee, but instead filed a Request for Continued
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`Examination to allow for consideration of an Information Disclosure Statement. Ex. 1002 at
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`81-85. The Applicants subsequently added new dependent claims 54-76 (corresponding to
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`issued claims 37-59). Ex. 1002 at 56-69. The Examiner issued a new Notice of Allowance
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`that reiterated the previous statement of reasons for allowance. Ex. 1002 at 29-30.
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`The Applicants paid the issue fee and submitted an amendment to the specification
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`to provide reference to certain rights retained by the United States Government. Ex. 1002 at
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`21. The amendment was entered, and the ‘504 patent issued on August 26, 2008. Ex. 1002
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`at 17.
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`The Effective Priority Date of the Claims of the ‘504 Patent
`C.
`The ’504 patent issued from U.S. Application No. 10/714,849, filed November 18,
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`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`2003. The ’849 application is a continuation of application 09/558,210, filed on April 26,
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`2000, which is a continuation-in-part of application 09/504,783, filed on February 15, 2000,
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`which is a continuation-in-part of U.S. Application No. 09/429,643, filed on October 29,
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`1999. The ’210, ’783 and ’643 applications each attempt to claim priority to Provisional Ap-
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`plication Nos. 60/106,261, filed October 30, 1998 and 60/137,704, filed June 7, 1998.
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`Claims 1, 36 and 60 of the ’504 patent are independent claims. Claims 2-35 depend
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`directly or indirectly from claim 1, and claims 37-59 depend directly or indirectly from claim
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`36. Accordingly, claims 2-35 and 37-59 cannot enjoy an effective filing date earlier than that
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`of claims 1 and 36, respectively, from which they depend (i.e., no earlier than February 15,
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`2000).
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`Claims 1, 36 and 60 of the ’504 patent rely on information not found in the disclosure
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`of any application filed prior to the ’783 application on February 15, 2000. For example,
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`claims 1 and 60 of the ’504 patent require “a domain name service for establishing a se-
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`cure communication link.” Claims 1, 36, and 60 likewise recite “a domain name service
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`system.” No application filed prior to the ’783 application mentions the phrase “domain
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`name service,” much less provides a written description of systems or processes corre-
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`sponding to the ’504 patent claims. The effective filing date of the Challenged Claims of the
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`’504 patent thus is not earlier than February 15, 2000.
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`V.
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`MANNER OF APPLYING CITED PRIOR ART TO EVERY CLAIM FOR
`WHICH AN IPR IS REQUESTED, THUS ESTABLISHING A REASONABLE
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`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE ‘504 PATENT IS UN-
`PATENTABLE
`This request shows how the primary references above, alone or in combination with
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`other references, disclose the limitations of the Challenged Claims, thereby demonstrating
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`the Challenged Claims of the ‘504 patent are unpatentable. As detailed below, this request
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`shows a reasonable likelihood that the Requester will prevail with respect to the Challenged
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`Claims of the ‘504 patent.
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` [GROUND 1] – Aventail Anticipates Claims 1, 2, 6, 14-17, 19-23,
`A.
`26-41, 43-47, and 50-60
`Aventail (Ex. 1007) is a printed publication that was publicly distributed no later than
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`January 31, 1999. Ex. 1005 at ¶¶ 11-36; Ex. 1006 at ¶¶ 11-24. Aventail is prior art to the
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`‘504 patent at least under 35 U.S.C. §§ 102(a) and (b).
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`The Aventail publication consists of two documents that cross-reference each other
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`extensively; namely, the Aventail Connect v3.01/v2.51 Administrator’s Guide (“Aventail
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`Connect”) and the Aventail Extranet Center v3.0 Administrator’s Guide (“Aventail Extranet
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`Center”). Ex. 1005 at ¶¶ 27-29. The two documents were distributed together with software
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`installation media. See Ex. 1005 at ¶¶ 23-36. The two documents describe the configuration
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`and operation of client and server parts of a single Aventail system. See Ex. 1005 at ¶¶ 23-
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`36. The documents together, thus, constitute a single publication, Aventail (Ex. 1007). In
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`the event the Board determines the two documents do not constitute a single printed publi-
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`cation, the Petitioner respectfully submits the Board should treat Aventail as consisting of
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`Attorney Docket No. 38868-0005IP2
`IPR of U.S. Patent No. 7,418,504
`the Aventail Connect document, which incorporates by reference specific portions of the
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`Aventail Extranet Center document. See Ex. 1005 at ¶ 29.
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`Overview of Aventail
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`Aventail generally describes a system and processes that transparently establish an
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`encrypted tunnel between a client computer and a private network. Ex. 1007 at 11; Ex.
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`1022 at ¶ 17. In particular, Aventail describes various parts of the Aventail ExtraNet Center,
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`which is “a client/server solution for management of sophisticated extranets.” Ex. 1007 at
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`125; Ex. 1022 at ¶ 17. Aventail explains that the Aventail ExtraNet Center is designed to
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`monitor network usa