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`
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`Case No. IPR2014-00612
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`
`Filed on behalf of: VirnetX Inc.
`By:
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`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: josephpalys@paulhastings.com
`
`
`
`Paper No.
`Filed: July 17, 2014
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: naveenmodi@paulhastings.com
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2014-00612
`Patent 7,418,504
`
`
`
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`
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`
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`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 7,418,504
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`
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`
`
`

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`
`
`I.
`
`II.
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`
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`Case No. IPR2014-00612
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`Table of Contents
`
`Introduction ...................................................................................................... 1
`
`The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review ......................................................................................... 2
`
`A.
`
`B.
`
`C.
`
`The Petition Fails to Comply with 37 C.F.R. § 42.6(a)(2)(ii) .............. 2
`
`The Two Documents Dubbed “Aventail” Cannot Anticipate
`Any Claim ............................................................................................. 3
`
`The Petition Fails to Present Any Cognizable Obviousness
`Position Based on the Aventail Documents .......................................... 5
`
`D. Microsoft’s Petition Should Be Denied Under 35 U.S.C.
`§ 325(d) ................................................................................................. 6
`
`E.
`
`The Board Should Not Institute Based on the Petition’s
`Redundant Grounds ............................................................................... 8
`
`III. The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected .........................................................................................................12
`
`A. Overview of the ’504 Patent ................................................................12
`
`B.
`
`C.
`
`D.
`
`E.
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`F.
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`G.
`
`H.
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`Level of Ordinary Skill in the Art .......................................................15
`
`“Domain Name” (Claims 1, 2, 15-17, 20, 21, 26, 35-37, 39, 40,
`44, 45, 50, 59, and 60) .........................................................................16
`
`“Domain Name Service System” (Claims 1, 14-17, 19, 20, 23,
`27, 33, 35, 36, 41, 51, 57, 59, and 60) .................................................17
`
`The “Indication” Phrases (Claims 1, 17, 36, 41, and 60) ....................18
`
`“Secure Communication Link” (Claims 1, 16, 17, 22, 26-29, 33,
`35, 36, 40, 41, 46, 50-53, 57, and 59-60) ............................................20
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`“Transparently” (Claims 27 and 51) ...................................................22
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`“Between [A] and [B]” (Claims 16, 27, 33, 40, 51, and 57) ...............23
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`IV.
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`If Trial Is Instituted, VirnetX Requests an 18-Month Schedule ...................24
`
`i
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`V.
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`V.
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`Case No. IPR2014-00612
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`Case No. IPR2014-00612
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`Conclusion .....................................................................................................25
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`Conclusion ..................................................................................................... 25
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`ii
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`Case No. IPR2014-00612
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Apple Inc. v. Int’l Trade Comm’n,
`725 F.3d 1356 (Fed. Cir. 2013) ........................................................................ 3, 4
`
`Boku, Inc. v. Xilidev, Inc.,
`CBM2014-00140, Paper No. 4 (June 12, 2014) ................................................... 2
`
`CallCopy, Inc. v. Verint Ams., Inc.,
`IPR2013-00486, Paper No. 11 (Feb. 5, 2014) ...................................................... 5
`
`EMC Corp. v. Personal Web Techs., LLC,
`IPR2013-00087, Paper No. 25 (June 5, 2013) .......................................... 9, 10, 11
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .............................................................................................. 5, 6
`
`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027, Paper No. 26 (June 11, 2013) .................................................... 9
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324, Paper No. 19 (Nov. 21, 2013) ................................................... 7
`
`Kyocera Wireless Corp. v. Int’l Trade Comm’n,
`545 F.3d 1340 (Fed. Cir. 2008) ............................................................................ 4
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper No. 7 (Oct. 25, 2012) .............................................. 9, 10
`
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
`IPR2014-00436, Paper No. 17 (June 19, 2014) .................................................... 7
`
`Prism Pharma Co., Ltd., v. Choongwae Pharma Corp.,
`IPR2014-00315, Paper No. 14 (July 8, 2014) ...................................................... 7
`
`ScentAir Techs., Inc. v. Prolitec, Inc.,
`IPR2013-00180, Paper No. 18 (Aug. 26, 2013) ........................................... 10, 12
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`iii
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`Federal Statutes
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`
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`Case No. IPR2014-00612
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`35 U.S.C. § 103(a) ................................................................................................. 5, 6
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`35 U.S.C. § 311(b) ..................................................................................................... 4
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`35 U.S.C. § 313 .......................................................................................................... 1
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`35 U.S.C. § 316(a)(1) ............................................................................................... 24
`
`35 U.S.C. § 325(d) ............................................................................................passim
`
`Regulations
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`37 C.F.R. § 42.6(a)(2)(ii) ................................................................................... 1, 2, 3
`
`37 C.F.R. § 42.8 ....................................................................................................... 24
`
`37 C.F.R. § 42.100(c) ............................................................................................... 24
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`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`Other Authorities
`
`157 Cong. Rec. S1041-42 (daily ed. Mar. 1, 2011) ................................................... 7
`
`77 Fed. Reg. 48680 (Aug. 14, 2012).......................................................................... 6
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`77 Fed. Reg. 48756 (Aug. 14, 2012).......................................................................... 6
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`iv
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`I.
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`Introduction
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`
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`Case No. IPR2014-00612
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`Patent Owner VirnetX Inc. respectfully submits this Preliminary Response
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`in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107, responding to the
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`Petition for Inter Partes Review (the “Petition”) filed by Microsoft Corporation
`
`against U.S. Patent No. 7,418,504 (“the ’504 patent”). VirnetX requests that the
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`Board not institute inter partes review for several reasons.
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`First, the Petition fails to comply with 37 C.F.R. § 42.6(a)(2)(ii) because it
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`uses a font that the Board has deemed noncompliant for being too narrow. The
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`result is that Microsoft’s Petition contains additional arguments that it could not
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`otherwise have made if written in a compliant font.
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`Second, Microsoft attempts to combine two references in an anticipation
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`analysis, in violation of Federal Circuit case law.
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`Third, Microsoft presents backup obviousness arguments that lack any
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`analysis, in violation of Supreme Court precedent.
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`Fourth, this proceeding is duplicative of other actions before the Office and
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`should be dismissed under 35 U.S.C. § 325(d). The Office currently has two inter
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`partes reexamination proceedings against the ’504 patent. Another set of Office
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`proceedings against the ’504 patent, as Microsoft requests here, is unnecessary and
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`burdens both the Office and VirnetX. In addition, the primary prior art references
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`Microsoft relies on here have already been considered by the Office in the
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`reexaminations of the ’504 patent. Section 325(d) was designed to avoid the type
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`of serial challenge Microsoft requests.
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`Fifth, Microsoft proposes redundant grounds without identifying how any
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`one ground improves on any other, violating Board precedent requiring petitioners
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`to identify differences in the proposed rejections.
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`Finally, Microsoft proposes incorrect claim constructions. Because its
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`unpatentability challenges are premised on incorrect claim constructions, Microsoft
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`has not met its burden of demonstrating a reasonable likelihood of proving
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`unpatentability of any ’504 patent claim.
`
`II. The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review
`A. The Petition Fails to Comply with 37 C.F.R. § 42.6(a)(2)(ii)
`The Board has held that Arial Narrow font does not comply with the
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`requirements of 37 C.F.R. § 42.6(a)(2)(ii). See, e.g., Boku, Inc. v. Xilidev, Inc.,
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`CBM2014-00140, Paper No. 4 at 2 (June 12, 2014). Microsoft’s Petition uses this
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`font, so it fails to comply with 37 C.F.R. § 42.6(a)(2)(ii). This is not merely a
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`procedural defect, but instead affects the substance of the Petition. In Boku, the
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`petitioner had to drop an entire seven-page argument to ensure that its petition was
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`page-compliant when converted to an appropriate font. Boku, Inc. v. Xilidev, Inc.,
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`CBM2014-00140, Paper No. 5 at 1 (June 16, 2014) (“The font change has caused
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`Petitioners to remove all arguments with respect to claim 17 and to submit them in
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`2
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`a second petition.”). Microsoft’s Petition is already 60 pages long in Arial Narrow,
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`so Microsoft would similarly need to remove content to comply with 37 C.F.R.
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`§ 42.6(a)(2)(ii). Like in Boku, the Board should find that Microsoft’s Petition is
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`defective. Accordingly, the Board should not institute Microsoft’s defective
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`Petition. If the Board sees fit to allow Microsoft to file a corrected petition, it
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`should only permit Microsoft to remove arguments and not make other substantive
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`changes.
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`B.
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`The Two Documents Dubbed “Aventail” Cannot Anticipate Any
`Claim
`Aventail is not a single document. It consists of two documents:
`
`(1) “Aventail Connect v3.01/v2.51 Administrator’s Guide” (Ex. 1007 at 1-120),
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`and (2) “Aventail ExtraNet Center v3.0 Administrator’s Guide” (id. at 121-94).
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`Microsoft merged these two separate documents into a single PDF file, labeled it
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`“Aventail,” and argues that the merged PDF anticipates claims 1, 2, 6, 14-17, 19-
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`23, 26-41, 43-47, and 50-60. Microsoft disregards the fundamental principle that,
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`“[f]or a prior art reference to anticipate a claim, the reference must disclose each
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`claim limitation in a single document.” Apple Inc. v. Int’l Trade Comm’n, 725
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`F.3d 1356, 1362 (Fed. Cir. 2013).
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`Microsoft contends that the two documents reference each other and
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`“describe the configuration and operation of client and server parts of a single
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`Aventail system.” (Pet. at 14.) If Microsoft seeks to rely on a “system” to
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`challenge claims of the ’504 patent, its challenge is prohibited by statute.
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`35 U.S.C. § 311(b). And to the extent Microsoft contends that “the Aventail
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`Connect document . . . incorporates by reference specific portions of the Aventail
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`Extranet Center document,” it fails to set forth any plausible basis for incorporation
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`by reference. (Id. at 14-15.) Neither document Microsoft seeks to combine
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`contains any incorporation-by-reference language regarding the other document.
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`Nor does Microsoft attempt to show what “specific portions” of either document
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`are supposedly incorporated by reference into the other. Microsoft’s only support
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`for its incorporation-by-reference argument is a paragraph in a declaration, which
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`merely states that the documents relate to and reference each other, but does not
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`identify any specific basis for incorporation by reference or identify where in the
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`documents such incorporation is invoked. (See id. (citing Ex. 1005 ¶ 29).)
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`Microsoft has not met the standard for incorporation by reference. See
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`Apple Inc., 725 F.3d at 1362 (“To incorporate material by reference, the host
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`document must identify with detailed particularity what specific material it
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`incorporates and clearly indicate where that material is found in the various
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`documents.”); see also Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d
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`1340, 1351 (Fed. Cir. 2008) (treating specifications related to the same standard as
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`different documents for purposes of anticipation). Accordingly, Microsoft’s
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`anticipation grounds based on the Aventail documents must be rejected.
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`C. The Petition Fails to Present Any Cognizable Obviousness
`Position Based on the Aventail Documents
`Perhaps recognizing the weakness in its anticipation grounds based on the
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`Aventail documents, Microsoft presents backup obviousness positions that purport
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`to combine the two documents. (Pet. at 51-59.) These arguments must fail,
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`however, because the Petition fails to identify specific portions of each reference
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`that are being combined to meet specific claim elements, and why, as required by
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`35 U.S.C. § 103(a) and Graham v. John Deere Co. of Kansas City, 383 U.S. 1
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`(1966).
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`Microsoft again asserts that the two Aventail documents “refer to each other
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`and are describing two parts of a single system.” (Pet. at 51.) Microsoft then
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`incorporates its flawed anticipation analysis as its obviousness analysis, contending
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`that the claims are obvious “for essentially the same reasons” presented regarding
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`anticipation. (Id. at 51-52.) This approach should be rejected for the same reasons
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`Microsoft’s anticipation ground should be rejected, as discussed above. It also
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`suffers from the same flaw the Board has relied on to reject petitions in the past, as
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`it “conflates anticipation and obviousness grounds without providing a clear
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`distinction of how the identified disclosures are applied to the individual grounds.”
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`CallCopy, Inc. v. Verint Ams., Inc., IPR2013-00486, Paper No. 11 (Feb. 5, 2014).
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`Microsoft’s approach also fails to address “the differences between the subject
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`matter sought to be patented and the prior art,” as required by Supreme Court
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`precedent. Graham, 383 U.S. at 17-18 (the analysis must ascertain the differences
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`between the claimed invention and the prior art).
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`Similarly, Microsoft’s obviousness grounds based on “Aventail” in view of
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`RFC 1034, Lindblad, and RFC 2660 also fail, because they fail to account for the
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`separateness of the Aventail documents, and are each fundamentally deficient for
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`the same reasons as its obviousness position based on the two Aventail documents
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`themselves. (Pet. at 52-59.)
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`Because each of the Petition’s obviousness positions based on the Aventail
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`documents is unsupported by an analysis under Graham and § 103(a), they must be
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`rejected.
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`D. Microsoft’s Petition Should Be Denied Under 35 U.S.C. § 325(d)
`The Office may deny institution of an IPR if the same or similar prior art has
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`already been presented in another Office proceeding. 35 U.S.C. § 325(d) (“In
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`determining whether to institute or order a proceeding under . . . chapter 31
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`[addressing IPR, among other things], the Director may take into account whether,
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`and reject the petition or request because, the same or substantially the same prior
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`art or arguments previously were presented to the Office” (emphases added)); see
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`also 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012); 77 Fed. Reg. 48680, 48685,
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`48702 (Aug. 14, 2012). The purpose of this provision is to avoid “serial
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`challenges” and the resulting burden on the patent owner and Office in managing
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`multiple proceedings involving the same patent. (Ex. 2022 (157 Cong. Rec.
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`Case No. IPR2014-00612
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`S1041-42 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl).)
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`The Board has followed 35 U.S.C. § 325(d) to deny IPR petitions where the
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`same prior art or arguments were presented during examination of the challenged
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`patent or during a prior IPR. See, e.g., Prism Pharma Co., Ltd., v. Choongwae
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`Pharma Corp., IPR2014-00315, Paper No. 14 at 12-13 (July 8, 2014) (denying IPR
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`petition where “[t]he same prior art . . . and arguments” were “previously presented
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`to the Office” during examination); Medtronic, Inc. v. Robert Bosch Healthcare
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`Sys., Inc., IPR2014-00436, Paper No. 17 at 11-12 (June 19, 2014) (denying IPR
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`petition because repetitive arguments and prior art references were raised in
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`petition vis-à-vis earlier IPR proceeding); Intelligent Bio-Systems, Inc. v. Illumina
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`Cambridge Ltd., IPR2013-00324, Paper No. 19 at 6-7 (Nov. 21, 2013) (denying
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`IPR petition where three prior art references were raised in earlier IPR and three
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`were newly raised).
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`Like the petitions in Prism Pharma (involving prior examination) and
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`Medtronic and Intelligent Bio-Systems (involving prior IPRs), Microsoft’s Petition
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`relies on prior art already presented to the Office. There are currently two inter
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`partes reexaminations pending before the Office involving the ’504 patent, which
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`have been assigned Control Nos. 95/001,788 and 95/001,851. In both of these
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`proceedings, the Examiner has been presented with both of the Aventail
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`documents, as well as other documents relating to Aventail products. (Ex. 2036,
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`Case No. IPR2014-00612
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`Information Disclosure Statement filed Apr. 25, 2012 in Control No. 95/001,851;
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`Ex. 2037, Information Disclosure Statement filed May 4, 2012 in Control No.
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`95/001,788.) In addition to the references themselves, the Examiner considered
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`claim charts applying Aventail documents to VirnetX patents in the same family as
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`the ’504 patent. (Id.) Nevertheless, the Examiner never decided to reject the
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`claims of the ’504 patent based on any Aventail document.
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`Because the Office has already considered the Aventail documents asserted
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`by Microsoft here, and other Aventail documents, in two ongoing inter partes
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`reexaminations of the ’504 patent, the Petition presents a serial challenge of the
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`type 35 U.S.C. § 325(d) was enacted to prevent. Neither the Board nor VirnetX
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`should be forced to assume the burden of handling duplicative proceedings
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`challenging the ’504 patent, involving repeated evaluations of the same prior art
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`references. Accordingly, the Board should exercise its discretion and deny the
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`Petition under 35 U.S.C. § 325(d).
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`E.
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`The Board Should Not Institute Based on the Petition’s
`Redundant Grounds
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`The Petition includes a section titled “Redundancy,” which does not assert
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`or explain why the proposed grounds of rejection in the Petition are not redundant
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`in view each other or those in the Microsoft’s Petitions for Inter Partes Review in
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`IPR2014-00613 (“the ’613 Petition”) and IPR2014-00614 (“the ’614 Petition”).
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`Instead, the Petition simply alleges that Microsoft’s three petitions against the ’504
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`patent present “just a few grounds.” (Pet. at 59.) This allegation is incorrect, as
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`the three petitions present a total of 13 grounds against the ’504 patent. (Pet. at 4
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`(five grounds); ’613 Pet. at 4 (four grounds); ’614 Pet. at 4 (four grounds).) In
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`addition, Microsoft gives no justification based on the Board’s jurisprudence
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`regarding redundancy, so its redundant grounds should be rejected.
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`The Board does not consider redundant grounds of rejection because it must
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`issue a final written decision within one year of institution (or 18 months for good
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`cause). Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00003,
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`Paper No. 7 (Oct. 25, 2012). Redundant grounds place a significant burden on the
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`Board and the patent owner, and cause unnecessary delay that jeopardizes meeting
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`the statutory deadline for final written decisions. Id.
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`Because “[t]he Board seeks to streamline and converge issues at all phases
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`of the proceeding . . . at [the] time of institution the Board analyzes the petition on
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`a claim-by-claim, ground-by-ground basis, to eliminate redundant grounds.” Idle
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`Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper No. 26 at 3 (June 11,
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`2013). The redundancy inquiry does not focus on “whether the applied prior art
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`disclosures have differences, for it is rarely the case that the disclosures of different
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`prior art references, will be literally identical.” EMC Corp. v. Personal Web
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`Techs., LLC, IPR2013-00087, Paper No. 25 at 3 (June 5, 2013). Instead, the Board
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`considers “whether the petitioner articulated a meaningful distinction in terms of
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`relative strengths and weaknesses with respect to application of the prior art
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`disclosures to one or more claim limitations.” Id. at 3-4. The petitioner carries the
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`burden of articulating that “meaningful distinction.” ScentAir Techs., Inc. v.
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`Prolitec, Inc., Case IPR2013-00180, Paper No. 18 at 3 (Aug. 26, 2013).
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`In Liberty Mutual, the Board identified two types of redundant rejections:
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`(1) “horizontally” redundant rejections and (2) “vertically” redundant rejections.
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`Liberty Mutual, CBM2012-00003, Paper No. 7 at 3. The Board explained that
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`horizontally redundant rejections apply “a plurality of prior art references . . . not
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`in combination to complement each other but as distinct and separate alternatives.”
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`Id. Vertical redundancy “exists when there is assertion of an additional prior art
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`reference to support another ground of unpatentability when a base ground already
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`has been asserted against the same claim without the additional reference and the
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`Petitioner has not explained what are the relative strength and weakness of each
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`ground.” Id. at 12.
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`Here, Microsoft’s anticipation grounds based on the Aventail documents are
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`vertically redundant in view its obviousness grounds for common claims, which
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`also involve the Aventail documents. In particular, Microsoft contends that the
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`Aventail documents anticipate claims 1, 2, 6, 14-17, 19-23, 26-41, 43-47, and 50-
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`60, but Microsoft also asserts redundant obviousness grounds for each of these
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`claims that are also based on the Aventail documents. (Pet. at 4.) Microsoft also
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`presents vertically redundant alternative obviousness grounds based on various
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`reference combinations that rely on the Aventail documents as the lead references.
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`(Id.)
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`The Petition also involves horizontal redundancy. In particular, the Petition
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`proposes an anticipation ground for claims 1, 2, 6, 14-17, 19-23, 26-41, 43-47, 50-
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`60 based on the Aventail documents, which is horizontally redundant in view of
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`Microsoft’s anticipation ground for claims 1, 2, 6, 14-17, 19-23, 26-28, 33-41, 43-
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`47, 50-52, and 57-60 in the ’613 Petition and Microsoft’s anticipation ground for
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`claims 1, 2, 6, 14-17, 19-23, 26-31, 33-41, 43-47, 50-55, and 57-60 in the ’614
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`Petition. In addition, the obviousness grounds that Microsoft presents in this
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`Petition for claims 1, 2, 6, 14-17, 19-23, 26-41, 43-47, and 50-60 are horizontally
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`redundant in view of Microsoft’s obviousness grounds for overlapping claims in
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`the ’613 Petition and the ’614 Petition.
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`Microsoft does not “articulate[] a meaningful distinction in terms of
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`relative strengths and weaknesses with respect to application of the prior art
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`disclosures to one or more claim limitations” for each of its redundant grounds.
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`EMC Corp. v. Personal Web Techs., LLC, IPR2013-00087, Paper No. 25 at 3-4
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`(June 5, 2013) (emphases added). Through its redundancy section, Microsoft has
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`essentially admitted that it proposes redundant grounds but has not explained why
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`any of its grounds are not redundant. (See Pet. at 59.) Consequently, the Board
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`should deny Microsoft’s redundant grounds. ScentAir Techs., Inc. v. Prolitec, Inc.,
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`IPR2013-00180, Paper No. 18 at 3 (Aug. 26, 2013).
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`III. The Petition’s Claim Constructions Are Flawed and Should Be Rejected
`Microsoft proposes several defective claim constructions that do not
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`represent the broadest reasonable interpretation (“BRI”) of the claims. Because it
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`is based on incorrect claim constructions, the Petitioner cannot demonstrate a
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`reasonable likelihood of prevailing for any claim of the ’504 patent.
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`A. Overview of the ’504 Patent
`The ’504 patent discloses several embodiments of a domain name service
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`(“DNS”) system for establishing a secure communication link, such as a virtual
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`private network (“VPN”) communication link, between devices connected to a
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`network. In one embodiment, a novel, specialized DNS system receives a DNS
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`request and automatically facilitates the establishment of a secure communication
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`link between two devices. (Ex. 1001 at 39:46-51.)
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`The ’504 patent distinguishes the claimed DNS service system from a
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`conventional DNS scheme that merely returns a requested IP address and/or public
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`key:
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`Conventional Domain Name Servers (DNSs) provide a look-up
`function that returns the IP address of a requested computer or host.
`For example, when a computer user types in the web name
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`Case No. IPR2014-00612
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`“Yahoo.com,” the user’s web browser transmits a request to a DNS,
`which converts the name into a four-part IP address that is returned to
`the user’s browser.
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`. . .
`One conventional scheme that provides secure virtual private
`networks over the Internet provides the DNS server with the public
`keys of the machines that the DNS server has the addresses for. This
`allows hosts to retrieve automatically the public keys of a host that the
`host is to communicate with so that the host can set up a VPN without
`having the user enter the public key of the destination host. One
`implementation of this standard is presently being developed as part
`of the FreeS/WAN project (RFC 2535).
`The conventional scheme suffers from certain drawbacks. For
`example, any user can perform a DNS request. Moreover, DNS
`requests resolve to the same value for all users.
`According to certain aspects of the invention, a specialized DNS
`server traps DNS requests and, if the request is from a special type of
`user (e.g., one for which secure communication services are defined),
`the server does not return the true IP address of the target node, but
`instead automatically sets up a virtual private network between the
`target node and the user.
`(Id. at 39:7-51.)
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`Compared with a conventional DNS known at the time of filing the ’504
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`patent—which is described as merely returning a requested IP address and/or
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`public key—the claimed DNS service system of the ’504 patent supports
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`establishing a secure communication link and provides an indication of the same.
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`Case No. IPR2014-00612
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`(See, e.g., id. at 55:49-56, 57:48-58, 60:3-14.) For example, in FIGS. 26 and 27 of
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`the ’504 patent, reproduced below, a DNS server 2602 including a DNS proxy
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`2610 supports establishing a VPN link between a computer 2601 and a secure
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`target site 2604. (Id. at 39:67-41:59.)
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`Here, the DNS server 2602 receives a DNS request for a target site from
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`computer 2601. (Id. at 40:49-52.) A DNS proxy 2610 at the DNS server 2602
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`determines whether the target site is a secure site. (Id. at 40:6-8, 40:49-56.) If
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`access to a secure site has been requested, the DNS proxy 2610 determines
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`whether the computer 2601 is authorized to access the site. (Id. at 40:57-59.) If
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`so, the DNS proxy 2610 transmits a message to gatekeeper 2603 to create a secure
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`Case No. IPR2014-00612
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`communication link (e.g., a VPN link) between computer 2601 and secure target
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`site 2604. (Id. at 40:12-15.) In this example, the gatekeeper 2603 allocates
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`resources (in this case, IP hop blocks) for the secure communication link to the
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`computer 2601 and secure target site 2604. (Id. at 40:15-19.) The DNS proxy
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`2610 then responds to the computer 2601’s DNS request with an address received
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`from the gatekeeper 2603. (Id. at 40:19-22.) In this manner, the specialized DNS
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`service system supports establishing a secure communication link, doing more than
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`a conventional DNS server at the time of the invention.
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`Level of Ordinary Skill in the Art
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`B.
`A person of ordinary skill in the art at the relevant time would have had a
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`master’s degree in computer science or computer engineering and approximately
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`two years of experience in computer networking and computer security. In
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`litigation related to VirnetX’s patents, this level of skill was adopted by a host of
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`companies, including Apple, Inc.; Cisco Systems, Inc.; NEC Corporation; NEC
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`Corporation of America; Aastra USA, Inc.; Aastra Technologies Ltd.; Mitel
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`Networks Corp.; Mitel Networks, Inc.; Siemens Enterprise Communications
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`GmbH & Co. KG; Siemens Enterprise Communications, Inc.; and Avaya Inc.
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`(Ex. 2023 at 4, Memorandum Opinion and Order in VirnetX Inc. v. Mitel Networks
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`Corp. et al., Case No. 6:11-CV-18 (E.D. Tex. Aug. 1, 2012); Ex. 1015 at 5,
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`Memorandum Opinion and Order in VimetX Inc. v. Cisco Systems, Inc. et al., Case
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`No. 6:10—CV—4l7 (ED. Tex. April 25, 2012).)
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`Microsoft largely agrees with VimetX’s proposed level of skill, contending
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`through its expert that “one of ordinary skill .
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`.
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`. would have a Master’s degree in
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`computer science or computer engineering, or in a related field such as electrical
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`engineering, as well as about two years of experience in computer networking and
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`in some aspect of security with respect to computer networks.” (Ex. 1022 at 3, 117.)
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`Because so many companies have agreed that VirnetX’s proposed level of
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`skill is correct and because Microsoft’s proposed level of skill is similar in most
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`respects, the Board should adopt VirnetX’s proposed level of skill.
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`C.
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`“Domain Name” (Claims 1, 2, 1517, 20, 21, 26, 35—37, 39, 40, 44,
`45, so, 59, and 60)1
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`VirnetX’s Pro I osed Construction
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`Microsofi’s Pro I osed Construction A name corresponding to a network
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`address
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`A name corresponding to a network
`address
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`The parties agree that “domain name” should be construed to mean “a name
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`corresponding to a network address.” This construction is consistent with the
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`patent specification, which gives examples of Internet Protocol and other types of
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`1 VimetX identifies only the challenged claims that expressly recite the
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`terms at issue. Claims that depend from the identified claims may also implicitly
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`contain the terms.
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`networks in which domain names correspond to network addresses.
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`(See e.g.,
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`BX. 100] at 4:16-17, 5:10—12, 9:20-21; 16:31-38; 21:27-29.) VirnetX requests that
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`the Board adopt the parties’ agreed construction.
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`D.
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`“Domain Name Service System” (Claims 1, 14-17, 19, 20, 23, 27,
`33, 35, 36, 41, 51, 57, 59, and 60)
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`VirnetX’s Pro . osed Construction
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`Microsofi’s Pro .sed Construction No construction necess.
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`N0 construction necess
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`“Domain name service system” need not be construed.
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`It is the subject of
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`independent claim 1, for example, which already defines its characteristics:
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`“a
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`domain name service system configured to be connected to a communication
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`network,
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`to store a plurality of domain names and corresponding network
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`addresses, to receive a query for a network address, and to comprise an indication
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`that the domain name service system supports establishing a secure communication
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`link.” Since the claims themselves define the characteristics of the domain name
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`service system, no further construction is necessary. Microsoft agrees, stating that
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`“it is reasonable, for purposes of this proceeding in which the broadest reasonable
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`construction standard applies, to consider the term ‘domain name service system’
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`as encompassing any system with the characteristics described by the claims.”
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`(Pet. at 7.)
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`E.
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`The “Indication” Phrases (Claims 1, 17, 36, 41, and 60)
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`Case No. IPR2014-00612
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`VirnetX’s Pro . osed Construction
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`Microsoft’s Pro . . sed Construct