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`Case No. IPR2014-00618
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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
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
`Petitioner
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`v.
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`VIRNETX INC.
`Patent Owner
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`Case IPR2014-00618
`Patent 7,921,211
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`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 7,921,211
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`I.
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`II.
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`Case No. IPR2014-00618
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`Table of Contents
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`Introduction ...................................................................................................... 1
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`The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review ......................................................................................... 2
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`A.
`
`The Petition Fails to Comply with 37 C.F.R. § 42.6(a)(2)(ii) .............. 2
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`B. Microsoft’s Petition Should Be Denied Under 35 U.S.C.
`§ 325(d) ................................................................................................. 3
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`C.
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`The Board Should Not Institute Based on the Petition’s
`Redundant Grounds ............................................................................... 5
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`III. The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected ........................................................................................................... 8
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`A. Overview of the ’211 Patent .................................................................. 9
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`H.
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`Level of Ordinary Skill in the Art .......................................................12
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`“Domain Name” (Claims 1, 2, 15-17, 20, 21, 26, 35-37, 39, 40,
`44, 45, 50, 59, and 60) .........................................................................13
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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) .................................................14
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`The “Indication” Phrases (Claims 1, 17, 36, 41, and 60) ....................15
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`“Secure Communication Link” (Claims 1, 16, 17, 22, 26-29, 33,
`35, 36, 40, 41, 46, 50-53, 57, and 59-60) ............................................17
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`“Transparently” (Claims 27 and 51) ...................................................19
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`“Between [A] and [B]” (Claims 16, 27, 33, 40, 51, and 57) ...............20
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`IV.
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`If Trial Is Instituted, VirnetX Requests an 18-Month Schedule ...................21
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`V.
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`Conclusion .....................................................................................................22
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`Case No. IPR2014-00618
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`Boku, Inc. v. Xilidev, Inc.,
`CBM2014-00140, Paper No. 4 (June 12, 2014) ................................................... 2
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`EMC Corp. v. Personal Web Techs., LLC,
`IPR2013-00087, Paper No. 25 (June 5, 2013) .................................................. 6, 8
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`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027, Paper No. 26 (June 11, 2013) .................................................... 6
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324, Paper No. 19 (Nov. 21, 2013) ................................................... 4
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`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper No. 7 (Oct. 25, 2012) ............................................ 5, 6, 7
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`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
`IPR2014-00436, Paper No. 17 (June 19, 2014) .................................................... 4
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`Prism Pharma Co., Ltd., v. Choongwae Pharma Corp.,
`IPR2014-00315, Paper No. 14 (July 8, 2014) ...................................................... 3
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`ScentAir Techs., Inc. v. Prolitec, Inc.,
`IPR2013-00180, Paper No. 18 (Aug. 26, 2013) ............................................... 6, 8
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`Federal Statutes
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`35 U.S.C. § 313 .......................................................................................................... 1
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`35 U.S.C. § 316(a)(1) ............................................................................................... 21
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`35 U.S.C. § 325(d) ............................................................................................. 1, 3, 5
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`Regulations
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`37 C.F.R. § 42.6(a)(2)(ii) ....................................................................................... 1, 2
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`37 C.F.R. § 42.8 ....................................................................................................... 21
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`ii
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`37 C.F.R. § 42.100(c) ............................................................................................... 21
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`Case No. IPR2014-00618
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`37 C.F.R. § 42.107 ..................................................................................................... 1
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`Other Authorities
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`157 Cong. Rec. S1041-42 (daily ed. Mar. 1, 2011) ................................................... 3
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`77 Fed. Reg. 48680 (Aug. 14, 2012).......................................................................... 3
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`77 Fed. Reg. 48756 (Aug. 14, 2012).......................................................................... 3
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`I.
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`Introduction
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`Case No. IPR2014-00618
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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
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`against U.S. Patent No. 7,921,211 (“the ’211 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, 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 ’211 patent. Another set of Office
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`proceedings against the ’211 patent, as Microsoft requests here, is unnecessary and
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`burdens both the Office and VirnetX. In addition, the primary prior art reference
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`Microsoft relies on here is already being considered by the Office in a
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`reexamination of the ’211 patent. Section 325(d) was designed to avoid the type of
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`serial challenge Microsoft requests.
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`Third, 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 ’211 patent claim.
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`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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`a second petition.”). Microsoft’s Petition is already 58 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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`Case No. IPR2014-00618
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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. 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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`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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`Case No. IPR2014-00618
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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 and arguments already presented to the Office. There are
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`currently two inter partes reexaminations pending before the Office involving the
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`’211 patent, which have been assigned Control Nos. 95/001,789 (the “’789
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`reexamination”) and 95/001,856 (the “’856 reexamination”). As Microsoft
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`acknowledges, Provino is already involved in the ’789 reexamination. (Pet. at 1-2
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`(citing Ex. 1016).) The ’856 reexamination remains pending and involves other
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`references. (Ex. 1017.)
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`Because the Office is already handling two inter partes reexaminations
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`involving the ’211 patentone of which involves Provino, the lead reference
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`asserted here by Microsoftthis Petition presents a serial challenge of the type 35
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`U.S.C. § 325(d) was enacted to prevent. Neither the Board nor VirnetX should be
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`forced to assume the burden of handling duplicative proceedings challenging the
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`’211 patent, involving repeated evaluations of the same prior art references and
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`arguments. 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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`C. 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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`IPR2014-00615 (“the ’615 Petition”) and IPR2014-00616 (“the ’616 Petition”).
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`Instead, the Petition simply alleges that Microsoft’s three petitions against the ’211
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`patent present “just a few grounds.” (Pet. at 57-58.) This allegation is incorrect, as
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`the three petitions present a total of 13 grounds against the ’211 patent. (Pet. at 4
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`(four grounds); ’616 Pet. at 4 (five grounds); ’615 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 Provino are vertically
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`redundant in view its obviousness grounds for common claims, which also involve
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`Provino. In particular, Microsoft contends that Provino anticipates claims 1, 2, 6,
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`14-17, 19-23, 26-41, 43-47, and 50-60,1 but Microsoft also asserts redundant
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`obviousness grounds for many of these claims that are also based on Provino.
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`(Pet. at 4.)
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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, and
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`50-60, which is horizontally redundant in view of Microsoft’s anticipation ground
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`for claims 1, 2, 6, 14-17, 19-23, 26-41, 43-47, and 50-60 in the ’616 Petition and
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`Microsoft’s anticipation ground for claims 1, 2, 6, 14-17, 19-23, 26-31, 33-41, 43-
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`1 The heading of Section V.A in the Petition, which refers to claims “1, 2, 6,
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`14-17, 19-23, 26-28, 33-41, 43-47, 50-52, and 57-60,”
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`is apparently a
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`typographical error. (See Pet. at 13.)
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`47, 50-55, and 57-60 in the ’615 Petition. In addition, the obviousness grounds
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`that Microsoft presents in this Petition for claims 16, 20, 21, 27, 29-33, 35, 40, 44,
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`45, 51, 53-56, 57, and 59 are horizontally redundant in view of Microsoft’s
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`obviousness grounds for overlapping claims in the ’615 Petition and the ’616
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`Petition.
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`Microsoft does not “articulate[] a meaningful distinction in terms of relative
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`strengths and weaknesses with respect to application of the prior art disclosures to
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`one or more claim limitations” for each of its redundant grounds. EMC Corp. v.
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`Personal Web Techs., LLC, IPR2013-00087, Paper No. 25 at 3-4 (June 5, 2013)
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`(emphases added). Through its redundancy section, Microsoft has essentially
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`admitted that it proposes redundant grounds but has not explained why any of its
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`grounds are not redundant. (See Pet. at 57-58.) Consequently, the Board should
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`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 ’211 patent.
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`A. Overview of the ’211 Patent
`The ’211 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 39:30-35.)
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`The ’211 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
`“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
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`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 38:58-39:35.)
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`Compared with a conventional DNS known at the time of filing the ’211
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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 ’211 patent supports
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`establishing a secure communication link and provides an indication of the same.
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`(See, e.g., id. at 55:38-46, 57:38-46, 59:9-60:8.) For example, in FIGS. 26 and 27
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`of the ’211 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 39:51-41:43.)
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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 40:32-35.) A DNS proxy 2610 at the DNS server 2602
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`determines whether the target site is a secure site. (Id. at 39:57-59, 40:32-39.) 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 40:40-42.) If
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`so, the DNS proxy 2610 transmits a message to gatekeeper 2603 to create a secure
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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 39:63-66.) 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 39:66-40:3.) 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 40:3-7.) 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 VirnetX Inc. v. Cisco Systems, Inc. et al., Case
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`No. 6:10-CV-417 (E.D. Tex. April 25, 2012).)
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`Microsoft largely agrees with VirnetX’s proposed level of skill, contending
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`through its expert that “one of ordinary skill . . . 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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`Case No. IPR2014-0061 8
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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. 1023 at 3, 117.)
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`Because so many companies have agreed that VimetX’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 VimetX’s proposed level of skill.
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`C.
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`“Domain Name” (Claims 1, 2, 15—17, 20, 21, 26, 35—37, 39, 40, 44,
`45, 50, 59, and 60)2
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`VimetX’s Pro » osed Construction
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`Microsofi’s Pro n 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.” (Pet. at 6.) This construction is consistent
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`with the patent specification, which gives examples of Internet Protocol and other
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`types of networks in which domain names correspond to network addresses.
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`(See
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`e.g., Ex. 1001 at 4:12-13, 5:6-8, 9:17-18; 16:22-29; 21:20—22.) VimetX requests
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`that the Board adopt the parties’ agreed construction.
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`2 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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`13
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`

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`Case No. IPR2014-0061 8
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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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`Microsoft’s Pro 0 c sed Construction
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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 and arranged to be connected to a
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`communication network, store a plurality of domain names and corresponding
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`network addresses, receive a query for a network address, and indicate in response
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`to the query whether the domain name service system supports establishing a
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`secure
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`communication link.”
`
`Since
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`the
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`claims
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`themselves define
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`the
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`characteristics of the domain name service system, no further construction is
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`necessary. Microsoft agrees, stating that “it is reasonable, for purposes of this
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`proceeding in which the broadest reasonable construction standard applies,
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`to
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`consider the term ‘domain name service system’ as encompassing any system with
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`the characteristics described by the claims.” (Pet. at 6.)
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`l4
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`

`

`E.
`
`The “Indication” Phrases (Claims 1, 17, 36, 41, and 60)
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`Case No. IPR2014-0061 8
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`VimetX’s Pro . osed Construction
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`Microsoft’s Pro . . sed Construction
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`secure communication link itself
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`No construction necessary
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`A visible or non-visible message or
`signal that the DNS system supports
`establishing a secure communication
`link, including the establishment of the
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`Claim 1 of the ’211 patent recites the phrase “indicate in response to the
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`query whether the domain name service system supports establishing a secure
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`communication link.” Independent claim 36 recites “indicating in response to the
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`query whether the domain name service system supports establishing a secure
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`communication link.” And independent claim 60 recites “indicating whether the
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`domain name service system supports establishing a secure communication link.”
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`For simplicity, VimetX refers to these features as the “indication” phrases, and
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`they do not require construction.
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`As recognized by the district court in related litigations involving the ’211
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`patent, the plain meaning of the “indication” phrases is readily understandable, so
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`they do not require further construction. (See Ex. 1015 at 27-28, 31, Memorandum
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`Opinion and Order in the ’417 Litigation (E.D. Tex. Apr. 25, 2012); Ex. 2023 at
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`10, Memorandum Opinion and Order in VimetX Inc. v. Mite] Networks Corp. et
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`al., Case No. 6:11—CV-18 (ED. Tex. Aug. 1, 2012).)
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`Microsoft construes the “indication” phrases to mean “a Visible or non-
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`visible message or signal that the DNS system supports establishing a secure
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`15
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`

`

`
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`communication link, including the establishment of the secure communication link
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`Case No. IPR2014-00618
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`
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`itself.” (Pet. at 7-8.) This construction reads in several features that are not
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`required by the intrinsic record. For example, the claims do not limit the
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`“indication” to any specific embodiment, such as “a visible or non-visible message
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`or signal.” (See Ex. 1015 at 27-28, “Neither the specification nor the claim
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`language provides a basis for limiting ‘indicating’ to a visual indicator.”)
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`Microsoft’s construction also improperly equates establishing a secure
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`communication link with indicating whether the domain name service system
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`supports establishing a secure communication link.
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` The claim language
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`distinguishes these two functions, separately reciting “establishing a secure
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`communication link,” (see, e.g., Ex. 1001 at 55:38-39, claim 1 preamble), and
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`“indicate in response to the query whether the domain name service system
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`supports establishing a secure communication link,” (see, e.g., id. at 55:44-46). By
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`equating the two through its claim construction, Microsoft effectively reads the
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`indication phrases out of the claims. Microsoft’s construction should be rejected.
`
`16
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`

`

`F.
`
`“Secure Communication Link” (Claims 1, 16, 17, 22, 26-29, 33, 35,
`36, 40, 41, 46, 50—53, 57, and 59-60)
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`Case No. IPR2014-0061 8
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`VirnetX’s Pro . osed Construction
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`Microsoft’s Pro 0 c sed Construction
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`A direct communication link that
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`A direct communication link that
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`encryption
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`provides data security through
`encryption
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`provides data security through
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`The parties agree that a “secure communication link” in the context of the
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`’211 patent claims means “a direct communication link that provides data security
`
`through encryption.”
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`(See Pet- at 8-9.) This construction is supported by the
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`intrinsic record- For example, the patent specification discloses techniques for
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`implementing a secure communication link using encryption.
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`(See, e.g., Ex. 1001
`
`at 3: 10-67 (describing “the Tunneled Agile Routing Protocol (TARP) [that] uses a
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`unique two-layer encryption format”).) The specification also discloses that its
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`later-discussed embodiments can use the earlier-discussed principles of encryption,
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`identifying “different embodiments or modes that can be employed using the
`
`aforementioned principles.”
`
`(Id. at 24:33-34; see also id. at 33:66-67 (“The
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`following describes various improvements and features that can be applied to the
`
`embodiments described above.”).)
`
`The specification also refers to the “FreeS/WAN” project as a conventional
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`scheme of creating a “VP ’
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`a type network that may comprise secure
`
`,
`
`
`
`communication links-
`
`(Ex. 1001 at 39:18-29.) The FreeS/WAN glossary of terms
`
`in the ’211 patent’s prosecution history explains that a VPN is “a network which
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`17
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`

`

`
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`can safely be used as if it were private, even though some of its communication
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`Case No. IPR2014-00618
`
`
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`uses insecure connections. All traffic on those connections is encrypted.”
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`(Ex. 2026 at 24, Glossary for the Linux FreeS/WAN Project.) This definition is
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`also consistent with other definitions of VPN, including one that states: “VPNs
`
`enjoy the security of a private network via access control and encryption . . . .”
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`(Ex. 2027 at 8, McGraw-Hill Computer Desktop Encyclopedia (9th ed. 2001)
`
`(emphasis added).)
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`Requiring encryption is also consistent with a district court’s construction of
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`“secure communication link,” which is identical to the parties’ proposed
`
`construction here. (Ex. 2038 at 1, Order in VirnetX Inc. v. Cisco Systems, Inc. et
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`al., Case No. 6:10-CV-417 (E.D. Tex. Oct. 4, 2012).) This construction was urged
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`by Apple and the other litigation defendants. They argued the construction was
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`necessary because “VirnetX unequivocally disclaimed ‘secure communications
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`links’ that are not encrypted.” (Ex. 2039, Motion for Reconsideration in VirnetX v.
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`Cisco Systems, Inc. et al., Case No. 6:10-CV-417 (E.D. Tex. June 21, 2012) at 1,
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`2.) They cited file history passages in a ’211 patent reexamination as support.
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`(See, e.g., id. at 2, citing Ex. 2043 at 28.) VirnetX did not oppose defendants’
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`construction, and the district court adopted their proposed construction in full. (Ex.
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`2038 at 1.)
`
`18
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`

`

`Case No. IPR20 14-0061 8
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`For these reasons, the Board should adopt the parties’ agreed construction of
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`“secure communication link,” which is “a direct communication link that provides
`
`data security through encryption.”3
`
`G.
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`“Transparently” (Claims 27 and 51)
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`VirnetX’s Pro . osed Construction
`
`creating the secure communication link
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`Microsoft’s Pro used Construction The user need not be involved in
`
`The user need not be involved in
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`creating the [secure communication
`link]/[secure link]
`
`The ’211 patent specification and claims define the term “transparently” to
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`mean that “the user need not be involved in creating the secure communication
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`link.” Claim 27, for example, recites, “wherein the domain name service system is
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`3 In IPR2014-00237 and -00238, the Board preliminarily construed “secure
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`communication link” in the context of related US. Patent No. 8,504,697 to mean
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`“a transmission path that restricts access to data, addresses, or other information on
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`the path, generally using obfuscation methods to hide information on the path,
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`including, but not limited to, one or more of authentication, encryption, or address
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`hopping.”
`
`(See,
`
`e.g.,
`
`IPR2014-00237, Paper No.
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`15
`
`at
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`10
`
`(May 14,
`
`2014).) VirnetX respectfully disagr