Filed on behalf of: VirnetX Inc.
`By:
`
`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
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2015-00810
`Patent 8,868,705
`
`
`
`
`
`
`
`
`
`
`Declaration of Fabian Monrose, Ph.D.
`
`
`
`1
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`Page 1 of 53
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`VIRNETX EXHIBIT 2016
`Apple v. VirnetX
`Trial IPR2015-00810
`
`

`
`Case No. IPR2015-00810
`
`Table of Contents
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 4
`
`Resources Consulted ........................................................................................ 5
`
`III. Background and Qualifications ....................................................................... 5
`
`IV. Level of Ordinary Skill .................................................................................. 10
`
`V.
`
`Claim Terms .................................................................................................. 11
`
`A.
`
`B.
`
`“Secure Domain Name” (Claims 3, 10, and 25) ................................. 11
`
`“Encrypted Communications Channel” Phrases (Claims 1, 2, 4-
`7, 9, 11-13, 18, 21, 22, and 26-29) ...................................................... 12
`
`C.
`
`“Provisioning Information” (Claims 1, 2, 9, and 21) .......................... 14
`
`D. Other Terms ......................................................................................... 15
`
`VI. Beser and RFC 2401 ...................................................................................... 17
`
`A.
`
`B.
`
`Beser’s Disclosure ............................................................................... 17
`
`Claims 1 and 21 ................................................................................... 21
`
`1.
`
`“Intercepting From the Client Device a Request to Look
`Up an Internet Protocol (IP) Address Corresponding to a
`Domain Name Associated With the Target Device” ................ 21
`
`a)
`
`b)
`
`The Alleged Request in Beser Is Not a “Request to
`Look Up an Internet Protocol (IP) Address” .................. 22
`
`The Alleged Request in Beser Is Not
`“Intercept[ed]” ................................................................ 24
`
`2.
`
`Beser and RFC 2401 Would Not Have Been Combined
`as the Petition Suggests ............................................................. 27
`
`C. Dependent Claims ............................................................................... 32
`
`1.
`
`2.
`
`Dependent Claims 3, 10, and 25 ............................................... 32
`
`Dependent Claims 14 and 31 .................................................... 32
`
`2
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`

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`3.
`
`Dependent Claims 18-20 and 22-24 ......................................... 33
`
`VII. Conclusion ..................................................................................................... 34
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`Case No. IPR2015-00810
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`3
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`Case No. IPR2015-00810
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`I, FABIAN MONROSE, declare as follows:
`
`I.
`
`Introduction
`1.
`I have been retained by VirnetX Inc. (“VirnetX”) for this inter partes
`
`review proceeding. I understand that this proceeding involves U.S. Patent No.
`
`8,868,705 (“the ’705 patent”). I understand the ’705 patent is assigned to VirnetX
`
`and that it is part of a family of patents that stems from U.S. provisional
`
`application nos. 60/106,261 (“the ’261 application”), filed on October 30, 1998,
`
`and 60/137,704 (“the ’704 application”), filed on June 7, 1999. I understand that
`
`the ’705 patent is a continuation of U.S. application no. 13/049,552 filed March 16,
`
`2011 (“the ’552 application”), which is a continuation of U.S. application no.
`
`11/840,560 filed August 17, 2007 (now U.S. Patent No. 7,921,211, “the ’211
`
`patent”), which is a continuation of U.S. application no. 10/714,849 filed
`
`November 18, 2003 (now U.S. Patent No. 7,418,504 (“the ’504 patent), which is a
`
`continuation of U.S. application no. 09/558,210 filed April 26, 2000 (“the ’210
`
`application,” abandoned). And I understand the ’210 application is a continuation-
`
`in-part of U.S. application no. 09/504,783 filed February 15, 2000 (now U.S.
`
`Patent 6,502,135, “the ’135 patent”), and that the ’135 patent is a continuation-in-
`
`part of U.S. application no. 09/429,643 (now U.S. Patent No. 7,010,604) filed
`
`October 29, 1999, which claims priority to the ’261 and ’704 applications.
`
`4
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`Case No. IPR2015-00810
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`II. Resources Consulted
`2.
`I have reviewed the ’705 patent, including claims 1-34. I have also
`
`reviewed the Petition for Inter Partes Review (Paper No. 1) filed with the U.S.
`
`Patent and Trademark Office (“Office”) by Apple Inc. on March 2, 2015 (Paper
`
`No. 1, the “Petition”). I have also reviewed the Patent Trial and Appeal Board’s
`
`(“Board”) decision to institute inter partes review (Paper No. 8, the “Decision”) of
`
`September 11, 2015.
`
`3.
`
`I understand that in this proceeding the Board instituted review of the
`
`’705 patent on two grounds: (1) obviousness of claims 1-4, 6-10, 12-26, and 28-34
`
`over Beser and RFC 2401; and (2) obviousness of claims 5, 11, and 27 over Beser,
`
`RFC 2401, and Brand. I have reviewed the exhibits and other documentation
`
`supporting the Petition that are relevant to the Decision and the instituted grounds,
`
`and any other material that I reference in this declaration.
`
`III. Background and Qualifications
`4.
`I have a great deal of experience and familiarity with computer and
`
`network security, and have been working in this field since 1993 when I entered
`
`the Ph.D. program at New York University.
`
`5.
`
`I am currently a Professor of Computer Science at the University of
`
`North Carolina at Chapel Hill. I also hold an appointment as the Director of
`
`Computer and Information Security at the Renaissance Computing Institute
`
`5
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`Case No. IPR2015-00810
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`(RENCI). RENCI develops and deploys advanced technologies to facilitate
`
`research discoveries and practical innovations. To that end, RENCI partners with
`
`researchers, policy makers, and technology leaders to solve the challenging
`
`problems that affect North Carolina and our nation as a whole. In my capacity as
`
`Director of Computer and Information Security, I
`
`lead
`
`the design and
`
`implementation of new platforms for enabling access to, and analysis of, large and
`
`sensitive biomedical data sets while ensuring security, privacy, and compliance
`
`with regulatory requirements. At RENCI, we are designing new architectures for
`
`securing access to data (e.g., using virtual private networks and data leakage
`
`prevention technologies) hosted among many different institutions. Additionally, I
`
`serve on RENCI’s Security, Privacy, Ethics, and Regulatory Oversight Committee
`
`(SPOC), which oversees the security and regulatory compliance of technologies,
`
`designed under the newly-formed Data Science Research Program and the Secure
`
`Medical Research Workspace.
`
`6.
`
`I received my B.Sc. in Computer Science from Barry University in
`
`May 1993. I received my MSc. and Ph.D. in Computer Science from the Courant
`
`Institute of Mathematical Sciences at New York University in 1996 and 1999,
`
`respectively. Upon graduating from the Ph.D. program, I joined the Systems
`
`Security Group at Bell Labs, Lucent Technologies. There, my work focused on the
`
`analysis of
`
`Internet Security
`
`technologies
`
`(e.g.,
`
`IPsec and client-side
`
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`Case No. IPR2015-00810
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`authentication) and applying
`
`these
`
`technologies
`
`to Lucent’s portfolio of
`
`commercial products. In 2002, I joined the Johns Hopkins University as Assistant
`
`Professor in the Computer Science department. I also served as a founding
`
`member of the Johns Hopkins University Information Security Institute (JHUISI).
`
`At JHUISI, I served a key role in building a center of excellence in Cyber Security,
`
`leading efforts in research, education, and outreach.
`
`7.
`
`In July of 2008, I joined the Computer Science department at the
`
`University of North Carolina (UNC) Chapel Hill as Associate Professor, and was
`
`promoted to Full Professor four years later. In my current position at UNC Chapel
`
`Hill, I work with a large group of students and research scientists on topics related
`
`to cyber security. My former students now work as engineers at several large
`
`companies, as researchers in labs, or as university professors themselves. Today,
`
`my research focuses on applied areas of computer and communications security,
`
`with a focus on traffic analysis of encrypted communications (e.g., Voice over IP);
`
`Domain Name System (DNS) monitoring for performance and network abuse;
`
`network security architectures for traffic engineering; biometrics and client-to-
`
`client authentication techniques; computer forensics and data provenance; runtime
`
`attacks and defenses for hardening operating system security; and large-scale
`
`empirical analyses of computer security incidents. I also regularly teach courses in
`
`computer and information security.
`
`7
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`8.
`
`I have published over 75 papers in prominent computer and
`
`communications security publications. My research has received numerous
`
`awards, including the Best Student Paper Award (IEEE Symposium on Security &
`
`Privacy, July, 2013), the Outstanding Research in Privacy Enhancing Technologies
`
`Award (July, 2012), the AT&T Best Applied Security Paper Award (NYU-Poly
`
`CSAW, Nov., 2011), and the Best Paper Award (IEEE Symposium on Security &
`
`Privacy, May, 2011), among others. My research has also received corporate
`
`sponsorship, including two Google Faculty Research Awards (2009, 2011) for my
`
`work on network security and computer forensics, as well as an award from
`
`Verisign Inc. (2012) for my work on DNS.
`
`9.
`
`I am the sole inventor or a co-inventor on three issued US patents and
`
`four pending patent applications, nearly all of which relate to network and systems
`
`security. Over the past 12 years, I have been the lead investigator or a
`
`co-investigator on grants totaling nearly nine million US dollars from the National
`
`Science Foundation (NSF), the Department of Homeland Security (DHS), the
`
`Department of Defense (DoD), and industry. In 2014, I was invited to serve on the
`
`Information Science and Technology (ISAT) study group for the Defense
`
`Advanced Research Projects Agency (DARPA). During my
`
`three year
`
`appointment, I will assist DARPA by providing continuing and independent
`
`8
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`Case No. IPR2015-00810
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`assessment of the state of advanced information science and technology as it
`
`relates to the U.S. Department of Defense.
`
`10.
`
`I have chaired several international conferences and workshops,
`
`including for example, the USENIX Security Symposium, which is the premier
`
`systems-security conference for academics and practitioners alike. Additionally, I
`
`have also served as Program Chair for the USENIX Workshop on Hot Topics in
`
`Security, the Program Chair for the USENIX Workshop on Large-scale Exploits &
`
`Emergent Threats, the local arrangements Chair for the Financial Cryptography
`
`and Data Security Conference, and the General Chair of the Symposium on
`
`Research in Attacks and Defenses. As a leader in the field, I have also served on
`
`numerous technical program committees including the Research in Attacks,
`
`Intrusions, and Defenses Symposium (2012, 2013), USENIX Security Symposium
`
`(2013, 2005-2009), Financial Cryptography and Data Security (2011, 2012),
`
`Digital Forensics Research Conference (2011, 2012), ACM Conference on
`
`Computer and Communications Security (2009-2011, 2013), IEEE Symposium on
`
`Security and Privacy (2007, 2008), ISOC Network & Distributed System Security
`
`(2006—2009), International Conference on Distributed Computing Systems (2005,
`
`2009, 2010), and USENIX Workshop on Large-scale Exploits and Emergent
`
`Threats (2010-2012).
`
`9
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`Case No. IPR2015-00810
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`11. From 2006 to 2009, I served as an Associate Editor for IEEE
`
`Transactions on Information and Systems Security (the leading technical journal
`
`on cyber security), and currently serve on the Steering Committee for the USENIX
`
`Security Symposium.
`
`12. My curriculum vitae, which is appended, details my background and
`
`technical qualifications. Although I am being compensated at my standard rate of
`
`$450/hour for my work in this matter, the compensation in no way affects the
`
`statements in this declaration.
`
`IV. Level of Ordinary Skill
`13.
`I am familiar with the level of ordinary skill in the art with respect to
`
`the inventions of the ’705 patent as of what I understand is the patent’s early-2000
`
`priority date. Specifically, based on my review of the technology, the educational
`
`level of active workers in the field, and drawing on my own experience, I
`
`believe a person of ordinary skill in art at that time would have had a master’s
`
`degree in computer science or computer engineering, as well as two years of
`
`experience in computer networking with some accompanying exposure to network
`
`security. My view is consistent with VirnetX’s view that a person of ordinary skill
`
`in the art requires a master’s degree in computer science or computer engineering
`
`and approximately two years of experience in computer networking and computer
`
`security. I have been asked to respond to certain opinions offered by Dr. Roberto
`
`10
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`Case No. IPR2015-00810
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`Tamassia, consider how one of ordinary skill would have understood certain claim
`
`tenns, and consider how one of ordinary skill in the art would have understood the
`
`references mentioned above in relation to the claims of the ’705 patent. My
`
`findings are set forth below.
`
`V.
`
`Claim Terms
`
`14.
`
`I understand that in an inter partes review proceeding, the claims of a
`
`patent are construed under the broadest reasonable interpretation in light of the
`
`specification-
`
`I also understand that the parties have proposed constructions for
`
`certain terms of the ’705 patent. Unless otherwise noted, I have used Patent
`
`Owner’s proposed constructions in my analysis.
`
`In my opinion, Patent Owner’s
`
`proposed constructions are consistent with the specification- To the extent Patent
`
`Owner has not proposed a construction for a term, I understand that term to have
`
`its plain and ordinary meaning from the perspective of one of ordinary skill in the
`
`art in light of the specification- I have applied that understanding in my analysis.
`
`A.
`
`“Secure Domain Name” (Claims 3, 10, and 25)
`
`15.
`
`I understand that the parties and the Board have put forth the following
`
`constructions for purposes of this proceeding:
`
`VirnetX’s Proposed
`Construction
`
`Apple’s Proposed
`Construction
`
`A non—standard domain
`name that corresponds to
`a secure computer
`
`A name that corresponds
`to a secure computer
`network address
`
`network address and
`
`Decision’s Construction
`
`No construction proposed
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`Case No. IPR2015-00810
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`cannot be resolved by a
`conventional domain
`name service (DNS)
`
`
`16. The specification teaches that a “secure domain name” is “a
`
`nonstandard domain name.” (Ex. 1001 at 7:29-31; 50:22-31.) Examples of “a
`
`nonstandard domain name” are provided in the specification: .scom, .snet, .sorg,
`
`.sedu, .smil, and .sgov. (Id. at 7:39-42.) The specification also explains that a
`
`“secure domain name” “corresponds to a secure computer network address,”
`
`stating that “SDNS 3313 contains a cross-reference database of secure domain
`
`names and corresponding secure network addresses.” (Id. at 51:6-10.)
`
`17. Because a “secure domain name” is “a non-standard domain name,”
`
`the specification explains that “a query to a standard domain name service (DNS)
`
`will return a message indicating that the universal resource locator (URL) is
`
`unknown.” (Id. at 50:32-35; Figs. 33, 34.) One of ordinary skill in the art would
`
`understand based on the disclosure of the ’705 patent that to obtain the URL for a
`
`“secure domain name,” “a secure domain name service (SDNS)” must be queried.
`
`(Id. at 51:35-38; Figs. 33, 34.)
`
`B.
`
`“Encrypted Communications Channel” Phrases (Claims 1, 2, 4-7,
`9, 11-13, 18, 21, 22, and 26-29)
`
`18.
`
`I understand that the parties and the Board have put forth the following
`
`constructions for purposes of this proceeding:
`
`12
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`Case No. IPR2015-00810
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`VimetX’s Proposed
`
`Construction
`
`Apple’s Proposed
`
`Construction A direct communications No construction proposed No construction proposed
`
`channel that is enc p ted
`
`19. One of ordinary skill in the art would understand that the ’705 patent
`
`describes encrypted communications that are direct between a client device and a
`
`target device. For instance, in one embodiment, the ’705 patent describes the
`
`communication between an originating TARP terminal and a destination TARP
`
`terminal as direct.
`
`(See, e.g., Ex. 1001, 9:41-50, Fig. 2; see also id. at 33:43-51
`
`(describing a variation of the TARP embodiments as
`
`including a direct
`
`communication link); 38:6—9 (describing the embodiment of Figure 24 in which a
`
`first computer and second computer are connected directly).) The ’705 patent
`
`similarly describes direct encrypted communications in later embodiments as well.
`
`(See, e.g., id. at 40:7-10, 40:66-41:2 (describing a virtual private network as being
`
`direct between a user’s computer and target), 42:6—10, 42:66—43:3 (describing a
`
`load balancing example in which a virtual private network is direct between a first
`
`host and a second host), 48:66-49: 1, 49:10-22 (describing a secure communication
`
`link that is direct between a first computer and a second computer), Figs. 24, 26,
`
`28, 29, 33.)
`
`20.
`
`In each of these embodiments, the ’705 patent specification discloses
`
`that the communication traverses a network (or networks) through which it is
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`Case No. IPR2015-00810
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`simply passed or routed via various network devices such as Intemet Service
`
`Providers, firewalls, and routers. (See, e.g., id. at Figs. 2, 24, 28, 29, 33.)
`
`C.
`
`“Provisioning Information” (Claims 1, 2, 9, and 21)
`
`21.
`
`I understand that the parties and the Board have put forth the following
`
`constructions for purposes of this proceeding:
`
`VimetX’s Proposed
`Construction
`
`Apple’s Proposed
`Construction
`
`Decision’s Construction
`
`No construction proposed
`
`network uses enc tion
`
`Information that is used
`to establish an encrypted
`communications channel
`
`Information that enables
`communication in a
`virtual private network,
`where the virtual private
`
`22.
`
`In my opinion, Patent Owner’s construction is consistent with the
`
`general notion that provisioning refers to setting up or establishing a connection or
`
`service.
`
`One dictionary explains
`
`that provisioning is
`
`“[s]etting up a
`
`telecommunications service for a particular customer,” and that “[c]ommon
`
`carriers provision circuits by programming their computers to switch customer
`
`lines into the appropriate networks.”
`
`(Ex. 2007 at 6, McGraw-Hill Computer
`
`Desktop Encyclopedia (9th ed. 2001).) Applying these principles to provisioning
`
`in the context of the ’705 patent, encrypted communications channel provisioning
`
`refers to setting up or establishing an encrypted communication channel. Thus, in
`
`the context of the ’705 patent, the “provisioning information” is “information that
`
`is used to establish an encrypted communications channel.”
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`23.
`
`In my opinion, in the context of the ’705 patent, one of ordinary skill in
`
`the art would not understand provisioning information to encompass any and all
`
`information that merely “enables or aids in” communication using an encrypted
`
`communications channel, as that information may have nothing to do with
`
`provisioning. For example, information that simply enabled or aided in
`
`communication using an encrypted communications channel would encompass
`
`source and destination information for individual packets of data that are traveling
`
`over a pre-existing channel. One of ordinary skill in the art would not have
`
`understood a channel to be provisioned every time a data packet is sent across it.
`
`D. Other Terms
`24.
`I understand that the parties and Board have provided the following
`
`constructions for purposes of this proceeding. I agree that the claim language
`
`encompasses the features described in each of VirnetX’s constructions.
`
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`“Intercept[ing] . . . A Request to Look up an Inlternet Protocol (IP) address”
`Claims 1 and 21
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`Case No. IPR2015-00810
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`No construction proposed
`
`VirnetX’s Proposed
`
`Construction
`
`Apple’s Proposed
`
`Construction
`
`Receiving a request
`No construction
`pertaining to a first entity
`necessary; alternatively,
`receiving a request to look at another entity
`up an intemet protocol
`address and, apart from
`resolving it into an
`address, performing an
`evaluation on it related to
`
`establishing an encrypted
`communications channel
`
`Construction
`
`Construction
`
`a network address
`
`an IP address
`
`1 Step 2 of claims 1 and 21 recites “the request to look up the IP address
`
`transmitted in step ( 1)” instead of “intercepted in step ( 1)-” (Ex. 1001 at 55:53-54,
`
`57:1-2; see Ex. 1002 at 638, 639, 641, 655-56.) I understand this was an error and
`
`that Patent Owner filed a Request for a Certificate of Correction to correct this
`
`mistake.
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`Case No. IPR2015-00810
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`No construction proposed
`
`6, 11, 12, 27 and 28
`
`Construction
`
`Construction
`
`A communication
`No construction
`necessary, alternatively, a medium for transmitting
`transmission link for
`data that is encoded by
`transmitting data that is
`varying a carrier signal /
`encoded by varying a
`A communication
`carrier signal / A
`medium for transmitting
`transmission link for
`data that is not encoded
`
`transmitting data that is
`not encoded by varying a
`carrier si al
`
`by varying a carrier signal
`
`“Phone” Claims 8 15 30 and 32
`
`VirnetX’s Proposed
`
`Construction
`
`Apple’s Proposed
`
`Construction
`
`No construction necessary A device or component
`that can provide
`tele hon functionali
`
`VI. Beser and RFC 2401
`
`A.
`
`Beser’s Disclosure
`
`No construction proposed
`
`25. Beser “relates to communications in data networks,” (Ex. 1007 at 1:8-
`
`9), and the fact that “the Internet is not a very secure network,” (id. at 1:26-27).
`
`Prior art methods attempted to secure communications by “encrypt[ing]
`
`the
`
`information inside the IP packets before transmission.” (Id. at 1:54-56.) Beser
`
`teaches that
`
`this method is not secure because a determined hacker could
`
`accumulate enough packets from a source to decrypt the message. (Id. at 1:56-58.)
`
`Nor, as Beser teaches, is this method practicable, especially in the context of Voice
`
`and audio data, because encryption at the source and decryption at the destination
`
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`Case No. IPR2015-00810
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`are computationally intensive. (Id. at 1:58-67, 2:8-17.) Beser therefore identifies a
`
`need for a more secure system that prevents a hacker from intercepting media flow
`
`without the computational burden associated with encryption. (Id. at 2:36-40.)
`
`26.
`
`Instead of using encryption, Beser teaches a “tunneling association”
`
`that hides
`
`the originating and
`
`terminating ends of
`
`the
`
`tunnel during
`
`communications on a public network. (Id. at 3:1-9.) Because the source is hidden,
`
`hackers are prevented from intercepting communications, resulting in “increase[d]
`
`[] security of communication without an increased computational burden.” (Id. at
`
`2:36-40, 3:4-9 (emphasis added).) One of ordinary skill in the art would have
`
`understood that Beser teaches away from encryption and that its proposed solution
`
`avoids encryption.
`
`27. Beser’s solution involves “initiating a tunnelling association between
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`an originating end [24] and a terminating end [26]” facilitated by an intermediary,
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`trusted-third-party network device 30. (Id. at 1:45-67, 7:62-64.) Figure 1 of Beser
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`illustrates this solution:
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`(Id. at Fig. 1.)
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`28. When an originating end device 24 in Beser wants to communicate
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`with a terminating end device 26, it sends a tunnel initiation request 112 to first
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`network device 14. (Id. at 7:65-67.) This request “includes a unique identifier for
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`the terminating end of the tunnelling association.” (Id. at 8:1-3.) One of ordinary
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`skill in the art would not understand this request (even containing a “unique
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`identifier”) to be a “request to look up an internet protocol (IP) address of the
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`second network device.”
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`(Id. at Fig. 6.)
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`29. The first network device 14 then sends an inform message 114 with
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`tunnel initiation request 112 to trusted-third-party network device 30 by
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`constructing one or more IP packets 58. (Id. at 8:3-4, 11:9-25.) The trusted-third-
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`party network device 30 associates a public IP address of a second network device
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`16 with the unique identifier of terminating telephony device 26. (Id. at 8:4-7,
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`11:26-32.) The first and second network devices 14 and 16 then “negotiate”
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`private IP addresses through the public network 12. (Id. at 8:9-15, 11:58, Fig. 6
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`(step 118).) This “negotiation” assigns a first private network address to the
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`originating device 24 and a second private network address to the terminating
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`device 26. (Id. at 12:2-4.)
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`30. Once assigned, the private network address of originating device 24
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`and the public IP address of first network device 14 are communicated to the
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`second network device 14. (Id. at 13:33-48.) Similarly, the private network
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`address of the terminating device 26 and the public IP address of the second
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`network device 16 are communicated to the first network device 14. (Id. at 14:19-
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`33.)
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`B. Claims 1 and 21
`1. “Intercepting From the Client Device a Request to Look Up an
`Internet Protocol (IP) Address Corresponding to a Domain
`Name Associated With the Target Device”
`I understand that independent claim 1 recites, inter alia, “intercepting
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`31.
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`from the client device a request to look up an Internet Protocol (IP) address
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`corresponding to a domain name associated with the target device.” I understand
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`that independent claim 21 similarly recites to “intercept from the client device a
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`request to look up an Internet Protocol (IP) address corresponding to a domain
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`name associated with the target device.” In addressing these limitations, I
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`understand Petitioner points to Beser’s “request to initiate a tunneling association
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`with a terminating end device.” (Pet. at 32 (citing Ex. 1007 at 7:64-8:1, 9:64-
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`10:41).) Beser’s request, however, is not a “request to look up an Internet Protocol
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`(IP) address” and is not “intercept[ed].”
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`a)
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`The Alleged Request in Beser Is Not a “Request to
`Look Up an Internet Protocol (IP) Address”
`In my opinion, Beser’s request to initiate a tunneling connection is just
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`32.
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`that—a request to initiate a tunnel. This understanding is consistent with the
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`purpose of Beser’s tunneling method; as explained by Dr. Tamassia, “the general
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`purpose is the one of initiating a tunneling type of communication between two
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`devices.” (Ex. 2015 at 110:9-11.) Simply put, a tunneling request is issued and is
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`processed in a pre-established way to initiate a tunnel between two devices. In my
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`opinion, the Petition points to incorrect statements about Beser in attempting to
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`show otherwise.
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`33. For example, the Petition alleges that the trusted-third-party network
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`device in Beser will “look up and return to the first network device” a “private IP
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`address for the terminating device.” (Pet. at 34.) One of ordinary skill would have
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`understood this to be incorrect. The first and second network devices, not the
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`trusted-third-party network device, “negotiate” private IP addresses, including the
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`private IP address for the terminating device. (Ex. 1007 at 8:9-15, 11:58, Fig. 6
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`(step 118).) Moreover, one of ordinary skill in the art would have understood that
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`the negotiation does not involve looking up any IP address, but rather involves
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`assignment of a first private network address to the originating device and a second
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`private network address to the terminating device. (Id. at 12:2-4.)
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`34. The Petition also alleges that the trusted-third-party network device in
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`Beser will “look up and return to the first network device” a “public IP address for
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`the second network device.” (Pet. at 34.) But Beser simply states that the database
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`entry in the trusted-third-party network device 30 may include a public IP 58
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`address for the terminating telephony device 26. (Ex. 1007 at 11:50-55.) One of
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`ordinary skill in the art would not have understood Beser to suggest that this data
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`structure is looked up when the tunnel request is received by device 30, let alone
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`that the public address of telephony device 26 is specifically looked up. Beser only
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`teaches that when a trusted-third-party network device 30 is informed of a request
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`to initiate a tunnel, it associates a public IP address of a second network device 16
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`with the unique identifier of terminating telephony device 26. (Ex. 1007 at 11:26-
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`32.)
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`35.
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`In my opinion, none of the processes in Beser transform the request to
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`initiate a tunneling connection into a request to look up an IP address. In my
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`opinion one of the novel aspects of the claims is that, while a request to look up an
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`IP address is transmitted, the request is intercepted allowing it not to be processed
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`in the conventional manner. (See, e.g., Ex. 1001 at 40:1-29.)
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`b)
`The Alleged Request in Beser Is Not “Intercept[ed]”
`36. Petitioner alleges that the tunneling request in Beser is “‘intercepted’
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`by each of the first network device and the trusted-third-party network device
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`because they each receive ‘a request pertaining to a first entity at another entity.”
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`(Pet. at 33.) Petitioner alleges that this is so because “the request contains a unique
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`identifier associated with the terminating end device.” (Id.) In other words, under
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`Petitioner’s theory, because the tunneling request includes a unique identifier
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`associated with the terminating end device, it “pertains to” the terminating end
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`device, but is received (as intended by Beser’s system) by the first network device
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`and the trusted-third-party network device. I have reviewed the cross examination
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`testimony of Dr. Tamassia, and note that he admitted during cross-examination that
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`this understanding of “intercepting” was incorrect, and instead explained that when
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`he referred to the term “pertaining,” what he meant was that it could include either
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`a scenario in which a request is “intended for” receipt at a destination other than
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`the destination at which the request is intercepted, or a scenario in which a request
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`is “ordinarily received by another entity, and instead, it is received at the first
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`entity.” (Ex. 2015 at 80:3-13.)2 In my opinion, neither the first network device nor
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`2 I understand that the Board has explained in a related proceeding involving a
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`related patent that “one of ordinary skill in the art would have understood that
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`the trusted-third-party network device in Beser performs “intercepting” when
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`analyzed in a manner consistent with how Dr. Tamassia understands the term.
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`37.
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`In Beser, when an originating end device wants to communicate with a
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`terminating end device, it sends a tunnel initiation request to the first network
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`device. (Ex. 1007 at 7:65-67.) One of ordinary skill in the art would have
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`understood that tunneling requests in Beser always go to, and are always intended
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`to go to, the first network device. Beser does not disclose a single scenario in
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`which a tunneling request is ordinarily received by another entity, but is instead
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`received by the first network device. Nor does Beser disclose any scenario in
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`which a tunneling request is intended for receipt at ano