`
`
`
`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`VIRNETX,
`
`INC.
`
`—vs—
`
`CISCO SYSTEMS,
`
`INC., ET AL
`
`VV—JVVVU
`
`DOCKET NO. 6:10CV417
`
`Tyler, Texas
`9:00 a.m.
`
`January 5, 2012
`
`TRANSCRIPT OF MARKMAN HEARING
`BEFORE THE HONORABLE LEONARD DAVIS,
`UNITED STATES DISTRICT JUDGE
`
`A,P P E A R A N C E S
`
`(SEE SIGN—IN SHEETS DOCKETED IN THIS CASE.)
`
`COURT REPORTER:
`
`MS. SHEA SLOAN
`
`_
`
`211 West Ferguson
`Tyler, Texas
`75702
`
`Proceedings taken by Machine Stenotype;
`produced by a Computer.
`
`transcript was
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`I
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`VIRNETX EXHIBIT 2003
`
`Apple V. VimetX
`Trial IPR2015-00812
`
`VIRNETX EXHIBIT 2003
`Apple v. VirnetX
`Trial IPR2015-00812
`
`
`
`90
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`What is next?
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`MR. DESMARAIS:
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`Thank you, Your Honor, it is John
`
`Desmarais for Cisco. We will handle the "secure domain name
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`service." Counsel‘s comments just then is actually a good
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`entree because he just said that the patent doesn't deal with
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`a conventional or standard DNS service, and that is one of the
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`grappling issues here because we want to actually put that in
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`the construction.
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`So if we look at Slide 84.
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`This is one of those situations that after your
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`prior Markman,
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`in the reexam virnetX told the Patent Office
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`that the prior construction was,
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`in fact, a faulty position
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`because the "secure domain name service" is not a conventional
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`DNS server. Your can see your construction versus what they
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`told the PTO right there on Slide 84.
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`So both sides here agree that the construction
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`should be redone, and you see that on Slide 85 right from
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`VirnetX's opening brief. Both of us are proposing a brand new
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`construction.
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`When you look at what the issue is on the next
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`slide, here are the two competing constructions, Your Honor,
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`presented on Slide 86. What I put
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`in red—underline the
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`parties have both added,
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`so we agree on that. And that was
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`added by both of us.
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`What is in yellow under defendants' proposed
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`Page 2 of 10
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`91
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`construction are the two things we are still disputing. And
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`that first point is it needs to be a nonstandard look—up, as
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`Counsel for virnetX just said, because the conventional is not
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`what this patent is about.
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`I will show you why.
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`And then in the second part,
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`"and performs its
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`services accordingly," are the exact words that VirnetX told
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`the Patent Office at the same time they told them that part
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`which is in red.
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`So Virnetx changed their construction to add
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`what is in redsunderlining, as we did, based on a sentence
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`they said to the Patent Office. But they left out the second
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`half of the sentence, which is what we show in yellow, and I
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`can show you that.
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`The first issue,
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`the nonstandard, if you look on
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`Slide 88,
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`time and time again through the reexam this was
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`highlighted to the Patent Examiner. This is excerpts from
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`VirnetX's response to the Patent Office.
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`The specification of
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`the '180 patent clearly teaches that the claim "secure domain
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`name service" is unlike the conventional domain name service.
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`They go on.
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`It is in contrast to a conventional.
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`It is a
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`nonstandard domain name.
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`It is not available with the
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`traditional systems. There are drawbacks to the conventional
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`system.
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`'Every time they spoke about it,
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`including just a few
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`moments ago,
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`they said it is nonstandard. All we are doing is
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`trying to put that into the construction to differentiate it
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`Page30f10
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`from standard.
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`And if you look at the parties' construction of
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`"secure domain name,” they have already agreed to that for
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`”secure domain name." Their proposed construction has
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`nonstandard domain name. Ours does too. This term is "secure
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`domain name service."
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`It should be likewise.
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`The second part of what we wanted to add is the rest
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`of the statement that they left off. And this is on Slide 91.
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`To support the language that both parties have added, we both
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`cited to this excerpt here, which is Paragraph 12. That is
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`from what VirnetX told the Patent Office.
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`And you can see they said:
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`A secure domain name
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`service of
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`the '180 patent instead recognizes that a query
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`message is requesting a secure network address.
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`That first part they put
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`into their construction,
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`and so did we.
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`Then they left off the second part,
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`"and
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`performs its services accordingly." We would submit that if
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`you are going to put in the first part, you need the second
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`part.
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`The omission that they took out puts ambiguity into
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`the construction, and they have got no basis for putting half
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`of the argument in and half out.
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`They told the Patent Office
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`that this is what their domain name service was. That is what
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`they should be held to.
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`The patent issued as a result of
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`this, and they need to take account of what
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`they said to the
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`Page 4 of 10
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`Patent Office to get the patent issued.
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`They should not be
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`taking a different position here in Federal Court.
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`93
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`THE COURT: Okay.
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`Mr. McLeroy?
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`MR. McLEROY: Your Honor, first of all,
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`I would like
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`to correct one thing Mr. Desmarais said. During reexamination
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`virnetx never argued that this Court got a claim construction
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`incorrect.
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`Instead, Your Honor, we simply explained to the
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`Examiner that his application of the construction was wrong,
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`and we clarified that.
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`On Slide 44 here, we see the parties' competing
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`constructions. And we submit, Your Honor,
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`that the
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`defendants' additions of "nonstandard" and "performs its
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`services accordingly" are just unnecessary because we
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`explicitly state what makes the lookeup service nonstandard,
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`and we explicitly state what services are performed by the
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`secure DNS.
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`So let's look at "nonstandard" a little bit closer.
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`We
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`included, Your Honor,
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`in the construction the two
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`characteristics of a "secure domain name service" that make it
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`nonstandard. First, we say that the "secure domain name
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`service” recognizes that a query message is requesting a
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`secure computer address. And, second, it returns a secure
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`computer network address for a requested secure domain name.
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`Rather than using the ambiguity of what is standard
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`Page50f10
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`94
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`or not standard, we explicitly point out what makes a secure
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`DNS a secure DNS and not a conventional domain name server.
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`I think, Your Honor, we make a very similar argument
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`as to why you shouldn't
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`include the language "perform its
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`services accordingly." Rather than ambiguously referencing
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`what its services may or may not be and maybe it is something
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`beyond what is in the construction, we explicitly state what
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`service the secure domain name service provides; and that is
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`returning a secure it excuse me, secure computer network
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`address for a requested secure domain name.
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`If we adopt the defendants‘ construction with the
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`language "performs its services accordingly," that leaves the
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`defendants with leeway down the road to argue what other
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`services may be required by a secure DNS, and it is going to
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`leave the jury confused as to what services the Court's
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`construction refers to that aren't explicitly stated in the
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`construction.
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`THE COURT:
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`Thank you.
`
`MR. DESMARAIS: Slide 84, please.
`
`Your Honor,
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`just two brief points in response to
`
`that.
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`On Slide 84, Counsel said that they did not tell the
`
`Patent Office that the Court's construction was wrong.
`
`I
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`think we can look at what the Court said in the prior Markman
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`is on the first cuteout.
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`The Court construes "secure domain name service" as
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`Page 6 of 10
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`”a look—up service that returns a secure network address for a
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`requested secure domain name." That was this Court‘s
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`construction.
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`Subsequent to that in the reexam, VirnetX said what
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`is in the second cut—out, which is, similarly the request and
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`Office action rely on the faulty position that a secure domain
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`name service is nothing more than a conventional DNS server
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`that happens to resolve the domain names of the secure
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`computers.
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`The words speak for themselves.
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`They said what this
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`Court construed was a faulty position. Whether they
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`attributed that position to the Court or not is a
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`hypertechnical understanding of what actually happened there.
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`Secondly, what Counsel is trying to do yet again is
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`run away from the things that they told the Patent Office to
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`get these patents issued. We can't lose focus on the fact
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`that we wouldn't be here today if they didn't say these things
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`to the Patent Office.
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`When we look on Slide 88 they told the Patent Office
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`time and time again their system is not a conventional
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`system. Their system is not the standard DNS. Their system
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`is not the traditional DNS. Those are their words. And now
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`they are telling this Court that they can say that in the
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`Patent Office but come here to Federal Court litigation and
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`all bets are off,
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`these are broad claims, That is just not
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`Page 7 of 10
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`96
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`fair, and it is not how the system works.
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`It is exactly the same for the next issue, which is
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`on Slide 91.
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`They have taken As this is the statement they
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`made to the Patent Office to get this patent issued.
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`They
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`have taken half of it and stuffed it into their construction.
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`All we are saying is in for a penny,
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`in for a pound.
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`If you
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`are talking half, put the whole thing in.
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`They haven't given
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`you a reason why only half of it is relevant. They didn't say
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`they shouldn't have said all of it.
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`They said all of it.
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`The
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`Patent Office relied on that and issued the patent. You can't
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`have it both ways.
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`The patent
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`issued because of it. We are here
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`because the patent issued.
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`The patent means what they told
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`the Patent Office the patent means.
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`Thank you, Your Honor.
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`THE COURT: All right.
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`Thank you.
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`MR. McLEROY: Brief response?
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`THE COURT: Yes.
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`MR. McLEROY: Your Honor, we believe we have
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`captured everything that "secure domain name service" is in
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`our proposed construction.
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`The defendants say we need these
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`additional words added to the construction because we said
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`them in the prosecution. But
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`they haven‘t told us what
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`those
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`additional words mean beyond what is in VirnetX's proposed
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`construction.
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`Page 8 of 10
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`We are very concerned that down the road at a trial
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`later in this case,
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`the defendants will add additional
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`meanings into nonstandard,
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`into its services, and we will have
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`to deal with those at that point. Your Honor, VirnetX's
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`construction captures everything that we argued to the Patent
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`Office in reexamination.
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`THE COURT: Okay.
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`Thank you.
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`What is next?
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`MR. CREMEN: Your Honor, we have "DNS proxy" and
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`"domain name service system" left under the DNS terms group.
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`Depending on how much you would like MW at what
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`time you would
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`like to get out of here, we can just go directly to
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`"indicating" now,
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`if both sides want to argue that and just
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`leave the rest for briefs or we can do a really short talk
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`about
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`"DNS proxy" and "domain name service system."
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`THE COURT: Your choice, whichever you would rather
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`do.
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`MR. CREMEN: Okay.
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`How about I just point out one
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`thing about domain name —— or,
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`I'm sorry,
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`"DNS proxy server.“
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`The biggest disagreement A~ or the only disagreement
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`between the parties on this term is the added portion in
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`defendants' proposed construction of "preventing destination
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`servers from determining the identity of the entity sending
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`the domain name inquiry.“
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`Now, Your Honor, you construed this term in the
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`Page 9 of 10
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`
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`1 with respect to SAIC, an issue that was filed some time ago
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`123
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`that it would probably be a good idea at some point to put at
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`the top of your list.
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`THE COURT:
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`I will try to work it up there.
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`Anything further?
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`MR. CAWLEY: No, Your Honor.
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`THE COURT: Okay. Y‘all have a good day, Hearing
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`is adjourned.
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`(Hearing concluded.)
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`C E R T I F I C A,T I O N
`
`I certify that the foregoing is a correct transcript from the
`
`record of proceedings in the above—entitled matter.
`
`/s/ Shea Sloan
`
`SHEA SLOAN, CSR, RPR
`OFFICIAL COURT REPORTER
`STATE OF TEXAS NO. 3081
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