Case E520”/~cv—£)0080—LED Document 246
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`Filed 07/30/09 Page 1 of35
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`IN TIIF. UNITIED S'I‘A'I‘ES DISTRICT C()UI{'I‘
`FOR THE EASTERN DISTRICT 0]’ 'l‘E.XAS
`TYLER DIVISION
`
`VIR,N,E'l'X. INC.
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`Ptnintifl‘
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`vs.
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`MICROSOF!‘ C()RI‘ORATI()N
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`Den-n(laul'
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`=05W°f03fl5»C73~503f03'fl’.flV.fi
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`CASE NO. 6:07 CV 80
`PATENT CASE
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`MEMORANDUM OPINION
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`This claim constrtzciionopinion interprets the disputed terms in US. Patent Nos. 6.501Z,l35
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`(“tho ‘I35 pzitc-n1"); 6,839,759 (“thtz “I59 paucn1“);:tm:l 7,138,180 (“the ' I80 pa£ent"), Appendix A
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`contains the mlsputtxl terms. as tlicy appcar in the asserted claims of’ these patcnls. Appendix B
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`ucmtains :1 c:IIe1z'(. sumimtriz:'ng the C‘oufi‘s constructions.
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`IBACKGROUNI)
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`PlnintEt‘t‘VirnetX, Inc. (“\’irna:tX“}4ccusv:s Ivlicrosuft Cu:'pur'.i1im1 (“Microsoft”) oi'i:1t‘ringiI2g
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`claims ofthc ‘I35, ‘759, and ‘I80 patents. The ‘I35 patem discloses a mctlmd of trzmsparentiy
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`crcatisag a virtual p1'ivatc11r:.l\v0:‘k between E1 client computer and :1 tizrget computer. ’l'he ‘759 patent
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`clixuloscs a. method I'0l’CS1:IbIISI1.IlIg a VPN without :1 user entering user iticntificatinn infbmmticre.
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`The ‘759 pattnlt is related to the ‘I35 patent tltrough other ccmtinuation-in-part appi icatiunsl3)ntents.
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`The ‘I80 patent (IISCIOSCS :3 method for cstabiisliing a \/PM using it sucurc domain heimc. service‘ The
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`‘I80 patent
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`is
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`related to the ‘I35 patent as
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`u LIIVISIGIIZI patent of cuntiuuntimi-in-part
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`applicantiosisiputnxits uftlie ‘I35 patent. The ‘759 and ‘ISO patents SIIIIYC the sauna s'pccitic:1tirm.
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`VIRNETX EXHIBIT 2001
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`Apple v. VirnetX
`Trial |PR2015-00869
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`VIRNETX EXHIBIT 2001
`Apple v. VirnetX
`Trial IPR2015-00869
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`

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`Case 6:O7«cv-0O{)80—LED Document 246
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`Filed 07l30f09 Page 2 of 35
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`<
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`9-
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`APPLICABLE LAW
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`“it is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.” Ph.it'izp.s v. A WH Corp, 415 F.3d 1303, 1312
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`(Fed. Cir. 2005) (en banc) (quotitig-Irinova/Pure Waterlac. 12. Safari Water Filtration S;v.s*.. Inc, 381
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`F.3d 1111, 1115 (Fed. Cir. 2004)).
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`In claim construction, courts examine the patent’s intrinsic
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`evidence to define the patented invention’s scope. See z'd.; CR. Bard, Inc. v. US. Surgical C-‘orp,
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`388 F.3d 858, 861 (Fed. Cir. 2004); Belbifl. Nenvoric Servs, Inc. v. Coma’ Comma ’r.-s Group. Inc,
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`262 F.3d 1258, 1267 (Fed. Cir. 2001). This intrinsic evidence includes the claims t11e1nselvcs,the
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`specification, and the prosecution history. $96 Phillips, 415 F.3d at 1314; CR. Bard, 11150., 388 F.3d
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`at 861. Courts give claim tenns their ordinary and accustomed meaning as understood by one of
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`ordinary skill in the art at the time of the invention in the context of the entire patent. P!1iih'p.v, 415
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`F.3d at 1312-13; Alice, Inc. v. frat’?-Trade Comm '11, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
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`The claims themselves provide substantial guidance in determining the meaning ofparticular
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`claim terms. Pfzitlips, 415 F.3d at 1314. First, a te1‘m’s context in the asserted claim can be very
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`instructive. 14. Other asserted or unasserted claims can also aid in deterinining the cl aim’s meaning
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`because claim terms are typically used. consistentiy throughout the patent. Id. Differences among
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`the Claim terms can also assist in understanding a term’s meaning.
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`Id. For example, when a
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`dependent claim adds a limitation to an independent claim, it is presumed that the independent claim
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`does not include the limitation. Id. at 131445.
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`“[C]laims ‘must be read in View of the specification, of which they are a part. ”’ Id’. (quoting
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`M611"/flttafl. v. Westview Instrt¢ment.s', Inc, 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
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`specification ‘is always highly relevant to the claim construction analysis. U sually, it is dispositive;
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`it is the single best guide to the meaning of a disputed term.” Id. (qtioting Vitronz'c.s' Corp. v.
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`ConceptJ'0m‘c, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teieflex, Inc. v. F.tcosaN. Am. C‘orp., 2.99
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`F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own tenns, give
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`a claim term a different meaning than the term would otherwise possess, or disclaim or disavow the
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`claim scope. Philtips, 415 F.3d at 1316.
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`in these situations, the inventor’s lexicography governs.
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`Id. ‘Also, the specification may resolve ambiguous claim terms “where the ordinary and accustomed
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`meaning of the Words used in the claims lack sufficient clarity to permit the scope of the claim to be
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`ascertained frorn the words alone." Teleflex, Inc., 299 F.3d at 1325. But, ‘“[a]1though the
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`specification may aid the court in interpreting the meaning of disputed claim language, particular
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`embodiments and examples a_ppearing in the specification will not generally be read into the
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`claims.” Comaric Comment, Inc. 12. Harris Corp, 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting
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`Constant '12. Advcmced.Micm~Device.r, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 51988)); see also Pfzi!!ip.9,
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`#15 F.3d at 1323. The prosecution history is another tool to supply the proper context for claim
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`construction because a patent applicant may also define a term in prosecuting the patent. Home
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`Diagnosn'c.9_, Inc, v. Lzfias'c'cn. Inc, 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the
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`specification, a patent applicant may define a term in prosecuting a patent”).
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`Although extrinsic evidence can be useful, it is “‘less significant than the intrinsic record in
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`determining the legally operative meaning of claim langu.age,’” Phz'Ilz'ps, 415 F .3d. at 1317 (quoting
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`CR. .Bctrd, [;'TC., 3 88 F.3d at 862). Technical dictionaries and treatises may help a court understarid
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`the underlying technology and the manne1' in which one skilled in the art might use claim terms, but
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`technical dictionaries and treatises may provide definitions that are too broad or may not be
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`indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid
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`a court in understanding the underlying technology and determining the particular meaning ofa term
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`in the pertinent field, but an expeifs conclusory, unsupported assertions as to aterm’s definition is
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`entirely unhelpful to a court. Id. Generaliy, extrinsic evidence is “less reliable than the patent and
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`l
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`its prosecution history in deterrnining how to read claim terms." Id.
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`CONSTRUCTION OF DISPUTED TERMS IN THE ‘135 PATENT“
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`“virtual private network”
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`The ‘I35 patent, claims 1 and 10; the ‘759 patent, claims 1 and 16; and the ‘180 patent,
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`ciaims l, 17, and 33 contain the term “virtual private network“ (“VPN”). VirnetX contends that
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`“virtuai private network" means “a network of computers capable ofprivately communicating with
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`each other by encrypting traffic on insecure communication paths between the computers, and which
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`is capable of expanding to include additional computers and communication paths." Microsoft
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`contends that “virtual private network’ means “a network iropiemented by encapsulating an
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`encrypted 1? packet within another TP packet (that
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`is,
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`tunneling) over a shared networking
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`infrastructure.“ The parties dispute whether the “FreeSfWAN” dictionary may be used to construe
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`“virtual private network,” whether VirnetX’s proposed construction is overly broad, whether “virtual
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`private network” requires anonymity, and Whether IP tunneling is a limitation on “virtual private
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`network." In light of intrinsic and extrinsic evidence, the Court construes “virtual private network"
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`as “a network of computers which privately connnunicate with each other by encrypting traffic on
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`i
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`insecure communication paths between the computers.”
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`‘While this heading states “Construction ofDisputcd Terms in fire ‘J35 !’a..fem," the claim terms addressed
`under this heading may also be i‘."o‘L:nci in the other asserted patents. This also applies to subsequent headings.
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`zcitai-ions to the patents will not include the U.S. patent numbers to maintain brevity. Unless otherwise
`stated, these citations are of the U.S. potent numbers indicated in the heading that the citation falls under.
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`The ‘I35 patent does not provide an explicit definition for “viituai private networ .”
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`However, the ‘135 patent uses “virtual private network” in ways that are consistent with a “virtual
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`private network” being “a network of computers which privately communicate with each other by
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`encrypting t1‘afi'ic on insecure cornniunication paths between the computers." The specification
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`discusses a VPN in the context of connecting and communicating between nodes. For instance, the
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`specification states, “In a second mode referred to as ‘promiscuous per VPN’ mode, a small set of
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`fixed hardware addresses are used, with a ‘fixed source/destination hardware address used for all
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`nodes comrnunicating over a virtual private network.” Coi. 23:11-14. This excerpt shows that the
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`‘ 13 5 invention includes nodes (computers) connniiiiicating over a virtual private network.
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`Furthermore,
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`the ciairns and specification discuss a VPN in the context of private
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`comrriunication on insecure communication paths. Claim 1 states “A method of transparently
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`creating a virtual private network (VPN) between a client computer and a target computer" and then
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`states the steps of accompiishing this method including “requesting access to a secure web site.”
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`Col. 4"/:2D~22, 30—3l. Thus, claim 1 associates a “virtual private network” with “security.” Also,
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`the specification states, “If the user is not authorized to access the secure site, then a ‘host unknown’
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`message is returned (step 2705).
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`if the user has sufficient security privileges, then in step 2706 a
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`secure VPN is established between the user’s computer and the secure target site.” Col. 39:21:25.
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`This excerpt shows how a “virtual private network” establishes a secure connection between nodes
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`where security may not otherwise exist. Thus,
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`the claim language and the specification are
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`consistent with construing a “virtual private network” as “a network of computers which privately
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`comrnuriicate with each other by encrypting tra‘Ffic on insecure communication paths between the
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`computers."
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`Extrinsic evidence also supports this construction. The Wiley Electrical and Electronics
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`Engineering Dictionary defines a “virtual private network” as
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`A network which has the appearance, f1111{3i.‘lOl1alllZy_, and security ofa private network,
`but which is configured within a public network, such as the Internet. The use of a
`public infrastructure while ensuring privacy using measures such as encryption and
`tunneling protocols, helps provide the security of a private network at a cost similar
`to that of a public network.
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`Wiriatv ELECTRICAL AND ELECTRONICS ENGINEERING DICTEONARY 842 (2004) {published by the
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`IEEE Press). This dictionary definition describes a network that has attributes of a private network
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`but runs on a public network. The dictionary definition further states that encryption may be used
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`to achieve privacy. The C curt’s construction is in line with this definition. All pertinent aspects of
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`the Court’s construction are explicitly found i.n the dictionaty definition except for “insecure
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`communication paths,” which simply corresponds to the dictionary definition’s reference to “a public
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`network.” Thus, the Court‘s construction is in accord with the dictionary definition.
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`Also,
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`the ‘I35 patent refers to the ‘°FreeSfWAN” project in the specification. The
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`specification explains that the “FreeSfWAN” project is developing a conventional scheme that
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`provides secure virtual private networks over the Internet. Col. 37:50~58. The “Frees/WAN”
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`project defines “virtual private network" as “a network which can safely be used as ifit were private,
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`even though some of-its communication uses insecure connections. All traffic on those connections
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`is encrypted."
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`“FreeS/WAN" Glossary 24—25, Pl. Br. (Docket No. 194) Ex. 6. The Court's
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`construction is consistent with this definitiorix‘
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`3The Court"s consti'uct.ion largely adopts VirnetX’s proposal. However, this construction excludes
`Virno.tX‘s proposed language regarding the ability of a virtual private network to expand. Vi1'netX proposes this
`language to account for the possibility of including additional computers and. communication paths in a virtual
`private network, Pl.‘s Br. 6. The Court's construction does not limit a “virtual private network” to any particular
`number of‘ computers or communication paths. Thus, VirnctX’s proposed langitttgc is superfluous. Accordingly, the
`Court’s construction accounts for the possibility of additional computers or cornniunication paths.
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`Microsoft contends that the “FreeS/'WAN” glossary is not an explicit definition o:["“virtua.i
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`private network” and thus is zootpersuasive. Microsoft argues that the ‘ 135 patent’s reference to the
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`“FreeS/WAN” project is made only to describe the prior art and not to define “virtual private
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`networlt.” However, the specification explains that the “Frees/WAN" project has been developing
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`an implementation of one conventional scheme that provides secure virtual private networks over
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`the Internet. Col. 37:50-58. Also, the applicant disclosed the “FreeSfWAN” project as prior art.
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`See Def.’s Br. (DocketNo, 201) Exs. M—O. While these references to the “FreeS/WAN” project do
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`not explicitly define “virtual private network,” they at least point to extrinsic evidence that can be
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`considered in construing “virtual private network.” Thus, the Court may consider the “FreeS/WAN”
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`project/glossary as extrinsic evidence for construing “virtual private network.”
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`Microsoft also contends that even if the “FreeS/WAN” glossary offers an acceptable
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`definition for “virtual private 11etwo1‘1<,” portions ofthe “FreeS/WAN” glossary definition show that
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`Virne-tX’s proposed construction is overly broad. Microsoft cites the portion of the “FreeS/WAN”
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`glossary definition for “virtual private networks" that states “IPSEC {Internet Protocol Security] is
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`not the only technique available for building VPNS, but it is the only method defined by RFCs
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`[Request for Comments, internet docu1nents~uso1nc of which are informative while others are
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`standards] and supported by many vendors. VPNS [virtual private networks] are by no means the
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`only thing you can do with lPSEC, but they may be the most important application for many users."
`Defi’s Br. (Docket No. 201) at 10; “FreeS/WAN” Glossary 25, Pl. Br. (Docket No. 194) Ex. 6.
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`I
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`Microsoft points out that IPSEC is the only method defined by RFCs and supported. by many
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`vendors. Microsoft argues that this narrow language shows that the “FreeS/WAN” glossary does not
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`identify Secure Sockets Layer (“SSL”) or 'I‘rans_po1t Layer Security (“"118”) as methods for building
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`“virtual private networl<s." Microsoft then argues that VirnetX’s proposed construction is overly
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`broad because it allows for a networl< using SSL and TLS. "However, Microsoft’s cited excerpt is
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`an ancillary portion of the “virtual private network“ definition and is set apart in a different
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`paragraph from the primary portion of the definition. See “FreeS/WAN” Glossary 24-25, Pl. Br.
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`(Docket No. 194) Ex. 6. Also, Microsoft selectively asserts that IPSEC is the only method defined
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`by RFCs and supported by many vendors and ignores that its cited excerpt states that “IPSEC is not
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`the only technique available for building VPNS." Thus, Microsoffls cited excerpt does not support
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`that the “F1'eeS/WAN" glossary restricts “virtual private network” to IPSEC.
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`Microsoft also contends that VirnetX’s proposed construction suggests that the “virtual
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`private network” achieves only data security when it should include both data security and
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`anonymity. Microsoft is correct that “private” in “virtual private networks” in cans both data security
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`and anonymity. The specification supports this interpretation. The Background of the invention
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`section states “[21] trernendous variety of methods have been proposed and irnpiernented to provide
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`security and anonyrnity for communications over the Internet.” Col. 1: 15-17. This section further
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`describes data security as being “irnmunc to eavesdropping” and states “[d]ata security is usually
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`tackled using some form of data encryption” and anonymity as “preventing[ing] an eavesdroppcr
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`from discovering that terminal 100 is in communication with terminal llO.” Col. 1:23-25, 38-39,
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`27-28. This language suggests that the claimed invention will achieve both data security and
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`anonymity because it prefaces the Detailed Description of the Invention section, which describes a
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`method of creating a virtual private network.
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`l_‘[1Ci(‘2€d_,
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`the descriptions of the invention later indicate that “private” in “virtual private
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`network” means data security and anonyinity. The Detailed Description of the invention, Further
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`Extensions section describes a mode of the invention as being able to “reduce the amount of
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`overhead involved in checking for valid frames” While allowing “H3 addresses .
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`.
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`. [to] still be hopped
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`as before for secure communication within the VPN.“ Col. 23:20-25 (emphasis added). The
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`“anonymity” feature of a VPN can be handled. by the Tunneled Agile Routing Protocoi (“TARP”),
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`which executes “address hopping.” See Col. 2:66-3:17; see Col. 5:49-64. Thus, the language “still
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`be liopped.” indicates that the modifications of the. invention retain the anonymity feature of the
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`“virtual private r1etworl<.”" Accordingly, the Court construes “virtual private network” as requiring
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`both data security and anonymity.
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`Finally, Microsoft contends that “virtual private network” requires 1? tunneling. Microsoft
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`argues that the intrinsic evidence shows that TARP and IPSEC are two ways of obtaining anonymity
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`in a virtual private network. Microsoft then argues that tunneling is required to achieve anonymity
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`when TARP, IPSEC, or any other means is employed to achieve anonymity. The Court first and
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`foremost considers the intrinsic evidence. The claims do not assert “tunneling” as a limitation nor
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`has Microsoft pointed to any type of limitation in the specification. Microsoft's citations to the
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`Bacl<gro'und of the lnvention section only state explanations ofhow TARP works and does not use
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`any limiting language. See Col. 3:5~l8,
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`l9—20, 58-60. Furthermore, Microsoffs citation to the
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`Detailed Description. of the Invention, Further Extensions section only refers to a preferred
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`implementation of the virtual private network, stating “The VPN is preferably irnplernented using
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`. coniproiniscs the anonymity
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`4Whi.lc the specification states that this mode ofthe invention "[o]l‘course .
`ofthe \Fi7’Ns," this only means that those outside the VPN can discover the VPN and does not mean that the
`anonymity ofthe users within the VPN is compromised. This is clear from the example that follows the
`“compromising anonymity of the VPN" statement: “[i.e., an outsider can easily tell what traffic belongs in which
`VPN, though he cannot C():"i’t’:il(If£! it to :7 .s'per.'.{/To nlacfriire/per.tr)ri)." Col. 23 :25-28 (emphasis added). Thus, the
`specification is consistent with construing 21. “virtual private network” as acliie-ving both data security and anonymity.
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`the ZIP address ‘hopping’ features of the basic invention described above, such that the true identity
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`of the two nodes cannot be determined even if packets during the communication are intercepted."
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`Col. 38‘.2~6. Again, this excerpt does not include any limiting language and in fact expressly uses
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`the non—li1niting language “preferably.” Accordingly, “virtual private network” is not limited to IP
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`tunneling, and the Court construes “virtual private network” as “a network of computers which
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`privately communicate with each other by encrypting traffic on insecure communication paths
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`between the computers.”
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`“transparently creating [creates] a virtual private network”
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`’ The ‘135 patent, claims 1 and i0 containthe phrase“transparently creating [creates] a virtual
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`private networi<.” The parties dispute whether “transparently creating a virtual private network” in
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`the preamble is limiting and whether “transparently" refers to not involving a user or not involving
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`the client and target computers in creating a virtual private network. Vi1netX contends that this
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`phrase means “a user need not be involved in creating a virtual private network.” Microsoft
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`contends that the phrase does not require construction a11d alteinativeiy that the phrase means
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`“creating a virtual private network (VPN) without the client or target computer involved in
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`requesting such creation”
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`“Transparently creating a. virtuai private network” in the preamble is not a limitation because
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`“transparently” does not add meaning to claims '1 and 10. “A preamble limits the invention if it
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`recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the
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`claim. Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete
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`invention in the claim body and uses the preamble only to state a purpose or intended use for the
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`invention.” Ccztalirtct Mi’ctg. In.t’l, Inc. v, Co0lsc1vings.com. 1:16., 289 F.3d 801, 808 (Fed. Cir. 2002)
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`(citations omitted).
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`If a preamble “is reasonably susceptible to being construed to be merely
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`daplicative of the limitations in the body of the claim (and was not cleariy added to overcome a
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`-rejection), we do not construe it to be a separate iimitation.” Symcmzec Corp. v. Computer A.ssocs.
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`Imf 7, Inc, 522 F.3d 1279, 1288-89 (Fed. Cir. 2008). “Transparently“ is merely descriptive ofwhat
`is found in steps (2) and (3).of claim 1. As discussed below. those steps require that a user is not
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`involved in creating a VPN. This requirement corresponds to the meaning of “transparently” as
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`described in the specification, which states that creating a VPN “is preferably performed
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`transparently to the user (i.e. , the user need not be involved in creating the secure linl<)." Col. 39:28—
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`29. Thus, “transparently” is merely duplicative ofwhat is found in the body of claim 1. As a result,
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`the preamble is not a limitation. Accordingly, “transparently” does not require construction.
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`“Domain Name Service”
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`The ‘I35 patent, claims 1 and 10 and the ‘E80 patent, claims 1, 17, and 33 contain the term
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`“Domain Name Service” (“DNS”). VirnetX contends that “Domain Name Service” means “a
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`service that receives requests for computer network addresses corresponding to domain names, and
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`which provides responses.” Microsoft contends that “Domain Name Service” means “the
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`conventional lockup service defined by the Internet Engineering Task Force (“TETF”) that returns
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`the IP address of a requested computer or host.” The parties dispute whether “Domain Name
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`Service" is limited by the definition given in the IETF that defines Domain Name Service as the
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`conventional scheme or if it more broadly includes both conventional and modified Domain Name
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`Service that is described in the specification.
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`The specifications description of DNS is consistent with construing DNS as “a lookup
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`"service that returns an IP address for a requested domain name.” The specification states
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`Conventional Domain Name Servers (DNSs) provide a looloup function that returns
`the IP address of arequested computer or host. For example, when a computer user
`types in the web name “Yahoo.com," the user’s web browser transrnits a request to
`a DNS, which converts the name into a four—part IP address that is returned to the
`user’s browser and then used by the browser to contact the destination web site.
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`Col. 37:22-29. According to this excerpt, a DNS “provides a look—up i’unction” and “returns the IP
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`address of a requested computer or host.” A “computer or host” includes domain names as
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`exemplified by the specification’s reference to “Yahoo.con1” and “destination web site” as “a
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`requested computer or host.” Accordingiy, the Court constiues “DNS” as “a lookup service that
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`returns an IP address for a requested domain name.’’5
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`“dorriairi n ame”
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`The ‘l35 patent, claims l and 10 and the ‘ISO patent, ctaims l, i7, and 33 contain the term
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`“domain name." VirnetX contends that “domain name” means “a series of characters that
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`corresponds to an address of a computer or group of computers that is to be sent to a domain name
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`service (DNS). ” Microsoftcontends that “domain name” means “a hierarchical name for a computer
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`(such as www.utexas.edu) that the Domain Name Service converts into an IP address.” The parties
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`dispute whether “domain name” can correspond to a group of computers or only a single computer,
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`Whetlier “domain name" is a hierarchical name for a computer, whether “domain name” is limited
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`to web site names, and whether “domain name” is limited to a computer name being converted into
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`an [F address.
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`The claims themselves describe “domain name.” Claim 1 states “a Domain Name Service
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`(DNS) request that requests an EP address corresponding to a domain name associated with the target
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`computer.” Col. 47:23-26. Also, claim 10 states “a DNS proxy server that receives a request from
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`°Sce below for the Court’s construction of“dcmain name.“
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`the client computer to look up an 1? address for a domain name.” Coi. 48:6—7. In both claim 1 and
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`ciairn it} an IP address corresponds to a domain name. Thus, the domain name corresponds to an
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`IP address. Accordingly, the Court construes “domain name” as “a name corresponding to an IP
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`address.”
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`Vi'rnetX proposes that “domain name” corresponds to a group of computers (IP addresses)
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`or a singie computer because claims '1 and 10 of the ‘T135 patent refer to IP address using the
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`iridefinite article “an." The Federal Circuit has stated,
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`An indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or
`more’ in open—ended claims containing the transitional phrase ‘comprising.”’ That
`“a” or “an” can mean “one or more” is best described as a rule, rather than merely as
`apresumption or even a convention. The exceptions to [the “indefinite article”] rule
`are extremely iimited: a patentee must “evince [ ] a clear inten "’ to limit “a” or “an”
`to “one.” The subsequent use of definite articles “the" or “said” in a claim to sefer
`back to the same claim term does not change the general pluraé rule, but simply
`reinvoites that notwsingular meaning, An exception to the general rule that “a” or
`“an" means more than one only arises where the language ofthe claims themselves,
`the specitication, or the prosecution history necessitate a departure from the rule.
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`Baldwin Gm]2!'rr'c Sysz, Inc. v. Sieberr. Inc, 512 F.3d 1338, 1342-43 {Fed Cir. 2008) (citations
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`omitted). Ciaims i and i0 of the ‘135 patent are open—ended constiuction claims using the word
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`“comprising” and use the indetinite article “an” to refer to “IP address.” See Col. 47:20-26; see Col.
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`48:3-7. By the “one or more” rule, these claims allow for one or more LE’ addresses. Any subsequent
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`use of the definite article “the” to refer to “IP address” simply refers back to the previously used “IP
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`address” and thus reinvokes the non-singular meaning. See Col. 47:39-40; see Col. 48:8. Microsoft
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`does not assert any evidence to show that an exception to the “one or more” rule exists. Thus, there
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`may be more than one IP address, and thus more than one computer, that corresponds with the
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`domain name. This would allow for a situation where the IP address that corresponds to the domain
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`name is not the ll’ address of the target computer. See Col. 38:23-42. Accordingly, “domain name”
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`can correspond to more than one computer.
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`Microsoft contends that the patents limit “domain name” to a hierarchical name for a
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`computer under traditional hierarclncal DNS form at. However, Microsoft relies largely on extrinsic
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`evidence—»including expert testimony and Microsoft’s own technology luto1ial—to support its
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`contentions, which does not carry great weight in light of the fact that claim language provides
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`guidance on the meaning of “domain name.” Also, where Microsoft uses intrinsic evidence for
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`
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`support, Microsoft oniy refers to non-limiting language from the specification. For instance,
`Microsoft suggests that the examples used in the specification for domain names, which include
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`“Yal1oo.com” and “Targetcom,” show that the patents use “domain name” in its traditional
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`hierarchical DNS fonnat. Mic1'osoft further suggests that “domain name” is limited to a traditional
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`hierarchical name because the patents do not provide a single example of “domain name” that is not
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`written in traditional hierarchical DNS fonnat. However, Microsoft argues only the presence and
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`absence of examples rather than any enforceable language of limitation, The speciflcation‘s
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`discicsure or omission of examples does not create limitations on claims. Accordingly, Microsoft
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`does not offer snffi cient support for limiting “domain name” to a hierarchical name for a computer.
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`Microsoft also contends that the patents limit “domain name" to web site names. However,
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`no such liinitation is Found in the claims, and Microsoft merely references its arguments on
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`construing “web site” without showing how “domain name” is necessarily linked to web site names.
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`Accordingly, “domain name” is not limited to web site names.
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`Finally, Microsoft contends that “domain name” is limited to a computer name being
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`converted into an {F address. Microsoft supports this proposed limitation by arguing that a “domain
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`name“ has the capacity to be converted by DNS into an IP address and that the specification
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`emphasizes this point by describing that identical DNS requests may result in conventional domain
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`name resoiution, “host unknown” error messages, or VPN initiation, depending not on whether
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`something is a “domain name" but on what type of Web site was requested. However, Microsoft
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`incorrectly argues that a “capacity” to be converted by DNS into an IP address demonstrates a
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`required. iimitation. A mere capacity to perform an act does not make that act necessary. Thus,
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`Microsoft has not sutfficiently supported limiting “domain name” to a computer name being
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`converted into an IP address. Accordingly, the Court constnies “doznain name” as “a name
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`corresponding to an IP address.”
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`“web site”
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`The ‘BS patent, claims 1 and 10 contain the term “web site.” Vi:metX contends that
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`construing “secure web site” as addressed below sttfficieiitly addresses the meaning of “web site”
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`and that “web site" does not require further construction. Alternativeiy, VirnetX contends that “web
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`site” means “a computer associated with a doinain name and that can communicate in a network.”
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`Microsoft contends that “Web site” 1neans“one or more related web pages at a location on the World
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`Wide Web.” The parties dispute whether “web site” should be given a construction separate from
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`“secure web site” and whether “web site” is limited to web pages on the Worid Wide Web.
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`Virnetx argues that “web site” should not be construed separately from “secure web site”
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`because the ‘I35 patent claims‘ never state “web site” without the preceding word “secure."
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`However, “secure" is separable from “Web site” as a modifier of “web site.” The claims show that
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`“secure” can be replaced by other modifiers to “web site.” Claims 1 and 10 ofthe ‘135 patent refer
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`to “web site” preceded by“non-secure” and “secure target.” Col. 47:28, 30; C01. 48:10, 14. This
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`de1no11strates that “web site” can be separated from its modifier and thus is its own term separate
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`from “secure.” Thus, “web s