VIRNETX EXHIBIT 2004
`Apple v. VirnetX
`Trial IPR2015-00869
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`Case 6:10—cv—0O4t7'—LED Document 266
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`Filed 04/25132 Page 2 of31 F’age|D #: 7522
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`‘l5i Patent discloses a domain name service capable of handling both standard and non-standard
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`domain name service queries.
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`The patents—in—suit are all related; Application No. 09/504,783 (“the ‘783 Application”) is
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`an ancestor application for every patent~in—suit. The ‘135 Patent issued on December 31, 2002,
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`from the ‘783 Application. The ‘IS 1 Patent issued from a division of the ‘783 Application. The
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`‘"180 Patent issued from a division of a oontinuation—i11—part of the ‘783 Application. Both the
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`‘759 and ‘S04 Patents issued from a continuation of a eontinuation—in-part of the ‘783
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`Application. Finally, the ‘Z11 Patent is apcontinuation of the application that resulted in the ‘S04’
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`patent.
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`The Court has already construed many of the terms at
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`issue in a previous case that
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`involved the ‘I35, ‘759, and ‘180 Patents. See Vz'me1X, Inc. v. Microsoft Corp, 2009 1.7.8. Dist.
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`LEXES 65667, No. 6:07cv80 (ED. Tex. July 30, 2009) (“MiC?0.SOfl=’).
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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
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`to which the patentee is entitled the right to exclude.” Phillips 12. AWH Corp, 415 F.3d 1303,
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`1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari WaterF1‘iz‘mn‘on Sy‘s.,
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`Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In claim construction, courts examine the patenfis
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`intrinsic evidence to define the patented inventions scope. See id.; CR. Barri Inc.
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`"v. US‘.
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`Surgical Corp, 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Ari. Nerworiz Serve, Inc. v. Covad
`Commons Group, Inc, 262 F.3d 125 8, 1267 (Fed. Cir. 2001). This intrinsic evidence includes
`the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at
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`1314; CR. Bard, Inc, 388 F.3d at 861. Courts give claim terms their ordinary and accustomed
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`meaning as understood by one of ordinary skill in the art at the time of the invention in the
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`Case 6:10-cv~DO417-«LED Document 266
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`Filed 04/25/12 Page 3 of3‘l Page|D #: 7523
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`context of the entire patent. Phillips, 415 F.3d at 1312-13; Alioc, Inc. v. Inf? Trade Comm it,
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`342 F.3d 1361, 1368 (Fed. Cir, 2003).
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`The claims themselves provide substantial guidance in determining the meaning of
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`particular claim terms. Phillips, 415 F.3d at 1314. First, a term‘s context in the asserted claim
`can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the
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`claims meaning because claim terms are typically used consistently throughout the patent. Ia’.
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`Differences among the claim terms can also assist in understanding a term’s meaning. Ia’. For
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`example, when a dependent claim adds a limitation to an independent claim, it is presumed that
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`the independent claim does not include the limitation. Id. at 1314-15.
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`“[C]lai1ns ‘must be read in view of the specification, of which they are a part.” Id.
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`(quoting Markmcm v. Wesrview Instruments, Inc, 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
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`“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.”’ Id. (quoting Virrortics
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`Corp. v. Concepzronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)}; See also Teieflex, Inc. V.
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`Ficom N. Am. C'orp.,.299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentec may
`define his own terms, give a claim term a different meaning than the term would otherwise
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`possess, or disclaim or disavow the claim scope. Phiflips, 415 F.3d at 1316. In-these situations,
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`the inventofs lexicography governs. Id. Also,
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`the specification may resolve ambiguous claim
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`terms “where the ordinary and accustomed meaning of the words used in the claims lack
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`sufficient clarity to permit the scope of the claim to be ascertained from the words alone.”
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`Teleflex, Inc, 299 F.3d at 1325. But, “‘[a]1Lhough the specification may aid the court in
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`interpreting the meaning of disputed claim language, particular embodiments and examples
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`appearing in the specification will not. generally be read into the claims.” Comark Comma ‘its,
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`Case 6:l0—cv—O0417-LED Document 266
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`Filed 04f25i’12 Page 4 of3‘| Page!D#: 7524
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`Inc. v .Horris Corn, 156 F.3d 1182, 1187 (Fed. Cir._ 1998) (quoting Constant 12. Advanced
`Micro-Devices, Inc, 848 F.2d1560, 1571 (Fed. Cir. 1988)); see: also Phillips, 415 F.3d at 1323.
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`The prosecution history is another tool to supply the proper context for claim construction
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`because a patent applicant may also define a term in prosecuting the patent. Home Diagnostics,
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`Inc, v. Lzfesccm, Inc, 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification,
`a patent applicant may define a term in prosecuting a patent”).
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`Although extrinsic evidence can be usefui, it is “‘less significant than the intrinsic record
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`in determining the legally operative meaning of claim lariguage.” Phillips, 415 F.3d at 1317
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`(quoting CR. Bard, Inc, 388 F.3d at 862). Technical dictionaries and treatises may help a court
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`understand the underlying technology and the manner in which one skilled in the art might use
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`claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
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`may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
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`testimony may aid at court in understanding the underlying technology and determining the
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`particular meaning of a term in the pertinent field, but an experffs conclusory, unsupported
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`assertions as to a term’s definition is entirely unhelpful to a court. Id. Generally, extrinsic
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`evidence is “less reliable than the patent and its prosecution history in determining how to read
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`ciairn terms.” Ia’.
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`Defendants also contend that some claims at issue are invalid for indefiniteness. A claim
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`is invalid under 35 U.S.C. § 112 ‘ll 2 if it fails to particularly point out and distinctly claim the
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`subject matter that the applicant regards as the invention. The party seeking to invalidate a claim
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`under 35 U.'S.C. § 112 ll 2 as indefinite must show by clear and convincing evidence that one
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`skilled in the art would not understand the scope of the ciaiin when read in light of the
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`specification. Intellectual Prop. Data, Inc. v. UA-Columbia Cablevisicn of Westchester, Inc, 336
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`F.3d1308, 1319 (Fed. Cir. 2003).
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`LEVEL OF ORDINARY SKILL IN THE ART
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`The parties agree that a person of ordinary skill in the art would have a master’s degree in
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`computer science or computer engineering and approximately two years of experience in
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`computer networking and computer network security.
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`CLAIM TERMS
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`virtual private network
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`\lirnetX proposes “a network of computers which privateiy communicate with each other
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`by encrypting traffic on insecure communication paths between the computers.” Defendants
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`propose the following emphasized additions: “a network of computers which privately and
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`directly communicate with each other by encrypting traffic on insecure communication paths
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`between the computers where the communication is both secure and anonymous.”
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`secure and anonymous
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`VirnetX proposes the same construction adopted by this Court
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`in Microsoft. See
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`Microsoft, 2009 US. Dist. LEXIS 65667‘, at *8. Defendants seek to explicitly include the “secure
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`and anonymous” language that was implicitly included in the Court’s Microsoft construction. See
`id. at *l6 (“[T]he Court construe-s ‘virtual private network’ as requiring both data security and
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`arionymity,“). Just as in Microsoft, the parties here dispute whether a Virtual private network
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`requires anonymity, and the Court hereby incorporates by reference its reasoning in Mzwcsofr.
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`See id. at *l4«~17. For the same reasons stated in Microsofi, the Court finds that a virtual private
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`network requires both data security and anonymity. For clarity, this language is now explicitly
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`included in the Court’s construction of “virtual p1:ivate_networ .”
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`directly
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`Defendants propose that communication within a virtuai private network is “direct” based
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`on arguments that Vi1'netX made to the United States Patent and Trademark Office (“PTO”) to
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`overcome rejections based on the Aventail reference during reexamination of the ‘135 Patent.’
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`VirnetX provided three reasons that Avcntail did not disclose a virtual private network:
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`First, Aventaii has not been shown to demonstrate that computers connected via
`the Aventail system are able to communicate with each other as though they were
`on the same network. .
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`Second, according to Aventail, Aventail Connect’s fundamental operation
`incompatible with users
`transmitting data that
`is
`sensitive to network
`is
`inforrnation. .
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`1
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`Third, Aventail has not been shown to disclose a VPN because computers
`connected according to Ave-ntail do not communicate directly with each other.
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`Docket No. 182 Attach. 16, at 5—7. Defendants argue that VirnetX’s third distinction warrants a
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`finding that cotnrnunication over a virtual private network must be direct.
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`‘N/irnetX argues that its statements during. reexamination are not a clear disavowal of
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`claim scope. Rather, VirnetX contends that it “overcame Aventail on the ground that Aventaii
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`did not teach a VPN at all.” Docket No. 173, at 8. However, the statements made by \_/irnetX——
`particuiarly points one and thrcemreveai that the reason Aventail did not disclose a VPN was
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`because it did not permit direct communication between the source and target computers.
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`VimetX further argues that it did not clearly disavow claim scope regarding any one of
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`the three distinctions between Aventail and a VFN. For support, VirnctX relies on Momentus
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`Golf Inc. v. Swingrire Gc1fCorp., E87 Fed. App’); 981 (Fed. Cir. 2006), which involved a patent
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`directed to a golf club swing aide. During prosecution of the Momenms Golf patent,
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`the
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`applicants stated: “A hollow device having 10~25% club head weight cannot ‘ meet
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`the
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`1 The Aventai] reference involved a means of secure comrnunication between two clients via an intermediary
`SOCKS server.
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`requirement in applicants claims that the center of gravity of the trainer he substantially at the
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`center of a solid round stock." Momentus Golf, 187 Fed. App’): at 984 (quoting prosecution
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`I history). The district court held that this statement presented a clear disavowal of golf trainers
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`with l0-2S% ciub head weight because they would not meet the center of gravity requirensent.
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`Id. at 982. The Federal Circuit agreed that the district.court’s interpretation was a fathomable
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`one. Id. at 983—84. However, it reversed the district court because another interpretation was also
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`reasonable and still supported the applicant’s distinguishing a_rguments~that the statement only
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`clearly disavowed hollow clubs with 10-25% club head weight. Id. at 984 (emphasis added). The
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`Federal Circuit held that the statement could reasonably be interpreted to disavow (1) clubs with '
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`10-25% club head weight or (2) hollow clubs with l0m25% club head weight. In light of the
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`competing interpretations, the Federal Circuit determined that there was only a disclaimer of the
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`more narrow interpretation.
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`The instant case does not present such an ambiguous statement. VirnetX stated that
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`“Aventail has not been shown to disclose the VPN .
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`.
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`. for at least three reasons.” Docket No. 182
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`Attach. 16, at 5. VirnetX then proceeded to independently present and discuss each of the three
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`distinct reasons that Aventail did not disclose the ctairned VPN. See Docket No. 182 Attach. 16,
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`at 5-6 (discussing the first reason); to’. at 6—7 (discussing the second reason); id. at 7 (discussing
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`the third reason). In Momentus Gob", the applicant combined two potentiai distinctions in a single
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`sentence, creating ambiguity as to whether the distinctions were independent or intertwined.
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`Here, VirnetX expressly stated that there were three bases for distinction. Each of these reasons,
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`alone, served to distinguish the claimed VPN from the Aventail reference. See Andersen Corp. 12.
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`Fiber Composites, LLC, 474 F.3d 1361, 1374 (Fed. Cir. 2007) (“An app1icant’s invocation of
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`multiple grounds for distinguishing a prior art reference does not imrnutnize each of them from
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`being used to construe the claim language”). Accordingly, the Court finds that the claimed
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`“virtual private network” requires direct communication between member computers?
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`‘The Court construes “virtual private network” as “a network of computers which
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`privately and directly communicate with each other by encrypting traffic on insecure paths
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`between the computers where the communication is both secure and anonymous.”
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`virtual private link
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`VirnetX proposes
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`“a
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`comrnunication link that permits
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`computers
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`to privately
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`communicate with each other by encrypting traffic on insecure cornnriunication paths between the
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`computers.” Defendants, except the two Aastra entities, propose “a link in a virtual private
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`network.” The Aastra entities propose “a link in a virtual private network that accomplishes data
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`security and anonymity through the use of hop tables.”
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`VirnctX’s proposed construction closely tracks its proposal for “virtual private network,”
`replacing “a network of computers which” with “a communication link that permits computers
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`to." “Network of computers” implies that
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`the computers are linked together;
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`likewise a
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`“communication link that permits computers [to communicate]” implies a computer network.
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`Defendants also note the similarity between VirnetX’s proposed construction of “vntual
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`private networl<"_ and “virtual private link.” Defendants contend that VirnetX’s proposal
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`is
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`essentially “a communication link that permits computers to VPN.” Tr. of Markmarz Hr’g 55,
`Jan. 5, 2012. As a simplification, Defendants propose “a link in a virtual private network.”
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`The Aastra entities argue that a virtual private link should be limited to virtual private
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`network links that use hop tables to achieve data security and anonymity. An embodiment of
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`they were not arguing “directly” requires a direct
`the Markman hearing that
`stipulated at
`2 Defendants
`electromechanical connection. See Tr, of Marlcmcm Hi-‘g 49—50, Ian. 5, 2012. Rather, Defendants maintained that
`directly requires direct addressability. Thus, routers, firewalls, and similar servers that participate in typical network
`communication. do not impede “direct" communication between a client and target computer.
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`claim 13 of the ‘I35 Patent, which. contains the term “virtual private link,” is depicted in Figure
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`31. A detailed description of this embodiment is also provided in the specification. See ‘l35
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`Patent cols. 44:14-45:35. This description discusses the use of hopping tables;
`argues that thislimitation should be imported into the claims.
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`thus, Aastra
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`The Court rejects Aastra’s attempt to incorporate limitations of a preferred embodiment
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`into the claims. See Falcma 1». Kent’ State Univ, 669 F.3d 1349, 1355 (Fed. Cir. 2012) (cautioning
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`against importing limitations from a preferred embodiment into the claims). The specification
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`notes that the use of hopping is one option for accomplishing the data security and anonymity
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`features. See ‘1 35 Patent col. 45:10—}3 (“Next signaling server 3101 issues a request to
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`transport server 3102 to allocate a hopping table (or hopping algorithm or other regime) for the
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`purpose of creating a VPN with client 3103” (emphasis added». Thus, the applicants envisioned
`alternate methods of implementing data security and anonymity beyond hopping tables, and
`importing the hopping limitation into the claims is inappropriate.
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`The patent specification, in the detailed description of Figure 31, uses the term virtual
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`private network and virtual private tink interchangeably. Compare id. col. 44:37-40 (“When a
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`packet is received from a lcnovvn user, the signaling server activates a virtual private link (VPL)
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`between the user and the transport server .
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`.
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`. F’), with id. col. 45:10—13 (noting that the signaling
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`server requests the transport server to create a hopping table for the purpose of “creating a VPN
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`with client 3103.”), and id. col. 45:32~35 (“After a VPN has become inactive for a certain time
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`period (e.g., one hour), the VPN can be automatically torn down by transport server 3102 or
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`signaling server 3101.”); see Nystrom v. Trex C0,, Inc, 424 F.3d 1136, 1143 (Fed. Cir. 2005)
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`(“Different terms or phrases in separate claims may be construed to cover the same subject
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`matter where the written description and prosecution history indicate that such a reading of the
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`terms or phrases is proper"). Finally, VirnetX’s and Defendants’ proposed constructions of
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`virtual private link are very similar to their proposed constructions for virtual private network.
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`Accordingly,
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`the Court construes “virtual private lin ” as “a virtual private network as
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`previously defined.”
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`secure communication link
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`VirnetX proposes “an encrypted communication link.” Defendants propose “virtual
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`private network communication link.” The parties in Microsofi‘ agreed that this term, as used in
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`the ‘T59 Patent, did not require construction because the claims themselves provide a definition
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`of the term. Microsofl, 2009 U.S. Dist. LEXIS 65667, at *43. For instance, claim 1 states: “the
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`secure communication link being a virtual private network communication link over the
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`computer network.” ‘759 Patent col. 5'/’:20~22. Here, the parties also agree that, as to the ‘T59
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`Patent, the term means “virtual private network cotnmunication link.” However, the c1.a1'rns of the
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`‘S04 and ‘211 Patents use this term without further defining it. Thus, the parties dispute the
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`construction of the term as used in the ‘504 and ‘2l1 Patents.
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`VirnetX contends that “secure” means the link uses some form of data encryption,
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`highlighting the following passage from the ‘S04 Patent specification: “Data security is usually
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`tackled using some form of data encryption.” ‘S04 Patent col. l:55»~56. VirnetX argues that the
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`inventors would have used the term “virtual private network corninunication link” had it desired
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`to limit “secure corrnnunication link” to that interpretation. VirnetX further argues Defendants’
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`proposal improperly imports a limitation from the preferred embodiment, which discloses a
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`secure cornrnunication link that is also a virtual private network communication link. VirnetX
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`states that “Defendants fail to explain why a secure communication link must always be a virtual
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`private network connnunication link for all possible embodiments of the claims.” Docket No.
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`192, at 4. Finally, VirnetX argues that
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`it did not narrow the interpretation of “secure
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`communication link” during the prosecution of the ‘S04 and ‘CH1 Patents.
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`Defendants argue that secure communication link is defined in the Summary of the
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`Invention: “The secure communication link is a Virtual private network communication link over
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`the computer network." ‘504 Patent col. 6:61-62. Defendants further argue that the detailed
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`5
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`description of the invention also uses the terms “secure communication link" and “virtual private
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`network communication link” synonymously. Defendants also highlight VirnetX’s arguments
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`regarding “secure communication link” while prosecuting U.S. Patent No. 8,051,153] (“the ‘l81
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`patent”), a related patent that is not at issue in the instant case.
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`The ‘18l Patent is related to the patents—in—suit; it is a division of a continuation~in-part
`of the ‘783 Application that serves as an ancestor application for all of the patents—in—suit. The
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`Federal Circuit has held that arguments to the PTO regarding one patent application are
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`p
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`applicable to related patent applications. See Microsoft Corp. v. MuZti—Tec}2 Sys., Inc, 357 F.3d
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`1340, 1349 (Fed. Cir. 2004) (“[T]he prosecution history of one patent
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`is relevant
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`to an
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`understanding of the scope of a common term in a second patent stemming from the same parent
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`application"). The Federal Circuit has also held that arguments regarding a later tiled application
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`may be applicable to a previously filed application. See Verizon Servs. Corp. v. Vorzage Holdings
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`Corp., 503 F.3d 1295, 1307 (Fed. Cir. 2007) (rejecting the argument that a disclaimer should not
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`apply because it occurred after the patent under consideration had issued). Here, the ‘I81 Patent
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`issued after all of the patents-in—suit. Its application was filed later than the applications for the
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`patents—in~suit except for the ‘Zll Patent, which was filed approximately six months earlier.
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`When prosecuting the ‘l81 Patent, Vir11etX distinguished the Aventail reference from the
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`“secure cornrnunication link" limitation using arguments nearly identical to those discussed
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`earlier regarding Aventail and the “virtual private network” term. VirnetX argued that Aventaii
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`failed to disclose a “secure communication link” for the same three reasons asserted in the ‘IBS
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`reexamination. Compare Docket No. 182 Attach. 16, at 5-7 (arguments regarding “virtual
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`private networ ” and Aventail), with Docket No. 202 Attach. 1, at 6»-8 (arguments regarding
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`“secure communication link” and Aventail). Therefore, for the same reasons stated earlier
`regarding “virtual private network,” a “secure communication link” also requires direct
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`communication between its nodes.
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`“Secure communication link” was originally used in the claims of the ‘759 Patent, which
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`was also at
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`issue in Microsoft. There, the parties agreed that it did not require construction
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`because the claim language itself defined the term as “being a virtual private network
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`communication link.” ‘759 Patent col. 57:20~—22. However, the later—filed applications that issued
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`as the ‘S04 and ‘Z11 Patents removed this defining language from the claims. Accordingly the
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`term is not so limited in the ‘S04 and ‘2ll Patents as in the ‘759 Patent.
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`Defendants argue that the Surnmary of the Invention defined a secure communication
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`link as a- virtual private network communication link. However, this discussion in the Summary
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`of the invention relates to a particular preferred embodiment and opens as follows:
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`invention, a user can conveniently
`According to one aspect of the present
`establish a VPN using a “one—clicl<” .
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`. technique without being required to enter
`[information] for establishing a VPN. The advantages of the present invention are
`provided by a method for establishing a secure communication link .
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`‘S04 Patent col. 6;36~=l2. Thus, the advantage of being able to seamlessly establish a one—click
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`VPN is provided by “a method for establishing a secure communication link.” The description
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`continues by describing the details of an embodiment that realizes this advantage. See id. cols.
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`6:43——7:}.0 (describing the one-click embodiment). It is Within this description of the preferred
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`embodiment that the specification acknowledges that the “secure communication link is a virtual
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`private network communication link.” Id. col. 6:61—63. The patentee is not acting as his own
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`lexicographer here; rather, he is describing a preferred embodiment. The claims and specification
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`of the ‘S04 and ‘211 Patents reveal that the patentec made a conscious decision to remove the
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`virtual private network limitation originally present in the ‘759 Patent claims. Thus, secure
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`communication link shall be interpreted Without this iirnitation in the ‘S04 and ‘211 Patents.
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`VirnetX proposes that a secure communication link is an encrypted link. However, claim
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`28 of the ‘504 Patents covers “[t]he system of claim l, wherein the secure communication link
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`uses encryption." ‘S04 Patent col. 57:17-18. VirnetX’s proposal seeks to import a limitation
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`from dependent claim 28 into independent claim 1, and this violates the doctrine of claim
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`differentiation. See Curr:'Ss- Wright Flow Control Corp. v. Velcm, Inc, 438 F.3d 1374, 1380 (Fed.
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`Cir. 2006) (“‘ [C]lairn differentiation’ refers to the presumption that an independent claim should
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`not be construed as requiring a limitation added by a dependent claim"). The specification notes
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`that “[d]ata security is usually tackled using some form of data encryption.” ‘S04 Patent col.
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`l:55~~S6 (emphasis added). Therefore, encryption is not
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`the only means of addressing data
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`security. Accordingly, a secure communication link is one that provides data security, which
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`includes encryption.
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`The Court construes “secure communication. link” as “a direct communication link that
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`provides data sccurity.”4
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`3 Claim 28 ofthe ‘2l1 Patent is similar,
`4 As the Court discussed earlier, the ‘759 Patent claims further limit the secure communication link recited therein.
`This construction does not contradict these provisions of the ‘T59 claims, which limit the secine communication link
`there to a virtual private network communication link. Thus, as a practical matter, the “secure communication link“
`recited in the ‘759 Patent claims is a “virtual private network communication link."
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`Case 6:’iO—cv-OO417—LED Document 266
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`Filed 04/25/12 Page 14 of 31 Page'lD #: 7534
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`domain name service
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`VirnetX proposes “a lookup service that returns an IP address for a requested domain
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`name,” adopting the Court’s previous construction of this term in Microsoft. Defendants propose
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`to append “to the requester” to VirnetX’s proposed construction.
`
`VirnetX argues that Defendants‘ proposal incorporates an extraneous limitation. Further,
`VirnetX provides an expert declaration stating that one of skill in the art, after reading the
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`specification, would understand that a domain name service does not necessarily return the
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`requested IP address to the requester. See Docket No. in”/'3 Attach. 17 1111 7W8 (stating that in the
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`context of a DNS proxy, the IP address may be returned to the original requesting client, the
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`proxy, or both}. Virne1iX also argues that the specification envisions a domain name service that
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`does not always return an address to the requester. For instance, the specification states:
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`According to certain aspects of the invention, a specialized DNS server traps DNS
`requests and, if the request is from a special type of user .
`.
`.
`, the server does not
`return the true IP address of the target node, but instead automatically sets up a
`virtual private network between the target node and the user.
`
`‘135 Patent cols. 37:63—38:2. Defendants argue that VirnetX ignores the implicit meaning of the
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`Court’s Microsofl construction by arguing that a domain name service does not necessarily
`
`return the requested IP address to the requester.
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`VirnetX’s expert expiains that “in one mode, the domain name request can be received by
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`a DNS proxy (or DNS proxy module), Which, in turn, may forward the request to a DNS function
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`that can return an IE’ address.” Docket No. l73 Attach. 17 ii 8. Thus, VirnetX argues, a domain
`
`name request may cause an IP address to be returned “to the client, or to a DNS proxy .
`.
`.
`, or
`both.” Id. VirnetX’s expert is effectively describing a scenario detaited in the ‘.135 Patent and
`
`cited above by VirnetX. This scenario is further described in detail
`
`the specification and
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`depicted in Figure 26. See ‘135 Patent col. 382134-12 (describing the operation of the system
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`Case 6:10—cv~OG4i7—LED Document 266
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`Filed 04/25/12 Page 15 of 31 Page|D #: 7535
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`depicted in Figure 26). VirnetX asserts that Defendants’ proposed construction precludes this
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`preferred embodiment.
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`Contrary to VirnetX’s argument, Defendants’ proposed limitation does not preclude a
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`preferred embodiment. The “specialized” or “modified” DNS server
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`referenced in the
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`specification is shown as 2602 in Figure 26. This modified DNS server contains a DNS proxy
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`function and a standard DNS server function. Requests for non—secure sites are passed through to
`the DNS server, and an IP address is returned to the requesting client. In thislcase, two separate’
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`domain name requests are effectively being made: (1) between the client computer 2601 and the
`modified DNS server 2602; and (2) between the DNS Proxy 2610 and the DNS Server 2609. If
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`the original client request is for a secure site, then the DNS Proxy 2610 establishes a VPN '
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`connection between the client and the secure site. The specification explains the final stages of
`
`this process:
`
`Thereafter, DNS proxy 2610 returns to user computer 2601 the resolved address
`passed to it by the gatekeeper (this address could be different from the actual
`target computer) 2604, preferably using a secure administrative VPN. The address
`that is returned need not he the actual address of the destination computer.
`
`Ia‘. col. 38:36-42. The DNS Proxy 2610, operating as an internal component of the modified
`
`DNS server 2602, returns an address to the requester, the client computer 2601. Thus, viewing
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`the modified DNS server 2602 as a black box, it returned an address to the requesting client
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`corriputer.
`
`For these reasons, the Court finds that a domain name service inherently returns the IP
`
`address for a requested domain name to the requesting party. The Court construes “domain name
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`service” as “a lookup service that returns an IP address for a requested domain name to the
`
`requester.”
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`15 of3l
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`Case E‘>:10«cv—O{)41'r'—LED Document 266
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`Filed O4l25:'12 Page 16 of 31 Page|D #: 7536
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`domain name
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`VirnetX proposes the same construction adopted by the Court in Microscfi‘: “a name
`
`corresponding to an IP address.” Defendants propose “a hierarchical sequence of words in
`
`decreasing order of specificity that corresponds to a numerical IP address." In Microsoft, the
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`Court addressed Defendants’ argument that a domain name is necessarily hierarchical in nature;
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`that analysis is incorporated herein. See Microsoft, 2009 US. Dist. LEXIS 65667, at "224-25. For
`
`the same reasons stated in Microsoft,
`
`the Court construes “domain name" as “a name
`
`corresponding to an IP address.”
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`DNS proxy server
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`VirnetX proposes “a computer or program that responds to a domain name inquiry in
`
`place of a DNS.” Defendants propose “a computer or program that responds to a domain name
`
`inquiry in place of a DNS, and prevents destination servers from determining the identity of the
`
`entity sending the domain name inquiry.” VimetX’s proposal and the first portion of Defendants’
`
`proposal reflect the construction adopted by this Court in Microsofi. Id. at *39. Here, the dispute
`
`is whether a DNS proxy server “prevents destination servers from determining the identity of the
`
`entity sending the domain name inquiry.”
`
`Defendants derive support for their proposed limitation directly from the Background of
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`the lnvention: “Proxy servers prevent destination servers from determining the identities of
`
`originating clients.” ‘135 Patent col. 1249450. VimetX argues that this statement should be read
`in the context of the sentence that precedes it: "To hide traffic from a local administrator or ISP,
`
`a user can employ a local proxy server in communicating over an encrypted channel with an
`
`outside proxy such that the local administrator or ISP only sees the encrypted traffic.” Id. col.
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`114649. Virnetx contends that these statements are not regarding all proxy servers, but merely
`
`detail how proxy servers may be configured to achieve anonymity.
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`l6
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`Case 6:10-cv—OD4‘E7'-LED Document 266
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`Filed O4.’25i12 Page 17 of 31 Pagelt) #1 ‘K53?
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`VirnetX also argues that adopting Defendants‘ construction would read out a preferred
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`ernbodiment disclosed in Figure 26 of the ‘I35 Patent. In Figure 26, user computer 2601, after
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`interfacing with DNS Proxy 2610, cornmunicates.directly with Secure Target Website 2604 or
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`Unsecure Target Site 2611. in this