Paper 9
`Trials@uspto.gov
`Entered: October 29, 2015
`
`571–272–7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-01009
`Patent 8,843,643 B2
`_______________
`
`
`
`Before KARL D. EASTHOM, ROBERT J. WEINSCHENK, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: October 29, 2015
`
`571–272–7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-01009
`Patent 8,843,643 B2
`_______________
`
`
`
`Before KARL D. EASTHOM, ROBERT J. WEINSCHENK, and
`BETH Z. SHAW, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-01009
`Patent 8,843,643 B2
`
`
`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`inter partes review of claims 1–9, 12–24, and 27–32 of U.S. Patent No.
`8,843,643 B2 (Ex. 1001, “the ’643 patent”). VirnetX Inc. (“Patent Owner”)
`filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. We
`have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes
`review may not be instituted “unless . . . there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons set forth below, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing the unpatentability of claims 1–9, 12–24,
`and 27–32 of the ’643 patent. Accordingly, we institute an inter partes
`review as to claims 1–9, 12–24, and 27–32 of the ’643 patent on the grounds
`specified below.
`A.
`Related Proceedings
`The parties indicate that the Petition in this case is related to the
`petition for inter partes review in IPR2015-01010, which also involves the
`’643 patent. Pet. 2; Paper 5, 2. Patent Owner indicates that certain patents
`related to the ’643 patent are at issue in various inter partes reviews,
`reexaminations, and district court cases. Paper 5, 2–12.
`B.
`The ’643 Patent
`The ’643 patent relates to, inter alia, establishing a secure
`communication link between a computer and a server without a user of the
`computer having to enter any identification information, passwords, or
`encryption keys. Ex. 1001, col. 48, l. 66–col. 49, l. 1, col. 50, ll. 9–16. For
`example, the user can enable a secure communication mode simply by
`
`2
`
`
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`IPR2015-01009
`Patent 8,843,643 B2
`
`clicking a “go secure” hyperlink in a Web browser on the computer. Id. at
`col. 50, ll. 9–11. The ’643 patent explains that a software module on the
`computer automatically replaces the domain name for the server with a
`secure domain name. Id. at col. 50, ll. 22–25. The software module then
`sends a query using the secure domain name to a secure domain name
`service (“SDNS”) via a virtual private network (“VPN”) communication
`link. Id. at col. 50, ll. 49–53. In response to the query, the SDNS returns an
`address for a secure server. Id. at col. 51, ll. 39–42. The computer can then
`access the secure server through a VPN communication link. Id. at col. 51,
`ll. 57–59.
`C.
`Illustrative Claim
`Claims 1 and 17 are independent. Claim 1 is reproduced below.
`1. A method for establishing an encrypted
`communication link between a first device and a second device
`over a communication network, the method comprising:
`enabling, at the first device, a secure communication
`mode without a user entering any cryptographic information for
`establishing the secure communication mode; and
`establishing, based on a determination that the secure
`communication mode has been enabled, the encrypted
`communication link between the first device and the second
`device over the communication network, the establishing
`including:
`
`
`
`constructing a domain name based on an identifier
`associated with the second device;
`sending a query using the domain name;
`receiving, in response to the query, at least one network
`address associated with the domain name; and
`initiating establishment of the encrypted communication
`link between the first device and the second device over the
`communication network using the at least one network address
`
`3
`
`
`
`IPR2015-01009
`Patent 8,843,643 B2
`
`
`Exhibit No.
`Ex. 1003
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`and encrypted communication link resources received from a
`server that is separate from the first device.
`Ex. 1001, col. 55, ll. 46–67.
`D.
`Evidence of Record
`Petitioner relies on the following references and declaration (see
`Pet. 3):
`Reference or Declaration
`Declaration of Roberto Tamassia, Ph.D.
`Microsoft Windows 2000 Professional Resource Kit
`(2000) (“Windows Resource Kit”)
`Microsoft Internet Explorer 5 Resource Kit (1999)
`(“IE5 Resource Kit”)
`U.S. Patent No. 5,657,390 (“Elgamal”)
`E.
`Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds1 (see Pet. 3):
`Claims Challenged Basis
`1–9, 12, 14, 17–24,
`35 U.S.C. § 102(a)
`27, and 29
`1, 13, 15–17, 28, and
`30–32
`
`35 U.S.C. § 103(a)
`
`References(s)
`Windows Resource
`Kit
`Windows Resource
`Kit, IE5 Resource
`Kit, and Elgamal
`
`II. ANALYSIS
`A. Claim Construction
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC,
`
`1 Patent Owner argues that the asserted grounds of unpatentability are
`redundant, and, thus, should be denied. Prelim. Resp. 2–9. The decisions
`cited by Patent Owner in support of that argument are not binding precedent
`and do not require that redundant grounds be denied.
`
`4
`
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`
`IPR2015-01009
`Patent 8,843,643 B2
`
`793 F.3d 1268, 1278–79 (Fed. Cir. 2015). On this record and for purposes
`of this decision, we determine that no claim terms require express
`construction.
`B.
`Asserted Grounds of Unpatentability
`1.
`Anticipation of Claims 1–9, 12, 14, 17–24, 27, and 29 by
`Windows Resource Kit
`Petitioner argues that claims 1–9, 12, 14, 17–24, 27, and 29 are
`anticipated by Windows Resource Kit. Pet. 3. We have reviewed the
`parties’ assertions and supporting evidence, and, for the reasons set forth in
`the Petition and discussed below, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 1–9, 12, 14, 17–24, 27, and
`29 are anticipated by Windows Resource Kit. See Pet. 19–44.
`a.
`Claims 1 and 17
`Claims 1 and 17 recite initiating establishment of the encrypted
`communication link between the first device and the second device over the
`communication network using at least one network address and encrypted
`communication link resources received from a server that is separate from
`the first device. Ex. 1001, col. 55, ll. 62–67, col. 57, ll. 32–37. Petitioner
`argues that Windows Resource Kit discloses two computers exchanging
`public keys and using those public keys to create a shared, secret key for an
`encrypted communication link. Pet. 29–30; Ex. 1005, 1021–1022.
`According to Petitioner, the public key received by the first computer from
`the second computer is a resource received from a server that is separate
`from the first computer. Pet. 30.
`Patent Owner responds that Petitioner improperly relies on documents
`other than Windows Resource Kit to show that the two computers exchange
`public keys. Prelim. Resp. 9–12. Patent Owner’s argument is not
`
`5
`
`
`
`IPR2015-01009
`Patent 8,843,643 B2
`
`persuasive. Although Petitioner’s declarant, Dr. Roberto Tamassia,
`discusses additional documents in his declaration, Petitioner identifies
`portions of Windows Resource Kit that disclose the exchange of public keys
`between the two computers. Ex. 1005, 1022 (“The two computers exchange
`public keys and establish a shared, secret key.”).
`Patent Owner also argues that the public keys are exchanged through
`a third-party network device, and, thus, the first computer does not receive a
`public key from the second computer. Prelim. Resp. 12–13. Patent Owner’s
`argument is not persuasive. Figure 22.19 of Windows Resource Kit shows
`that the security negotiation, which includes the exchange of public keys,
`occurs between the first computer and the second computer. Ex. 1005,
`1021–1022. Further, even assuming arguendo that the public keys are
`exchanged through a third-party network device, the first computer still
`receives the public key from the second computer (albeit through the third-
`party network device). On this record, Petitioner has shown sufficiently that
`Windows Resource Kit discloses the above limitations of claims 1 and 17.
`b.
`Claims 7 and 22
`Claims 7 and 22 recite sending, to a secure domain name service
`(“SDNS”), a query for a network address associated with the domain name.
`Ex. 1001, col. 56, ll. 20–23, col. 57, ll. 56–59. Petitioner argues that
`Windows Resource Kit discloses a domain name server on a corporate
`intranet. Pet. 39; Ex. 1005, 971, 989–990. According to Petitioner, a
`domain name server on a corporate intranet resolves domain names that
`cannot be resolved by a conventional domain name service, and, thus, is a
`secure domain name service. Pet. 39. Patent Owner responds that Petitioner
`does not show that the domain name server discussed in Windows Resource
`
`6
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`IPR2015-01009
`Patent 8,843,643 B2
`
`Kit is a secure domain name service. Prelim. Resp. 52. Patent Owner,
`however, does not address specifically Petitioner’s argument that a domain
`name server on a corporate intranet resolves domain names that cannot be
`resolved by a conventional domain name service. Id. On this record,
`Petitioner has shown sufficiently that Windows Resource Kit discloses the
`above limitations of claims 7 and 22.
`c.
`Claims 12 and 27
`Claims 12 and 27 recite that the identifier associated with the second
`device includes a non-secure domain name and that constructing the domain
`name includes replacing the non-secure domain name with a secure domain
`name. Ex. 1001, col. 56, ll. 54–57, col. 58, ll. 28–32. Petitioner argues that
`Windows Resource Kit discloses constructing a domain name by adding a
`primary DNS suffix to a host name. Pet. 41–44; Ex. 1005, 976. Petitioner
`also argues that Windows Resource Kit discloses that the primary DNS
`suffix can specify a corporate intranet. Pet. 43–44; Ex. 1005, 971, 989–990.
`According to Petitioner, a domain name for a corporate intranet cannot be
`resolved by a conventional domain name service, and, thus, is a secure
`domain name. Pet. 44. Patent Owner responds that Petitioner does not show
`that the domain names discussed in Windows Resource Kit are secure
`domain names. Prelim. Resp. 53–54. Patent Owner, however, does not
`address specifically Petitioner’s argument that a domain name for a
`corporate intranet cannot be resolved by a conventional domain name
`service. Id. On this record, Petitioner has shown sufficiently that Windows
`Resource Kit discloses the above limitations of claims 12 and 27.
`
`7
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`IPR2015-01009
`Patent 8,843,643 B2
`
`
`2.
`
`Obviousness of Claims 1, 13, 15–17, 28, and 30–32 over
`Windows Resource Kit, IE5 Resource Kit, and Elgamal
`Petitioner argues that claims 1, 13, 15–17, 28, and 30–32 would have
`been obvious over Windows Resource Kit, IE5 Resource Kit, and Elgamal.
`Pet. 3. We have reviewed the parties’ assertions and supporting evidence,
`and, for the reasons set forth in the Petition and discussed below, Petitioner
`demonstrates a reasonable likelihood of prevailing in showing that claims 1,
`13, 15–17, 28, and 30–32 would have been obvious over Windows Resource
`Kit, IE5 Resource Kit, and Elgamal. See Pet. 45–59.
`Petitioner argues that it would have been obvious to combine the cited
`teachings of Windows Resource Kit, IE5 Resource Kit, and Elgamal. Id. at
`45–47. Specifically, Petitioner explains that the Internet Explorer 5 product
`described in IE5 Resource Kit was included in the Windows 2000 product
`described in Windows Resource Kit, and, thus, implementing the
`combination could have been accomplished simply by installing Windows
`2000 on a computer. Id. at 46. Petitioner also explains that the Secure
`Sockets Layer (“SSL”) protocol described in Elgamal was used in the
`Internet Explorer 5 product described in IE5 Resource Kit. Id. at 47. Patent
`Owner responds that Petitioner does not explain “the particular configuration
`and implementation” of the proposed combination “in any detail.” Prelim.
`Resp. 16. Patent Owner’s argument is not persuasive. As discussed above,
`Petitioner explains that the particular configuration of the proposed
`combination would have been a computer running the Windows 2000
`operating system with an Internet Explorer 5 application that used the SSL
`protocol. On this record, Petitioner has shown sufficiently that it would
`have been obvious to combine the cited teachings of Windows Resource Kit,
`IE5 Resource Kit, and Elgamal.
`
`8
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`IPR2015-01009
`Patent 8,843,643 B2
`
`
`III. CONCLUSION
`Petitioner demonstrates a reasonable likelihood of prevailing on its
`challenge to the patentability of claims 1–9, 12–24, and 27–32 of the ’643
`patent. At this stage in the proceeding, we have not made a final
`determination with respect to the patentability of any of the challenged
`claims.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review is hereby instituted as to claims 1–9, 12–24, and 27–32 of the ’643
`patent on the following grounds:
`A. Claims 1–9, 12, 14, 17–24, 27, and 29 as unpatentable under 35
`U.S.C. § 102(a) as anticipated by Windows Resource Kit; and
`B.
`Claims 1, 13, 15–17, 28, and 30–32 as unpatentable under 35
`U.S.C. § 103(a) as obvious over Windows Resource Kit, IE5 Resource Kit,
`and Elgamal;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter
`partes review of the ʼ643 patent is hereby instituted commencing on the
`entry date of this Order, and, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; and
`FURTHER ORDERED that the trial is limited to the grounds
`identified, and no other grounds are authorized.
`
`
`
`9
`
`
`
`IPR2015-01009
`Patent 8,843,643 B2
`
`PETITIONER:
`
`Jeffrey P. Kushan
`Thomas A. Broughan III
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`tbroughan@sidley.com
`
`PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`10
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