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 IPR2015-01010
`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 IPR2015-01010
`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
`
`
`
`
`
`
`
`
`
`IPR2015-01010
`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 IPR2015-01009, 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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`IPR2015-01010
`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
`
`
`
`IPR2015-01010
`Patent 8,843,643 B2
`
`
`Exhibit No.
`Ex. 1003
`Ex. 1006
`
`Ex. 1008
`
`Ex. 1024
`
`Ex. 1041
`
`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 Internet Explorer 5 Resource Kit (1999)
`(“IE5 Resource Kit”)
`Nancy J. Yeager & Robert E. McGrath, Web Server
`Technology: The Advanced Guide for World Wide
`Web Providers (Michael B. Morgan et al. eds., 1st ed.
`1996) (“Yeager”)
`Network Working Group, Request for Comments:
`1034 (Nov. 1987) (“RFC 1034”)
`Ari Luotonen & Tim Berners-Lee, CERN httpd
`Reference Manual: A Guide to a World-Wide Web
`HyperText Daemon (May 1994) (“Luotonen”)
`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, 14–24, 27,
`35 U.S.C. § 102(b)
`and 29–32
`1–9, 12–24, and 27–
`32
`9 and 24
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`References(s)
`Yeager
`
`Yeager and IE5
`Resource Kit
`Yeager, RFC 1034,
`and optionally IE5
`
`
`1 Patent Owner argues that the asserted grounds of unpatentability are
`redundant, and, thus, should be denied. Prelim. Resp. 1–6. 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
`
`
`
`IPR2015-01010
`Patent 8,843,643 B2
`
`
`12 and 27
`
`35 U.S.C. § 103(a)
`
`Resource Kit
`Yeager, Luotonen,
`and optionally IE5
`Resource Kit
`
`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,
`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, 14–24, 27, and 29–32 by
`Yeager
`Petitioner argues that claims 1–9, 12, 14–24, 27, and 29–32 are
`anticipated by Yeager. Pet. 3. We have reviewed the parties’ assertions and
`supporting evidence, and, for the reasons discussed below, Petitioner does
`not demonstrate a reasonable likelihood of prevailing in showing that claims
`1–9, 12, 14–24, 27, and 29–32 are anticipated by Yeager.
`Each challenged independent claim recites a first device, a second
`device, and constructing a domain name based on an identifier associated
`with the second device. Ex. 1001, col. 55, ll. 52–58, col. 57, ll. 22–28.
`Petitioner argues that, in Yeager, a client computer corresponds to the
`claimed first device and a Web server corresponds to the claimed second
`device. Pet. 24. Petitioner argues that Yeager discloses a Web browser on
`the client computer that parses a domain name from a uniform resource
`locator (“URL”) entered in the Web browser, and, thus, discloses
`
`5
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`IPR2015-01010
`Patent 8,843,643 B2
`
`constructing a domain name. Id. at 26–27. Patent Owner responds that
`Petitioner does not identify any portion of Yeager that expressly or
`inherently discloses a Web browser on the client computer parsing a domain
`name from a URL. Prelim. Resp. 13–15. We agree with Patent Owner.
`Although Petitioner identifies portions of Yeager that indicate that a domain
`name service (“DNS”) may use a domain name to determine the address
`associated with that domain name, those portions of Yeager do not disclose
`that a Web browser on the client computer parses a domain name from a
`URL. See Pet. 26–27; Ex. 1008, 13, 31, 37, 48, 138. Thus, Petitioner has
`not shown sufficiently that Yeager discloses constructing a domain name
`based on an identifier associated with the second device.
`2.
`Obviousness of Claims 1–9, 12–24, and 27–32 over
`Yeager and IE5 Resource Kit
`Petitioner argues that claims 1–9, 12–24, and 27–32 would have been
`obvious over Yeager and IE5 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 1–8, 12–23, and 27–32
`would have been obvious over Yeager and IE5 Resource Kit. See Pet. 23–
`49. Petitioner, however, does not demonstrate a reasonable likelihood of
`prevailing in showing that claims 9 and 24 would have been obvious over
`Yeager and IE5 Resource Kit.
`a.
`Claims 1 and 17
`Claims 1 and 17 recite a first device, a second device, and
`constructing a domain name based on an identifier associated with the
`second device. Ex. 1001, col. 55, ll. 52–58, col. 57, ll. 22–28. Petitioner
`argues that, in Yeager, a client computer corresponds to the claimed first
`
`6
`
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`IPR2015-01010
`Patent 8,843,643 B2
`
`device and a Web server corresponds to the claimed second device. Pet. 24.
`Petitioner argues that IE5 Resource Kit teaches a Web browser on a client
`computer that can be configured so a particular domain name suffix is added
`to an incomplete name entered in the Web browser by a user. Pet. 46–47;
`Ex. 1006, 117. For example, a user can enter the text “http://sample” in the
`Web browser, and the Web browser will automatically add the domain name
`suffix “.microsoft.com” to the text entered by the user. Ex. 1006, 117.
`Petitioner argues that the domain name suffix is an identifier associated with
`the second device, namely an identifier associated with the Web server for
`microsoft.com. Pet. 46–47.
`Patent Owner responds that the automatic addition of the domain
`name suffix in IE5 Resource Kit occurs before the secure communication
`mode is enabled, but claims 1 and 17 recite constructing the domain name
`after the secure communication mode is enabled. Prelim. Resp. 18–20.
`Patent Owner’s argument is not persuasive. Petitioner argues that Yeager
`teaches enabling a secure communication mode when a user enters a URL
`including “https” in the Web browser. Pet. 24–25. Thus, according to
`Petitioner, the combination of Yeager and IE5 Resource Kit teaches that a
`user can enter the text “https://sample” in a Web browser, which enables a
`secure communication mode, and the Web browser then constructs a domain
`name by automatically adding “.microsoft.com” to the text entered by the
`user. Pet. 46–47; Ex. 1006, 117. On this record, Petitioner has shown
`sufficiently that the above limitations of claims 1 and 17 would have been
`obvious over Yeager and IE5 Resource Kit.
`Claim 17 recites a communications component that communicates
`over the communication network. Ex. 1001, col. 57, ll. 15–16. Petitioner
`
`7
`
`
`
`IPR2015-01010
`Patent 8,843,643 B2
`
`argues that the client computer in Yeager includes a local area network
`(“LAN”) connection that communicates over a network. Pet. 29–30; Ex.
`1008, 133, 135. Patent Owner responds that the LAN in Yeager is not part
`of the client computer, and, thus, Yeager does not disclose the claimed
`communications component. Prelim. Resp. 17. Patent Owner’s argument is
`not persuasive. Although Figure 4.2 of Yeager shows that the network itself
`is separate from the client computer, Figure 4.2 also shows that the client
`computer communicates with the Web server over the LAN, and, as such,
`teaches that the client computer includes a component for communicating
`over the LAN. Ex. 1008, 135. On this record, Petitioner has shown
`sufficiently that the above limitations of claim 17 would have been obvious
`over Yeager and IE5 Resource Kit.
`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 Yeager
`teaches a local DNS. Pet. 38; Ex. 1008, 138. According to Petitioner, a
`person of ordinary skill in the art would understand that a local DNS is
`hosted on a private network protected by a firewall, and, thus, is a secure
`DNS. Pet. 38; Ex. 1003 ¶¶ 250–252. Patent Owner responds that Petitioner
`does not show that the local DNS in Yeager necessarily is hosted on a
`private network protected by a firewall. Prelim. Resp. 22–24. Patent
`Owner’s argument is not persuasive. Petitioner’s asserted ground of
`unpatentability is not limited to anticipation by Yeager. Petitioner also
`argues that claims 7 and 22 would have been obvious over Yeager and IE5
`Resource Kit. Pet. 49. Thus, Petitioner does not have to show that the
`
`8
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`
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`IPR2015-01010
`Patent 8,843,643 B2
`
`limitations of claims 7 and 22 are necessarily (or inherently) disclosed by
`Yeager, and instead may show that the limitations of claims 7 and 22 would
`have been obvious to one of ordinary skill in the art. On this record,
`Petitioner has shown sufficiently that the above limitations of claims 7 and
`22 would have been obvious over Yeager and IE5 Resource Kit.
`c.
`Claims 9 and 24
`Claims 9 and 24 recite receiving, in response to the query, a list of
`network addresses associated with the domain name. Ex. 1001, col. 56, ll.
`27–29, col. 58, ll. 1–4. Petitioner relies on RFC 1034 to teach the above
`limitations of claims 9 and 24. Pet. 39. However, Petitioner does not argue
`that RFC 1034 is incorporated by reference into Yeager or IE5 Resource Kit,
`and Petitioner’s asserted ground of unpatentability does not include RFC
`1034. Pet. 3, 49; Prelim. Resp. 24–25. Thus, on this record, Petitioner has
`not shown sufficiently that the above limitations of claims 9 and 24 would
`have been obvious over Yeager and IE5 Resource Kit alone, but, as
`discussed below, Petitioner demonstrates a reasonable likelihood of
`prevailing in showing that claims 9 and 24 would have been obvious over
`Yeager, IE5 Resource Kit, and RFC 1034. See infra Section II.B.3.
`d.
`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
`Yeager teaches replacing the non-secure domain name of a Web server with
`the secure domain name of a proxy server located on a private network. Pet.
`40–41; Ex. 1008, 195–196; Ex. 1003 ¶ 264. Patent Owner responds that
`
`9
`
`
`
`IPR2015-01010
`Patent 8,843,643 B2
`
`Petitioner provides “no reason to believe” that the domain name of the proxy
`server cannot be resolved by a conventional domain name service. Prelim.
`Resp. 26. Patent Owner, however, does not address specifically Petitioner’s
`argument that the domain name of the proxy server cannot be resolved by a
`conventional domain name service because the proxy server is located on a
`secure private network. Id.; Pet. 38–41; Ex. 1008, 303; Ex. 1003 ¶¶ 252,
`263–264. On this record, Petitioner has shown sufficiently that the above
`limitations of claims 12 and 27 would have been obvious over Yeager and
`IE5 Resource Kit.
`Patent Owner argues that when a proxy server is included between a
`client computer and a Web server, there is no direct communication link
`between the client computer and the Web server, as required by the
`challenged claims. Prelim. Resp. 26–27. Even assuming arguendo that the
`challenged claims require the communication link to be direct, Patent
`Owner’s argument is not persuasive. Patent Owner does not identify
`specific evidence showing that the proxy server in Yeager terminates the
`connection between the client computer and the Web server. Id. Rather,
`Yeager states that “proxy servers forward Web requests from clients to other
`Web servers and return responses from servers to clients,” thereby indicating
`that there is direct communication between the client computer and the Web
`server. Ex. 1008, 194. Patent Owner also contends that Petitioner does not
`show that the communication link between the client computer, the proxy
`server, and the Web server is encrypted. Prelim. Resp. 27–28. Patent
`Owner’s argument is not persuasive. Petitioner argues that Yeager teaches
`using SSL to encrypt communications between a client computer and a Web
`server (Pet. 28–29; Ex. 1008, 361–363), and that one common way to set up
`
`10
`
`
`
`IPR2015-01010
`Patent 8,843,643 B2
`
`a communication link between a client computer and a Web server is to use
`a proxy server (Pet. 40; Ex. 1008, 194–196). Thus, on this record, Petitioner
`has shown sufficiently that it would have been obvious to one of ordinary
`skill in the art to use SSL encryption for a communication link involving a
`proxy server between a client computer and a Web server.
`e.
`Claims 14 and 29
`Claims 14 and 29 recite a virtual private network communication link.
`Ex. 1001, col. 57, ll. 3–5, col. 58, ll. 46–48. Petitioner argues that the
`communication link between the client computer, the proxy server, and the
`Web server in Yeager teaches a virtual private network communication link.
`Pet. 41–42. Patent Owner responds that communications between the client
`computer and the Web server are not direct. Prelim. Resp. 29. Even
`assuming arguendo that the challenged claims require the virtual private
`network communication link to be direct, for the reasons discussed above
`with respect to claims 12 and 27, Patent Owner’s argument is not persuasive.
`See supra Section II.B.2.d. Patent Owner also argues that Petitioner
`improperly relies on a document called “Secure Sockets Layer for SOCKS
`Version 5,” which is not included in the asserted ground of unpatentability,
`to show that a communication link using a proxy server can be encrypted.
`Prelim. Resp. 29–30. Patent Owner’s argument is not persuasive. For the
`reasons discussed above with respect to claims 12 and 27, on this record,
`Petitioner has shown sufficiently that it would have been obvious from
`Yeager to use SSL encryption for a communication link involving a proxy
`server between a client computer and a Web server. See supra Section
`II.B.2.d.
`
`11
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`IPR2015-01010
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`
`
`3.
`
`Obviousness of Claims 9 and 24 over Yeager, IE5
`Resource Kit, and RFC 1034
`Petitioner argues that claims 9 and 24 would have been obvious over
`Yeager, IE5 Resource Kit, and RFC 1034. 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 9 and 24 would have been
`obvious over Yeager, IE5 Resource Kit, and RFC 1034. See Pet. 50.
`Claims 9 and 24 recite receiving, in response to the query, a list of
`network addresses associated with the domain name. Ex. 1001, col. 56, ll.
`27–29, col. 58, ll. 1–4. Petitioner argues that RFC 1034 teaches a DNS that
`provides a list of network addresses in response to a query using a domain
`name. Pet. 50; Ex. 1024, 29–30. Petitioner also argues that it would have
`been obvious to combine the teachings of Yeager and RFC 1034 because
`Yeager teaches using a DNS, and RFC 1034 describes the specific
`functionality of a DNS. Pet. 50.
`Patent Owner argues that Petitioner does not show that RFC 1034 is a
`prior art printed publication. Prelim. Resp. 7–13. Specifically, Patent
`Owner argues that, although RFC 1034 includes the date “November 1987,”
`Petitioner does not explain why RFC 1034 was publicly accessible on that
`date. Id. at 7–9. Petitioner, however, does identify evidence indicating that
`RFC 1034 was publicly accessible in November 1987. Namely, Petitioner
`submits evidence indicating that a request for comments (“RFC”) on an
`internet standard, such as RFC 1034, would have been publicly accessible on
`the internet as of the date on the document. Pet. 23; Ex. 1003 ¶¶ 83–90. On
`this record and at this stage of the proceeding, Petitioner has shown
`sufficiently that RFC 1034 is a prior art printed publication.
`
`12
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`IPR2015-01010
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`
`
`Patent Owner argues that Dr. Roberto Tamassia’s testimony regarding
`RFC 1034 should be given no weight because: 1) some of Dr. Tamassia’s
`testimony is uncorroborated; 2) Dr. Tamassia is not an expert in the
`publication of RFC documents; and 3) Dr. Tamassia lacks personal
`knowledge of the publication of RFC 1034. Prelim. Resp. 9–11. Although
`the alleged deficiencies in Dr. Tamassia’s testimony identified by Patent
`Owner may be considered in assessing the overall weight given to his
`testimony, we are not persuaded, at this stage of the proceeding, that Dr.
`Tamassia’s testimony should be given no weight. Patent Owner also argues
`that Dr. Tamassia fails to explain how persons outside of the Network
`Working Group would have known about RFC 1034. Prelim. Resp. 11–13.
`Patent Owner’s argument is not persuasive. Dr. Tamassia explains that
`RFCs regarding internet standards, such as RFC 1034, could have been
`located using a number of Internet hosts, including the World Wide Web.
`Ex. 1003 ¶ 84.
`4.
`
`Obviousness of Claims 12 and 27 over Yeager, IE5
`Resource Kit, and Luotonen
`Petitioner argues that claims 12 and 27 would have been obvious over
`Yeager, IE5 Resource Kit, and Luotonen. Pet. 3. Petitioner explains that
`this ground is applicable if the combination of Yeager and IE5 Resource Kit
`discussed above does not teach a secure domain name. Pet. 51. In view of
`the asserted grounds of unpatentability discussed above on which we
`institute an inter partes review of claims 12 and 27, we exercise our
`discretion and do not institute an inter partes review on this alternative
`ground proposed by Petitioner. See 35 U.S.C. § 314(a); 37 C.F.R.
`§ 42.108(a), (b).
`
`13
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`IPR2015-01010
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`
`
`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 1–8, 12–23, and 27–32 as unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Yeager and IE5 Resource Kit; and
`B.
`Claims 9 and 24 as unpatentable under 35 U.S.C. § 103(a) as
`obvious over Yeager, IE5 Resource Kit, and RFC 1034;
`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.
`
`
`
`14
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`IPR2015-01010
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`
`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
`
`15
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