throbber
Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 1 of 35
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`CASE NO. 6:07 CV 80
`PATENT CASE
`
`§§§§§
`

`
`§§§§
`
`VIRNETX, INC.
`
`Plaintiff
`
`vs.
`
`MICROSOFT CORPORATION
`
`Defendant
`
`MEMORANDUM OPINION
`
`This claim construction opinion interprets the disputed terms in U.S. Patent Nos. 6,502,135
`
`(“the ‘135 patent”); 6,839,759 (“the ‘759 patent”); and 7,188,180 (“the ‘180 patent”). Appendix A
`
`contains the disputed terms, as they appear in the asserted claims of these patents. Appendix B
`
`contains a chart summarizing the Court’s constructions.
`
`BACKGROUND
`
`Plaintiff VirnetX, Inc. (“VirnetX”) accuses Microsoft Corporation (“Microsoft”) of infringing
`
`claims of the ‘135, ‘759, and ‘180 patents. The ‘135 patent discloses a method of transparently
`
`creating a virtual private network between a client computer and a target computer. The ‘759 patent
`
`discloses a method for establishing a VPN without a user entering user identification information.
`
`The ‘759 patent is related to the ‘135 patent through other continuation-in-part applications/patents.
`
`The ‘180 patent discloses a method for establishing a VPN using a secure domain name service. The
`
`‘180 patent is related to the ‘135 patent as a divisional patent of continuation-in-part
`
`applications/patents of the ‘135 patent. The ‘759 and ‘180 patents share the same specification.
`
`1
`
`VIRNETX EXHIBIT 2033
`Mangrove v. VirnetX
`Trial IPR2015-01046
`
`Page 1 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 2 of 35
`
`APPLICABLE LAW
`
`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
`
`which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
`
`(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381
`
`F.3d 1111, 1115 (Fed. Cir. 2004)). In claim construction, courts examine the patent’s intrinsic
`
`evidence to define the patented invention’s scope. See id.; C.R. Bard, Inc. v. U.S. Surgical Corp.,
`
`388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc.,
`
`262 F.3d 1258, 1267 (Fed. Cir. 2001). This intrinsic evidence includes the claims themselves, the
`
`specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d
`
`at 861. Courts give claim terms their ordinary and accustomed meaning as understood by one of
`
`ordinary skill in the art at the time of the invention in the context of the entire patent. Phillips, 415
`
`F.3d at 1312 13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003).
`
`The claims themselves provide substantial guidance in determining the meaning of 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 claim’s meaning
`
`because claim terms are typically used consistently throughout the patent. Id. Differences among
`
`the claim terms can also assist in understanding a term’s meaning. Id. For example, when a
`
`dependent claim adds a limitation to an independent claim, it is presumed that the independent claim
`
`does not include the limitation. Id. at 1314 15.
`
`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
`
`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
`
`specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive;
`
`2
`
`
`
`Page 2 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 3 of 35
`
`it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp., 299
`
`F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own terms, give
`
`a claim term a different meaning than the term would otherwise possess, or disclaim or disavow the
`
`claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor’s lexicography governs.
`
`Id. Also, the specification may resolve ambiguous claim terms “where the ordinary and accustomed
`
`meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be
`
`ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. But, “‘[a]lthough the
`
`specification may aid the court in interpreting the meaning of disputed claim language, particular
`
`embodiments and examples appearing in the specification will not generally be read into the
`
`claims.’” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting
`
`Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips,
`
`415 F.3d at 1323. The prosecution history is another tool to supply the proper context for claim
`
`construction because a patent applicant may also define a term in prosecuting the patent. Home
`
`Diagnostics, Inc., v. Lifescan, 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.”).
`
`Although extrinsic evidence can be useful, it is “‘less significant than the intrinsic record in
`
`determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317 (quoting
`
`C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court understand
`
`the underlying technology and the manner in which one skilled in the art might use claim terms, but
`
`technical dictionaries and treatises may provide definitions that are too broad or may not be
`
`indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid
`
`3
`
`
`
`Page 3 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 4 of 35
`
`a court in understanding the underlying technology and determining the particular meaning of a term
`
`in the pertinent field, but an expert’s conclusory, unsupported assertions as to a term’s definition is
`
`entirely unhelpful to a court. Id. Generally, extrinsic evidence is “less reliable than the patent and
`
`its prosecution history in determining how to read claim terms.” Id.
`
`CONSTRUCTION OF DISPUTED TERMS IN THE ‘135 PATENT1, 2
`
`“virtual private network”
`
`The ‘135 patent, claims 1 and 10; the ‘759 patent, claims 1 and 16; and the ‘180 patent,
`
`claims 1, 17, and 33 contain the term “virtual private network” (“VPN”). VirnetX contends that
`
`“virtual private network” means “a network of computers capable of privately communicating with
`
`each other by encrypting traffic on insecure communication paths between the computers, and which
`
`is capable of expanding to include additional computers and communication paths.” Microsoft
`
`contends that “virtual private network” means “a network implemented by encapsulating an
`
`encrypted IP packet within another IP packet (that is, tunneling) over a shared networking
`
`infrastructure.” The parties dispute whether the “FreeS/WAN” dictionary may be used to construe
`
`“virtual private network,” whether VirnetX’s proposed construction is overly broad, whether “virtual
`
`private network” requires anonymity, and whether IP tunneling is a limitation on “virtual private
`
`network.” In light of intrinsic and extrinsic evidence, the Court construes “virtual private network”
`
`as “a network of computers which privately communicate with each other by encrypting traffic on
`
`insecure communication paths between the computers.”
`
`1
`While this heading states “Construction of Disputed Terms in the ‘135 Patent,” the claim terms addressed
`under this heading may also be found in the other asserted patents. This also applies to subsequent headings.
`
`2
`Citations to the patents will not include the U.S. patent numbers to maintain brevity. Unless otherwise
`stated, these citations are of the U.S. patent numbers indicated in the heading that the citation falls under.
`
`4
`
`
`
`Page 4 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 5 of 35
`
`The ‘135 patent does not provide an explicit definition for “virtual private network.”
`
`However, the ‘135 patent uses “virtual private network” in ways that are consistent with a “virtual
`
`private network” being “a network of computers which privately communicate with each other by
`
`encrypting traffic on insecure communication paths between the computers.” The specification
`
`discusses a VPN in the context of connecting and communicating between nodes. For instance, the
`
`specification states, “In a second mode referred to as ‘promiscuous per VPN’ mode, a small set of
`
`fixed hardware addresses are used, with a fixed source/destination hardware address used for all
`
`nodes communicating over a virtual private network.” Col. 23:11-14. This excerpt shows that the
`
`‘135 invention includes nodes (computers) communicating over a virtual private network.
`
`Furthermore, the claims and specification discuss a VPN in the context of private
`
`communication on insecure communication paths. Claim 1 states “A method of transparently
`
`creating a virtual private network (VPN) between a client computer and a target computer” and then
`
`states the steps of accomplishing this method including “requesting access to a secure web site.”
`
`Col. 47:20-22, 30-31. Thus, claim 1 associates a “virtual private network” with “security.” Also,
`
`the specification states, “If the user is not authorized to access the secure site, then a ‘host unknown’
`
`message is returned (step 2705). If the user has sufficient security privileges, then in step 2706 a
`
`secure VPN is established between the user’s computer and the secure target site.” Col. 39:21:25.
`
`This excerpt shows how a “virtual private network” establishes a secure connection between nodes
`
`where security may not otherwise exist. Thus, the claim language and the specification are
`
`consistent with construing a “virtual private network” as “a network of computers which privately
`
`communicate with each other by encrypting traffic on insecure communication paths between the
`
`computers.”
`
`5
`
`
`
`Page 5 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 6 of 35
`
`Extrinsic evidence also supports this construction. The Wiley Electrical and Electronics
`
`Engineering Dictionary defines a “virtual private network” as
`
`A network which has the appearance, functionality, and security of a 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.
`
`WILEY ELECTRICAL AND ELECTRONICS ENGINEERING DICTIONARY 842 (2004) (published by the
`
`IEEE Press). This dictionary definition describes a network that has attributes of a private network
`
`but runs on a public network. The dictionary definition further states that encryption may be used
`
`to achieve privacy. The Court’s construction is in line with this definition. All pertinent aspects of
`
`the Court’s construction are explicitly found in the dictionary definition except for “insecure
`
`communication paths,” which simply corresponds to the dictionary definition’s reference to “a public
`
`network.” Thus, the Court’s construction is in accord with the dictionary definition.
`
`Also, the ‘135 patent refers to the “FreeS/WAN” project in the specification. The
`
`specification explains that the “FreeS/WAN” project is developing a conventional scheme that
`
`provides secure virtual private networks over the Internet. Col. 37:50-58. The “FreeS/WAN”
`
`project defines “virtual private network” as “a network which can safely be used as if it were private,
`
`even though some of its communication uses insecure connections. All traffic on those connections
`
`is encrypted.” “FreeS/WAN” Glossary 24-25, Pl. Br. (Docket No. 194) Ex. 6. The Court’s
`
`construction is consistent with this definition.3
`
`3
`The Court’s construction largely adopts VirnetX’s proposal. However, this construction excludes
`VirnetX’s proposed language regarding the ability of a virtual private network to expand. VirnetX 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, VirnetX’s proposed language is superfluous. Accordingly, the
`Court’s construction accounts for the possibility of additional computers or communication paths.
`
`6
`
`
`
`Page 6 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 7 of 35
`
`Microsoft contends that the “FreeS/WAN” glossary is not an explicit definition of “virtual
`
`private network” and thus is not persuasive. Microsoft argues that the ‘135 patent’s reference to the
`
`“FreeS/WAN” project is made only to describe the prior art and not to define “virtual private
`
`network.” However, the specification explains that the “FreeS/WAN” project has been developing
`
`an implementation of one conventional scheme that provides secure virtual private networks over
`
`the Internet. Col. 37:50-58. Also, the applicant disclosed the “FreeS/WAN” project as prior art.
`
`See Def.’s Br. (Docket No. 201) Exs. M-O. While these references to the “FreeS/WAN” project do
`
`not explicitly define “virtual private network,” they at least point to extrinsic evidence that can be
`
`considered in construing “virtual private network.” Thus, the Court may consider the “FreeS/WAN”
`
`project/glossary as extrinsic evidence for construing “virtual private network.”
`
`Microsoft also contends that even if the “FreeS/WAN” glossary offers an acceptable
`
`definition for “virtual private network,” portions of the “FreeS/WAN” glossary definition show that
`
`VirnetX’s proposed construction is overly broad. Microsoft cites the portion of the “FreeS/WAN”
`
`glossary definition for “virtual private networks” that states “IPSEC [Internet Protocol Security] is
`
`not the only technique available for building VPNs, but it is the only method defined by RFCs
`
`[Request for Comments, Internet documents
`
`some of which are informative while others are
`
`standards] and supported by many vendors. VPNs [virtual private networks] are by no means the
`
`only thing you can do with IPSEC, but they may be the most important application for many users.”
`
`Def.’s Br. (Docket No. 201) at 10; “FreeS/WAN” Glossary 25, Pl. Br. (Docket No. 194) Ex. 6.
`
`Microsoft points out that IPSEC is the only method defined by RFCs and supported by many
`
`vendors. Microsoft argues that this narrow language shows that the “FreeS/WAN” glossary does not
`
`identify Secure Sockets Layer (“SSL”) or Transport Layer Security (“TLS”) as methods for building
`
`7
`
`
`
`Page 7 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 8 of 35
`
`“virtual private networks.” Microsoft then argues that VirnetX’s proposed construction is overly
`
`broad because it allows for a network using SSL and TLS. However, Microsoft’s cited excerpt is
`
`an ancillary portion of the “virtual private network” definition and is set apart in a different
`
`paragraph from the primary portion of the definition. See “FreeS/WAN” Glossary 24-25, Pl. Br.
`
`(Docket No. 194) Ex. 6. Also, Microsoft selectively asserts that IPSEC is the only method defined
`
`by RFCs and supported by many vendors and ignores that its cited excerpt states that “IPSEC is not
`
`the only technique available for building VPNs.” Thus, Microsoft’s cited excerpt does not support
`
`that the “FreeS/WAN” glossary restricts “virtual private network” to IPSEC.
`
`Microsoft also contends that VirnetX’s proposed construction suggests that the “virtual
`
`private network” achieves only data security when it should include both data security and
`
`anonymity. Microsoft is correct that “private” in “virtual private networks” means both data security
`
`and anonymity. The specification supports this interpretation. The Background of the Invention
`
`section states “[a] tremendous variety of methods have been proposed and implemented to provide
`
`security and anonymity for communications over the Internet.” Col. 1:15-17. This section further
`
`describes data security as being “immune to eavesdropping” and states “[d]ata security is usually
`
`tackled using some form of data encryption” and anonymity as “preventing[ing] an eavesdropper
`
`from discovering that terminal 100 is in communication with terminal 110.” Col. 1:23-25, 38-39,
`
`27-28. This language suggests that the claimed invention will achieve both data security and
`
`anonymity because it prefaces the Detailed Description of the Invention section, which describes a
`
`method of creating a virtual private network.
`
`Indeed, the descriptions of the invention later indicate that “private” in “virtual private
`
`network” means data security and anonymity. The Detailed Description of the Invention, Further
`
`8
`
`
`
`Page 8 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 9 of 35
`
`Extensions section describes a mode of the invention as being able to “reduce the amount of
`
`overhead involved in checking for valid frames” while allowing “IP addresses . . . [to] still be hopped
`
`as before for secure communication within the VPN.” Col. 23:20-25 (emphasis added). The
`
`“anonymity” feature of a VPN can be handled by the Tunneled Agile Routing Protocol (“TARP”),
`
`which executes “address hopping.” See Col. 2:66-3:17; see Col. 5:49-64. Thus, the language “still
`
`be hopped” indicates that the modifications of the invention retain the anonymity feature of the
`
`“virtual private network.” Accordingly, the Court construes “virtual private network” as requiring
`4
`
`both data security and anonymity.
`
`Finally, Microsoft contends that “virtual private network” requires IP tunneling. Microsoft
`
`argues that the intrinsic evidence shows that TARP and IPSEC are two ways of obtaining anonymity
`
`in a virtual private network. Microsoft then argues that tunneling is required to achieve anonymity
`
`when TARP, IPSEC, or any other means is employed to achieve anonymity. The Court first and
`
`foremost considers the intrinsic evidence. The claims do not assert “tunneling” as a limitation nor
`
`has Microsoft pointed to any type of limitation in the specification. Microsoft’s citations to the
`
`Background of the Invention section only state explanations of how TARP works and does not use
`
`any limiting language. See Col. 3:5-18, 19-20, 58-60. Furthermore, Microsoft’s citation to the
`
`Detailed Description of the Invention, Further Extensions section only refers to a preferred
`
`implementation of the virtual private network, stating “The VPN is preferably implemented using
`
`4
`While the specification states that this mode of the invention “[o]f course . . . compromises the anonymity
`of the VPNs,” this only means that those outside the VPN can discover the VPN and does not mean that the
`anonymity of the 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 correlate it to a specific machine/person).” Col. 23:25 28 (emphasis added). Thus, the
`specification is consistent with construing a “virtual private network” as achieving both data security and anonymity.
`
`9
`
`
`
`Page 9 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 10 of 35
`
`the IP address ‘hopping’ features of the basic invention described above, such that the true identity
`
`of the two nodes cannot be determined even if packets during the communication are intercepted.”
`
`Col. 38:2-6. Again, this excerpt does not include any limiting language and in fact expressly uses
`
`the non-limiting language “preferably.” Accordingly, “virtual private network” is not limited to IP
`
`tunneling, and the Court construes “virtual private network” as “a network of computers which
`
`privately communicate with each other by encrypting traffic on insecure communication paths
`
`between the computers.”
`
`“transparently creating [creates] a virtual private network”
`
`The ‘135 patent, claims 1 and 10 contain the phrase “transparently creating [creates] a virtual
`
`private network.” The parties dispute whether “transparently creating a virtual private network” in
`
`the preamble is limiting and whether “transparently” refers to not involving a user or not involving
`
`the client and target computers in creating a virtual private network. VirnetX contends that this
`
`phrase means “a user need not be involved in creating a virtual private network.” Microsoft
`
`contends that the phrase does not require construction and alternatively that the phrase means
`
`“creating a virtual private network (VPN) without the client or target computer involved in
`
`requesting such creation.”
`
`“Transparently creating a virtual private network” in the preamble is not a limitation because
`
`“transparently” does not add meaning to claims 1 and 10. “A preamble limits the invention if it
`
`recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the
`
`claim. Conversely, a preamble is not limiting ‘where a patentee defines a structurally complete
`
`invention in the claim body and uses the preamble only to state a purpose or intended use for the
`
`invention.’” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
`
`10
`
`
`
`Page 10 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 11 of 35
`
`(citations omitted). If a preamble “is reasonably susceptible to being construed to be merely
`
`duplicative of the limitations in the body of the claim (and was not clearly added to overcome a
`
`rejection), we do not construe it to be a separate limitation.” Symantec Corp. v. Computer Assocs.
`
`Int’l, Inc., 522 F.3d 1279, 1288-89 (Fed. Cir. 2008). “Transparently” is merely descriptive of what
`
`is found in steps (2) and (3) of claim 1. As discussed below, those steps require that a user is not
`
`involved in creating a VPN. This requirement corresponds to the meaning of “transparently” as
`
`described in the specification, which states that creating a VPN “is preferably performed
`
`transparently to the user (i.e., the user need not be involved in creating the secure link).” Col. 39:28-
`
`29. Thus, “transparently” is merely duplicative of what is found in the body of claim 1. As a result,
`
`the preamble is not a limitation. Accordingly, “transparently” does not require construction.
`
`“Domain Name Service”
`
`The ‘135 patent, claims 1 and 10 and the ‘180 patent, claims 1, 17, and 33 contain the term
`
`“Domain Name Service” (“DNS”). VirnetX contends that “Domain Name Service” means “a
`
`service that receives requests for computer network addresses corresponding to domain names, and
`
`which provides responses.” Microsoft contends that “Domain Name Service” means “the
`
`conventional lookup service defined by the Internet Engineering Task Force (“IETF”) that returns
`
`the IP address of a requested computer or host.” The parties dispute whether “Domain Name
`
`Service” is limited by the definition given in the IETF that defines Domain Name Service as the
`
`conventional scheme or if it more broadly includes both conventional and modified Domain Name
`
`Service that is described in the specification.
`
`The specification’s description of DNS is consistent with construing DNS as “a lookup
`
`service that returns an IP address for a requested domain name.” The specification states
`
`11
`
`
`
`Page 11 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 12 of 35
`
`Conventional Domain Name Servers (DNSs) provide a look-up function that returns
`the IP address of a requested computer or host. For example, when a computer user
`types in the web name “Yahoo.com,” the user’s web browser transmits 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.
`
`Col. 37:22-29. According to this excerpt, a DNS “provides a look-up function” and “returns the IP
`
`address of a requested computer or host.” A “computer or host” includes domain names as
`
`exemplified by the specification’s reference to “Yahoo.com” and “destination web site” as “a
`
`requested computer or host.” Accordingly, the Court construes “DNS” as “a lookup service that
`
`returns an IP address for a requested domain name.”5
`
`“domain name”
`
`The ‘135 patent, claims 1 and 10 and the ‘180 patent, claims 1, 17, and 33 contain the term
`
`“domain name.” VirnetX contends that “domain name” means “a series of characters that
`
`corresponds to an address of a computer or group of computers that is to be sent to a domain name
`
`service (DNS).” Microsoft contends that “domain name” means “a hierarchical name for a computer
`
`(such as www.utexas.edu) that the Domain Name Service converts into an IP address.” The parties
`
`dispute whether “domain name” can correspond to a group of computers or only a single computer,
`
`whether “domain name” is a hierarchical name for a computer, whether “domain name” is limited
`
`to web site names, and whether “domain name” is limited to a computer name being converted into
`
`an IP address.
`
`The claims themselves describe “domain name.” Claim 1 states “a Domain Name Service
`
`(DNS) request that requests an IP address corresponding to a domain name associated with the target
`
`computer.” Col. 47:23-26. Also, claim 10 states “a DNS proxy server that receives a request from
`
`5
`
`See below for the Court’s construction of “domain name.”
`
`12
`
`
`
`Page 12 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 13 of 35
`
`the client computer to look up an IP address for a domain name.” Col. 48:6-7. In both claim 1 and
`
`claim 10 an IP address corresponds to a domain name. Thus, the domain name corresponds to an
`
`IP address. Accordingly, the Court construes “domain name” as “a name corresponding to an IP
`
`address.”
`
`VirnetX proposes that “domain name” corresponds to a group of computers (IP addresses)
`
`or a single computer because claims 1 and 10 of the ‘135 patent refer to IP address using the
`
`indefinite article “an.” The Federal Circuit has stated,
`
`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
`a presumption or even a convention. The exceptions to [the “indefinite article”] rule
`are extremely limited: a patentee must “evince [ ] a clear intent” to limit “a” or “an”
`to “one.” The subsequent use of definite articles “the” or “said” in a claim to refer
`back to the same claim term does not change the general plural rule, but simply
`reinvokes that non-singular meaning. An exception to the general rule that “a” or
`“an” means more than one only arises where the language of the claims themselves,
`the specification, or the prosecution history necessitate a departure from the rule.
`
`Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342-43 (Fed. Cir. 2008) (citations
`
`omitted). Claims 1 and 10 of the ‘135 patent are open-ended construction claims using the word
`
`“comprising” and use the indefinite article “an” to refer to “IP address.” See Col. 47:20-26; see Col.
`
`48:3-7. By the “one or more” rule, these claims allow for one or more IP addresses. Any subsequent
`
`use of the definite article “the” to refer to “IP address” simply refers back to the previously used “IP
`
`address” and thus reinvokes the non-singular meaning. See Col. 47:39-40; see Col. 48:8. Microsoft
`
`does not assert any evidence to show that an exception to the “one or more” rule exists. Thus, there
`
`may be more than one IP address, and thus more than one computer, that corresponds with the
`
`domain name. This would allow for a situation where the IP address that corresponds to the domain
`
`13
`
`
`
`Page 13 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 14 of 35
`
`name is not the IP address of the target computer. See Col. 38:23-42. Accordingly, “domain name”
`
`can correspond to more than one computer.
`
`Microsoft contends that the patents limit “domain name” to a hierarchical name for a
`
`computer under traditional hierarchical DNS format. However, Microsoft relies largely on extrinsic
`
`evidence
`
`including expert testimony and Microsoft’s own technology tutorial
`
`to support its
`
`contentions, which does not carry great weight in light of the fact that claim language provides
`
`guidance on the meaning of “domain name.” Also, where Microsoft uses intrinsic evidence for
`
`support, Microsoft only refers to non-limiting language from the specification. For instance,
`
`Microsoft suggests that the examples used in the specification for domain names, which include
`
`“Yahoo.com” and “Target.com,” show that the patents use “domain name” in its traditional
`
`hierarchical DNS format. Microsoft further suggests that “domain name” is limited to a traditional
`
`hierarchical name because the patents do not provide a single example of “domain name” that is not
`
`written in traditional hierarchical DNS format. However, Microsoft argues only the presence and
`
`absence of examples rather than any enforceable language of limitation. The specification’s
`
`disclosure or omission of examples does not create limitations on claims. Accordingly, Microsoft
`
`does not offer sufficient support for limiting “domain name” to a hierarchical name for a computer.
`
`Microsoft also contends that the patents limit “domain name” to web site names. However,
`
`no such limitation is found in the claims, and Microsoft merely references its arguments on
`
`construing “web site” without showing how “domain name” is necessarily linked to web site names.
`
`Accordingly, “domain name” is not limited to web site names.
`
`Finally, Microsoft contends that “domain name” is limited to a computer name being
`
`converted into an IP address. Microsoft supports this proposed limitation by arguing that a “domain
`
`14
`
`
`
`Page 14 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 15 of 35
`
`name” has the capacity to be converted by DNS into an IP address and that the specification
`
`emphasizes this point by describing that identical DNS requests may result in conventional domain
`
`name resolution, “host unknown” error messages, or VPN initiation, depending not on whether
`
`something is a “domain name” but on what type of web site was requested. However, Microsoft
`
`incorrectly argues that a “capacity” to be converted by DNS into an IP address demonstrates a
`
`required limitation. A mere capacity to perform an act does not make that act necessary. Thus,
`
`Microsoft has not sufficiently supported limiting “domain name” to a computer name being
`
`converted into an IP address. Accordingly, the Court construes “domain name” as “a name
`
`corresponding to an IP address.”
`
`“web site”
`
`The ‘135 patent, claims 1 and 10 contain the term “web site.” VirnetX contends that
`
`construing “secure web site” as addressed below sufficiently addresses the meaning of “web site”
`
`and that “web site” does not require further construction. Alternatively, VirnetX contends that “web
`
`site” means “a computer associated with a domain name and that can communicate in a network.”
`
`Microsoft contends that “web site” means “one or more related web pages at a location on the World
`
`Wide Web.” The parties dispute whether “web site” should be given a construction separate from
`
`“secure web site” and whether “web site” is limited to web pages on the World Wide Web.
`
`VirnetX argues that “web site” should not be construed separately from “secure web site”
`
`because the ‘135 patent claims never state “web site” without the preceding word “secure.”
`
`However, “secure” is separable from “web site” as a modifier of “web site.” The claims show that
`
`“secure” can be replaced by other modifiers to “web site.” Claims 1 and 10 of the ‘135 patent refer
`
`to “web site” preceded by “non-secure” and “secure target.” Col. 47:28, 30; Col. 48:10, 14. This
`
`15
`
`
`
`Page 15 of 35
`
`

`
`Case 6:07-cv-00080-LED Document 246 Filed 07/30/09 Page 16 of 35
`
`demonstrates that “web site” can be separated from its modifier and thus is its own term separate
`
`from “secure.” Thus, “web site” may be construed as its own claim te

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket