Paper No. 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`Patent No. 6,502,135
`Issued: Dec. 31, 2002
`Filed: Feb. 15, 2000
`Inventors: Edmund C. Munger, et al.
`Title: AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS
`WITH ASSURED SYSTEM AVAILABILITY
`
`____________________
`
`Inter Partes Review No. IPR2016-00062
`__________________________________________________________________
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,502,135
`
`
`
`
`
`
`

`
`
`
`I.
`
`Table of Contents
`
`Introduction .................................................................................................... 1
`A. Certification the ’135 Patent May Be Contested by Petitioner ....... 1
`B.
`Fee for Inter Partes Review (§ 42.15(a)) ........................................... 2
`C. Mandatory Notices (37 CFR § 42.8(b)) ............................................. 2
`1.
`Real Party in Interest (§ 42.8(b)(1)) ............................................ 2
`2.
`Related Matters (§ 42.8(b)(2)) .................................................... 2
`3.
`Lead and Backup Lead Counsel (§ 42.8(b)(3)) .......................... 5
`4.
`Service Information (§ 42.8(b)(4)) ............................................. 5
`5.
`Proof of Service (§§ 42.6(e) and 42.105(a)) ............................... 6
`
`II.
`
`Identification of Claims Being Challenged (§ 42.104(b)) ........................... 6
`
`III. Relevant Information Concerning the ’135 Patent .................................... 7
`A.
`Brief Description .................................................................................. 7
`B.
`’135 Patent Claim Construction......................................................... 8
`1.
`Virtual Private Network (VPN) (Claims 1 and 10) .................... 9
`a)
`A VPN does not require encryption ................................. 9
`b)
`A VPN does not require computers to directly
`communicate with each other ......................................... 13
`Domain Name (Claim 10) ......................................................... 14
`DNS Request (Claim 1) ............................................................ 15
`DNS Proxy Server (Claims 8 and 10) ....................................... 16
`Client Computer (Claims 1 and 10) .......................................... 16
`Automatically (Claim 1) ........................................................... 18
`
`2.
`3.
`4.
`5.
`6.
`
`IV. Analysis of the Patentability of the ’135 Patent ........................................ 19
`A. Claims 1, 3, 4, 7, 8, 10, and 12 are anticipated by Kiuchi (Ex.
`1002) .................................................................................................... 19
`1.
`Kiuchi Anticipates Independent Claim 1 .................................. 27
`a)
`Preamble ......................................................................... 27
`ii
`
`

`
`
`
`b)
`Step (1) ............................................................................ 28
`Step (1) .......................................................................... ..28
`b)
`Step (2) ............................................................................ 28
`c)
`Step (2) .......................................................................... ..28
`c)
`Step (3) ............................................................................ 29
`d)
`Step (3) .......................................................................... ..29
`d)
`Kiuchi Anticipates Claim 3 ....................................................... 30
`2.
`Kiuchi Anticipates Claim 3 ..................................................... ..30
`2.
`Kiuchi Anticipates Claim 4 ....................................................... 31
`3.
`Kiuchi Anticipates Claim 4 ..................................................... ..3l
`3.
`Kiuchi Anticipates Claim 7 ....................................................... 32
`4.
`Kiuchi Anticipates Claim 7 ..................................................... ..32
`4.
`Kiuchi Anticipates Claim 8 ....................................................... 33
`5.
`Kiuchi Anticipates Claim 8 ..................................................... ..33
`5.
`Kiuchi Anticipates Independent Claim 10 ................................ 34
`6.
`Kiuchi Anticipates Independent Claim 10 .............................. ..34
`6.
`Kiuchi Anticipates Claim 12 ..................................................... 36
`7.
`Kiuchi Anticipates Claim 12 ................................................... ..36
`7.
`Claim 8 Is Obvious over Kiuchi in View of RFC 1034 .................. 36
`
`Claim 8 Is Obvious over Kiuchi in View of RFC 1034 ................ ..36
`
`B.
`
`B.
`
`V. Additional Evidence of Public Availability ............................................... 39
`V.
`Additional Evidence of Public Availability ...............................................39
`
`VI. Conclusion .................................................................................................... 42
`
`VI. Conclusion .................................................................................................. ..42
`
`
`
`iii
`
`iii
`
`

`
`IPR2016-00062
`
`I.
`
`Introduction
`Apple Inc. (“Petitioner” or “Apple”) petitions for inter partes review of
`
`claims 1, 3, 4, 7, 8, 10, and 12 of U.S. Patent No. 6,502,135 (the “’135 patent”). As
`
`explained in the concurrently filed Motion for Joinder (Paper 2), Petitioner seeks to
`
`join as a party to IPR2015-01046, filed by Mangrove Partners Master Fund, Ltd
`
`(“Mangrove”), a proceeding instituted against the same patent on the basis of the
`
`same prior art. Apple presents patentability challenges that are substantively
`
`identical to those presented by Mangrove in IPR2015-01046, and Apple relies on
`
`the same exhibits and the same expert declaration. See §§ III-IV below. The sole
`
`difference is that with this petition, Apple is submitting several additional exhibits
`
`that further confirm that RFC 1034 is prior art to the ’135 patent. As explained in
`
`§ V below, the additional information does not change the grounds asserted by
`
`Mangrove, but instead simply supplements the evidence regarding the public
`
`availability of RFC 1034.
`
`A. Certification the ’135 Patent May Be Contested by Petitioner
`Petitioner certifies that the ’135 patent is available for inter partes review
`
`and that it is not barred or estopped from requesting an inter partes review
`
`challenging the patent claims on the grounds identified in the petition.
`
`Neither Petitioner, nor any party in privity with Petitioner, has filed a civil
`
`action challenging the validity of any claim of the ’135 patent. See 35 U.S.C.
`
`
`
`1
`
`

`
`IPR2016-00062
`
`§ 315(a)(1). While Petitioner was served with a complaint alleging infringement of
`
`the ’135 patent more than one year before the date this petition is filed, the time
`
`limitation of 35 U.S.C. § 315(b) “shall not apply to a request for joinder under” 35
`
`U.S.C. § 315(c). Because this petition is accompanied by a Motion for Joinder
`
`(Paper 2), it complies with 35 U.S.C. § 315(b). See, e.g., Dell Inc. v. Network-1
`
`Security Solutions, Inc., IPR2013-00385, Paper 17 at 4-5 (granting joinder beyond
`
`the one-year window).
`
`Fee for Inter Partes Review (§ 42.15(a))
`
`B.
`The Director is authorized to charge the fee specified by 37 CFR § 42.15(a)
`
`to Deposit Account No. 50-1597.
`
`C. Mandatory Notices (37 CFR § 42.8(b))
`1.
`Real Party in Interest (§ 42.8(b)(1))
`The real party in interest of this petition pursuant to § 42.8(b)(1) is Apple
`
`Inc. located at One Infinite Loop, Cupertino, CA 95014.
`
`Related Matters (§ 42.8(b)(2))
`
`2.
`The ’135 patent is a member of a family of patents issued to Munger et al.
`
`and assigned to VirnetX, Inc., each claiming priority to U.S. Provisional App. Nos.
`
`60/106,261 and 60/137,704. That family includes the following patents: 6,502,135;
`
`6,618,761; 6,826,616; 6,834,310; 6,839,759; 6,907,473; 7,010,604; 7,133,930;
`
`7,188,180; 7,418,504; 7,490,151; 7,921,211; 7,933,990; 7,945,654; 7,987,274;
`
`7,996,539; 8,051,181; 8,458,341; 8,504,696; 8,504,697; 8,516,117; 8,516,131;
`
`2
`
`

`
`IPR2016-00062
`
`8,521,888; 8,554,899; 8,560,705; 8,572,247; 8,843,643; 8,850,009; 8,868,705;
`
`8,874,771; 8,904,516; 8,943,201; 9,027,115; 9,037,713; 9,038,163; 9,077,694;
`
`9,077,695; 9,094,399; and 9,100,375. The following pending applications claim
`
`priority to the same U.S. Provisional App. Nos. 60/106,261 and 60/137,704:
`
`13/475,637; 13/615,528; 13/617,375; 13/620,534; 13/620,550; 13/890,206;
`
`13/950,897; 14/526,669; 14/702,630; 14/704,938; 14/710,470; and 14/815,869.
`
`The ’135 patent was asserted in the following district court proceedings:
`
`VirnetX Inc. v. Microsoft Corp., Case No. 6:13-cv-00351 (E.D. Tex.); VirnetX Inc.
`
`v. Apple Inc., Case. No. 6:13-cv-00211 (E.D. Tex.); VirnetX Inc. v. Apple Inc.,
`
`Case. No. 6:12-cv-00855 (E.D. Tex.); VirnetX Inc. v. Mitel Network Corp., Case.
`
`No. 6:11-cv-00018 (E.D. Tex.); VirnetX Inc. v. Cisco Systems, Inc., Case. No.
`
`6:10-cv-00417 (E.D. Tex.); VirnetX Inc. v. Microsoft Corp., Case. No. 6:10-cv-
`
`00094 (E.D. Tex.); VirnetX Inc. v. Microsoft Corp., Case. No. 6:07-cv-00080 (E.D.
`
`Tex.). The ’135 patent was at issue in VirnetX Inc. v. Apple Inc., 767 F.3d 1308
`
`(Fed. Cir. 2014) (remanding to the district court in 6:10-cv-00417 (E.D. Tex.) for
`
`further proceedings). The ’135 patent was or is involved in the following USPTO
`
`proceedings1: IPR2013-00348 (D); IPR2013-00349 (D); IPR2013-00375 (T);
`
`
`
`1 P = Pending; D = Institution Denied; I = Trial Instituted; T = Trial Terminated;
`
`FWD = Final Written Decision or Inter Partes Reexamination Appeal Decision.
`
`
`
`3
`
`

`
`IPR2016-00062
`
`IPR2014-00171 (D); IPR2014-00172 (D); IPR2014-00558 (D); IPR2014-01046
`
`(I); Control No. 95/001,682 (P2); Control No. 95/001,679 (P3).
`
`Patents related to the ’135 patent were asserted in the following additional
`
`district court proceedings: VirnetX Inc. v. Apple Inc., Case. No. 6-13-cv-00581
`
`(E.D. Tex.); VirnetX Inc. v. Apple Inc., Case. No. 6-11-cv-00563 (E.D. Tex.);
`
`Investigation No. 337-TA-858 (U.S. Int’l Trade Comm’n). Patents related to the
`
`’135 patent were or are involved in the following USPTO proceedings:
`
`7,418,504
`
`Proceeding
`Patent
`6,839,759 Control No. 95/001,746 (P), Appeal No. 2015-007843
`7,188,180
`IPR2014-00401 (D); IPR2014-00405 (D); IPR2014-00481 (FWD);
`IPR2014-00482 (FWD); IPR2014-01418 (D); IPR2014-01421 (D);
`Control No. 95/001,792 (P); Appeal No. 2014-000591
`IPR2013-00377 (T); IPR2013-00393 (D); IPR2013-00394 (D);
`IPR2014-00176 (D); IPR2014-00177 (D); IPR2014-00612 (D);
`IPR2014-00613 (T); IPR2014-00614 (T); IPR2015-00188 (D);
`IPR2015-00189 (D); Control No. 95/001,788 (P); Control No.
`95/001,851 (P)
`IPR2013-00354 (D); IPR2013-00376 (T); IPR2014-00173 (D);
`IPR2014-00610 (T); IPR2015-00187 (D); IPR2015-01047 (I);
`Control No. 95/001,697 (P); Control No. 95/001,714 (P)
`
`7,490,151
`
`
`
`2 Claims 1-18 rejected; Patent Owner Notice of Appeal filed on 10/15/2015.
`
`3 Claims 1-9, 13-18 rejected; Patent Owner Notice of Appeal filed on 10/15/2015.
`
`
`
`4
`
`

`
`IPR2016-00062
`
`7,921,211
`
`7,987,274
`
`8,051,181
`
`8,458,341
`8,504,697
`
`8,516,131
`8,560,705
`8,843,643
`8,850,009
`8,868,705
`
`
`IPR2013-00378 (T); IPR2013-00397 (D); IPR2013-00398 (D);
`IPR2014-00174 (D); IPR2014-00175 (D); IPR2014-00615 (T);
`IPR2014-00616 (D); IPR2014-00618 (T); IPR2015-00185 (D);
`IPR2015-00186 (D); Control No. 95/001,789 (P); Control No.
`95/001,856 (P)
`IPR2014-00403 (FWD); IPR2014-00404 (FWD); IPR2014-00483
`(FWD); IPR2014-00484 (FWD)
`IPR2015-00485 (D); IPR2015-00486 (D); Control No. 95/001,949;
`Appeal No. 2015-004512 (FWD)
`IPR2015-00866 (I); IPR2015-00867 (D)
`IPR2014-00237 (FWD), Docket No. 15-1934 (Fed. Cir.);
`IPR2014-00238 (FWD), Docket No. 15-1935 (Fed. Cir.)
`IPR2015-00868 (I); IPR2015-00869 (D)
`IPR2015-00870 (I); IPR2015-00871 (I)
`IPR2015-01009 (P); IPR2015-01010 (P)
`IPR2015-00812 (I); IPR2015-00813 (I)
`IPR2015-00810 (I); IPR2015-00811 (I)
`
`Lead and Backup Lead Counsel (§ 42.8(b)(3))
`
`3.
`Lead Counsel is: Jeffrey P. Kushan (Reg. No. 43,401), jkushan@sidley.com,
`
`(202) 736-8914. Back-Up Lead Counsel are: Scott Border (pro hac to be
`
`requested), sborder@sidley.com, (202) 736-8818; and Thomas A. Broughan III
`
`(Reg. No. 66,001), tbroughan@sidley.com, (202) 736-8314.
`
`Service Information (§ 42.8(b)(4))
`
`4.
`Service on Petitioner may be made by e-mail (iprnotices@sidley.com), mail
`
`
`
`5
`
`

`
`IPR2016-00062
`
`or hand delivery to: Sidley Austin LLP, 1501 K Street, N.W., Washington, D.C.
`
`20005. The fax number for lead and backup lead counsel is (202) 736-8711.
`
`Proof of Service (§§ 42.6(e) and 42.105(a))
`
`5.
`Proof of service of this petition is provided in Attachment A.
`
`II.
`
`Identification of Claims Being Challenged (§ 42.104(b))
`
`Claims 1, 3, 4, 7, 8, 10, and 12 of the ’135 patent are unpatentable:
`
`(1) Claims 1, 3, 4, 7, 8, 10, and 12 are anticipated by Takahiro Kiuchi and
`Shigekoto Kaihara, “C-HTTP - The Development of a Secure, Closed
`HTTP-based Network on the Internet,” the Proceedings of SNDSS
`1996 (“Kiuchi”) (Ex. 1002); and
`
`(2) Claim 8 is obvious based on Kiuchi in view of RFC 1034 (Ex. 1005).
`
`Kiuchi qualifies as prior art under 35 U.S.C § 102(b). Specifically, Kiuchi
`
`(Ex. 1002) is a printed publication that was presented at the 1996 Symposium on
`
`Network and Distributed Systems Security (SNDSS) on February 22 & 23, 1996,
`
`and published by IEEE in the Proceedings of SNDSS 1996. Ex. 1002.
`
`RFC 1034 likewise qualifies as prior art under 35 U.S.C § 102(b).
`
`Specifically, RFC 1034 (Ex. 1005) was published in November 1987 by the
`
`Internet Engineering Task Force (IETF). RFC 1034 was publically distributed no
`
`later than November 1987. Ex. 1005; see Ex. 1003 at ¶¶ 41-47 (describing IETF
`
`practices for publishing RFCs); RFC 2026 (Ex. 1010) at 4, 19-21 (RFC
`
`formalizing IETF practices for publishing RFCs and explaining each RFC is
`
`published as of the date listed on its face); see also § V below (describing
`
`
`
`6
`
`

`
`IPR2016-00062
`
`additional evidence).
`
`A list of evidence relied upon is set forth in Attachment B.
`
`III. Relevant Information Concerning the ’135 Patent
`A. Brief Description
`The ‘135 Patent generally addresses secure communications over the
`
`Internet. As acknowledged in the ‘135 Patent, “[a] tremendous variety of methods
`
`have been proposed and implemented to provide security and anonymity for
`
`communications over the Internet.” Ex. 1001 at 1:16-18. The majority of the ‘135
`
`specification is dedicated to describing one particular way of providing secure and
`
`anonymous communications using an allegedly inventive protocol called the
`
`“Tunneled Agile Routing Protocol (TARP).” See, e.g., id. at 2:65-5:64. The
`
`challenged claims of the ‘135 Patent, however, are not limited to TARP and
`
`instead all address one of five alleged “improvements” added by CIP application
`
`serial number 09/504,783 filed on February 15, 2000. See id. at 5:65-6:10.
`
`The claims of the ‘135 Patent are directed to a system and method for
`
`securely communicating over the Internet. See Ex. 1001 at 2:66. More specifically,
`
`the claims all address “a DNS proxy server that transparently creates a virtual
`
`private network in response to a domain name inquiry.” Id. at 6:1-3.
`
`Claim 1 of the ‘135 Patent is reproduced below:
`
`1. A method of transparently creating a virtual private network
`(VPN) between a client computer and a target computer, comprising the
`
`
`
`7
`
`

`
`IPR2016-00062
`
`steps of:
`
`
`(1) generating from the client computer a Domain Name Service
`(DNS) request that requests an IP address corresponding to a domain name
`associated with the target computer;
`
`
`(2) determining whether the DNS request transmitted in step (1) is
`requesting access to a secure web site; and
`
`
`in response to determining that the DNS request in step (2) is
`(3)
`requesting access to a secure target web site, automatically initiating the
`VPN between the client computer and the target computer.
`
`B.
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`’135 Patent Claim Construction
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see
`
`also Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`Under the broadest reasonable standard, claim terms are given their ordinary and
`
`customary meaning as would be understood by one of ordinary skill in the art in
`
`the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in
`
`the specification with reasonable clarity, deliberateness, and precision. In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In this regard, however, care must
`
`be taken not to read a particular embodiment appearing in the written description
`
`into the claim if the claim language is broader than the embodiment. In re Van
`
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Petitioner submits constructions for
`
`the following terms. All remaining terms should be given their plain meaning.
`
`
`
`8
`
`

`
`IPR2016-00062
`
`Virtual Private Network (VPN) (Claims 1 and 10)
`
`1.
`Petitioner submits that the broadest reasonable interpretation of “virtual
`
`private network” or “VPN” should be broad enough to encompass “a secure
`
`network that includes portions of a public network.”
`
`Petitioner’s proposed interpretation was previously adopted by the PTAB in
`
`IPR2014-00237 regarding related U.S. Patent No. 8,504,697. Ex. 1022, pp. 11-12
`
`(Decision to Institute Inter Partes Review, Paper No. 15). This interpretation is
`
`consistent with both the specification and the common meaning of “VPN” for the
`
`reasons addressed therein. Id.
`
`In prior IPR proceedings regarding the ‘135 Patent, Patent Owner has
`
`proposed an interpretation of “VPN” that differs in two main respects; namely, that
`
`it requires (i) encryption, and (ii) computers in the VPN to directly communicate
`
`with each other. Ex. 1015, p. 22. Both positions are inconsistent with the broadest
`
`reasonable interpretation of “VPN.”
`
`a)
`
`A VPN does not require encryption
`
`The ’135 Patent does not explicitly define the term “VPN.” See Ex. 1003,
`
`¶ 17. However, the ’135 Patent explains that one can provide data security using
`
`“IP hopping” schemes, rather than solely by using encryption. As it states, “Data
`
`security is usually tackled using some form of data encryption.” Ex. 1001 at 1:38-
`
`39 (emphasis added). The ’135 Patent also illustrates use of a quasi-random IP
`
`
`
`9
`
`

`
`IPR2016-00062
`
`hopping scheme to implement a VPN. See, e.g., id. at 23:10-14 (“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.” (Emphasis added)).
`
`Moreover, claims 6 and 11, which depend on independent claims 1 and 10
`
`respectively, rely on this particular embodiment. For example, claim 6 specifies
`
`that step 3 of claim 1 “comprises the step of establishing the VPN by creating an
`
`IP address hopping scheme between the client computer and the target computer.”
`
`Id. at 47:53-55 (emphasis added). Similarly, claim 11 requires that “the gateway
`
`computer creates the VPN by establishing an IP address hopping regime that is
`
`used to pseudorandomly change IP address in packets transmitted between the
`
`client computer and the secure target computer.” Id. at 48:20-24 (emphasis added);
`
`see also id. at 2:25-36 (explaining use of anonymity techniques). Accordingly, the
`
`specification envisions VPNs that do not require encryption.
`
`To support its contention that a VPN requires encryption, Patent Owner has
`
`in prior proceedings pointed to the term “FreeS/WAN” in one passage of the ’135
`
`Patent. Ex. 1015, p. 23 (citing Ex. 1001 at 37:50-62). That passage, however, does
`
`not define what a VPN is, but simply explains that RFC 2535 (the “FreeS/WAN”
`
`protocol) can be used to implement one type of a VPN. See id. Notably, Patent
`
`Owner does not cite to any passage of RFC 2535 (Ex. 1016) – the publication
`
`
`
`10
`
`

`
`IPR2016-00062
`
`actually cited in the ’135 Patent – to support its assertions. This is because RFC
`
`2535 does not even mention the terms “encryption” or “VPN,” much less state that
`
`a VPN must use encryption.
`
`In the same IPR proceedings, Patent Owner also relied upon a “glossary”
`
`related to “FreeS/WAN” that was purportedly cited in the prosecution history of
`
`the ‘135 patent. Ex. 1015, p. 23. That glossary, which is internally dated February
`
`21, 2002 (two years after the filing of the CIP application that matured as the ‘135
`
`patent), states that a VPN is “a network that 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.” Ex. 1023, p. 24. This later-created document
`
`further describing what is called out in the specification as “[o]ne implementation”
`
`of “[o]ne conventional scheme” for creating a VPN, Ex. 1001 at 37:50-62, falls far
`
`short of a definition of VPN and should not be read into the claims. Notably,
`
`however, the glossary’s definition by its use of “those connections” only envisions
`
`the use of encryption over “insecure connections.” Ex. 1023, p. 24. In other words,
`
`encrypting while on the public network. Id. As described in further detail in §V.A
`
`below, this is exactly what Kiuchi does – uses encryption on the public network
`
`connecting the client-side and server-side proxies with the rest of the
`
`communication paths made secure by the use of firewalls.
`
`Patent Owner has also pointed to the constructions adopted by certain
`
`
`
`11
`
`

`
`IPR2016-00062
`
`District Courts that a VPN requires encryption. Ex. 1015, pp. 23-24. These
`
`constructions, however, are not the broadest reasonable interpretation, but reflect
`
`the meaning of the term as used in district court litigation; it is not controlling in
`
`this proceeding. In re Trans Texas Holdings Corp., 498 F.3d 1290, 1298-99 (Fed.
`
`Cir. 2007);
`
`Finally, the Patent Owner has contended that Petitioner’s expert, Dr. Roch
`
`Guerin, has in other IPRs regarding related patents “supported” interpretations of
`
`VPN requiring encryption and has “identif[ied] passages [in the specification] that
`
`support defining a VPN to require encryption.” Ex. 1021, p. 32. However, Dr.
`
`Guerin did not provide an opinion regarding the broadest reasonable interpretation
`
`of VPN. Instead, he offered an opinion that the broadest reasonable interpretation
`
`of VPN would be “broad enough” to cover a proposed interpretation that included
`
`“encrypting traffic on insecure communication paths” because that interpretation
`
`was “not inconsistent” with the specification of the related patent at issue. Ex.
`
`1025, ¶ 19. Dr. Guerin also noted that the ‘180 patent at issue in that proceeding
`
`described a VPN as including “a secure communication link” and that “some of the
`
`VPNs” described in that patent “rely upon encryption” to achieve that security. Id.
`
`at ¶¶ 19-20. Dr. Guerin’s prior opinions do not support reading a requirement of
`
`encryption into the term VPN.
`
`The broadest reasonable construction of “VPN” thus does not require
`
`
`
`12
`
`

`
`IPR2016-00062
`
`encryption, but can establish a “private network” using either encryption or other
`
`methods, such as IP hopping, or both.
`
`b)
`
`A VPN does not require computers to directly
`communicate with each other
`
`Patent Owner has also contended in prior proceedings that a “VPN” requires
`
`computers in a VPN to “directly communicate with each other.” See e.g., Ex. 1009,
`
`pp. 1-3 (emphasis added). But in the August 2010 litigation, the Court found that
`
`Patent Owner had disclaimed VPNs that do not involve “direct communications”
`
`between the involved computers. Ex. 1019, pp. 6-9. The Court relied on Patent
`
`Owner’s statements to the Office during the ’269 reexamination proceeding
`
`involving the ’135 Patent to make this determination; specifically, that the claims
`
`of the ’135 Patent were not anticipated by the prior art “Aventail” because
`
`“computers connected according to Aventail do not communicate directly with
`
`each other.” Id (Emphasis added). The Court also observed that “…routers,
`
`firewalls, and similar servers that participate in typical network communication do
`
`not impede ‘direct’ communication between a client and target computer.” Ex.
`
`1019, p. 8, n. 2. The Court’s finding that Patent Owner disclaimed a portion of the
`
`literal scope of the ’135 Patent claims (i.e., that covering VPNs in which
`
`computers do not “directly” communicate) means that the ’135 claims in their
`
`broadest reasonable construction must still encompass this subject matter. Patent
`
`Owner’s prosecution disclaimer is effective in a district court proceeding but not
`
`
`
`13
`
`

`
`IPR2016-00062
`
`here. E.g., M.P.E.P. § 2111; id. at § 2111.01(I) (“Although claims of issued patents
`
`are interpreted in light of the specification, prosecution history, prior art and other
`
`claims, this is not the mode of claim interpretation to be applied during
`
`examination.”).
`
`Finally, in the context of IPR proceedings IPR 2014-00237 and -00238
`
`concerning related U.S. Patent No. 8,504,697, the Board has in the past construed
`
`the term “virtual private network” to mean “a ‘secure communication link’ with
`
`the additional requirement that the link includes a portion of a public network.”
`
`Again, there is no requirement that a VPN include encryption or direct
`
`communication.
`
`For all these reasons, the broadest reasonable construction of “VPN”
`
`therefore encompasses “a secure network that includes portions of a public
`
`network.”
`
`Domain Name (Claim 10)
`
`2.
`The Patent Owner has asserted to the PTAB in proceedings regarding U.S.
`
`Patent No. 7,490,151, a divisional of the ‘135 Patent having a common
`
`specification, that a “domain name” means “a name corresponding to a network
`
`address.” Ex. 1007, p. 21.
`
`In view of the Patent Owner’s own assertions, it is reasonable, for purposes
`
`of this proceeding in which the broadest reasonable interpretation standard applies,
`
`
`
`14
`
`

`
`IPR2016-00062
`
`to consider the term “domain name” as encompassing “a name corresponding to a
`
`network address.” This is consistent with its plain and ordinary meaning and usage
`
`in the ‘135 Patent. Ex. 1001 at 37:22-39.
`
`In the earlier proceedings, Patent Owner has urged that no interpretation of
`
`this term is needed, because it did not appear alone in the claims of that patent, but
`
`rather only as part of a larger phrase. Ex. 1007, p. 21. That is not the case here. In
`
`the ‘135 Patent, “domain name” is used as a free-standing term in the claims. Ex.
`
`1001 at 48:7. In addition, the term “domain name” informs the meaning of other
`
`claim terms such as “Domain Name Service (DNS) request” (claim 1) and “DNS
`
`proxy server” (claim 8 and 10).
`
`Accordingly the term “domain name” should be interpreted and it should be
`
`interpreted to encompass “a name corresponding to a network address.”
`
`DNS Request (Claim 1)
`
`3.
`The Patent Owner has asserted to the PTAB in proceedings regarding U.S.
`
`Patent No. 7,490,151, a divisional of the ‘135 Patent having a common
`
`specification, that a “DNS request” means “a request for a resource corresponding
`
`to a domain name.” Ex. 1007, p. 22. In IPR2014-00610 the PTAB agreed with and
`
`adopted this interpretation. Ex. 1011, p. 6.
`
`Petitioner generally agrees with this interpretation, but believes that the
`
`agreed understanding of “domain name” should be incorporated into the
`
`
`
`15
`
`

`
`IPR2016-00062
`
`interpretation of “DNS request,” which should then be interpreted to mean “a
`
`request for a resource corresponding to a network address.”
`
`DNS Proxy Server (Claims 8 and 10)
`
`4.
`Patent Owner has in prior proceedings regarding the ‘135 Patent asserted
`
`that a “DNS proxy server” is “a computer or program that responds to a domain
`
`name inquiry in place of a DNS.” See Ex. 1018, pp. 16-17 (Plaintiff’s Opening
`
`Claim Construction Brief in case no. 6:10-cv-417 (E.D. Tex.)); Ex. 1015, pp. 32-33
`
`(IPR2013-00348, Paper No. 10).
`
`This is consistent with the embodiments disclosed in the specification of the
`
`‘135 Patent. See Ex. 1001 at 38:23-47. Accordingly, for the purposes of this
`
`Petition, Apple adopts this construction.
`
`Petitioner notes that Patent Owner has admitted that – and the above
`
`construction allows for the fact that –the claimed DNS proxy server can be
`
`distributed among different computers or processes, under the broadest reasonable
`
`interpretation. See Ex. 1015, pp. 32-33.
`
`Client Computer (Claims 1 and 10)
`
`5.
`In a prior IPR proceeding (IPR2014-00558) involving the ‘135 Patent,
`
`Patent Owner argued that the term “client computer” should be interpreted to mean
`
`“user’s computer.” Ex. 1021, pp. 37-39 (IPR2014-00558, Paper 11). Patent
`
`Owner’s proposed interpretation does not reflect the broadest reasonable
`
`
`
`16
`
`

`
`IPR2016-00062
`
`interpretation of the term and should be rejected.
`
`Patent Owner’s proposed construction transparently attempts to rewrite the
`
`claim term to substitute “user’s” for “client.” This approach to claim construction,
`
`in which limitations from preferred embodiments that are not present in the claims
`
`are “read in” to the claims, has been rejected multiple times by the Patent Office
`
`under the broadest reasonable interpretation standard. For example, in IPR2014-
`
`00610 regarding a divisional of the ‘135 Patent (U.S. Patent No. 7,490,151) the
`
`PTAB rejected Patent Owner’s attempt to give the term “client” the identical
`
`interpretation Patent Owner has offered in the ‘135 Patent for “client computer.”
`
`Ex. 1011, pp. 7-8. Instead, the PTAB found that the broadest reasonable
`
`interpretation of the term “client” in light of the same specification was “a device,
`
`computer, system, or program from which a data request to a server is generated.”
`
`Petitioner agrees with this interpretation and proposes that the same reasoning
`
`should be applied here. As such, the term “client computer” should be interpreted
`
`to mean “a computer from which a data request to a server is generated.”
`
`As used in ordinary technical usage and in the ‘135 Patent, a “client
`
`computer” refers to the computer from which a data request to a server is
`
`originated. See Ex. 1001(‘135 Patent at 1:49-55 (“Proxy servers prevent
`
`destination servers from determining the identities of the originating clients. This
`
`system employs an intermediate server interposed between client and destination
`
`
`
`17
`
`

`
`IPR2016-00062
`
`server. The destination server sees only the Internet Protocol (IP) address of the
`
`proxy server and not the originating client.”). There is no requirement anywhere in
`
`the intrinsic record that a client computer be a “user computer,” as Patent Owner
`
`asserts.
`
`Finally, Petitioner’s proposed interpretation is also consistent with the
`
`Office’s interpretation of the term “client computer” in another patent in the ‘135
`
`family. As the Patent Owner previously admitted, “[i]n reexamination control no.
`
`95/001,792, which pertains to related U.S. Patent No. 7,188,180, the Board found
`
`that the term ‘client computer’ may read on a proxy computer where no user
`
`resides.” Ex. 1021, p. 40, n. 10.4
`
`Automatically (Claim 1)
`
`6.
`The Patent Owner has previously asserted to the PTAB that “automatically
`
`initiating/creating an encrypted/ secure channel” means “initiating/creating the
`
`encrypted/secure channel without involvement of a user.” Ex. 1007, pp. 24-25.
`
`
`
`4 While the Patent Owner has stated its intent to reopen prosecution in that
`
`reexamination, see Ex. 1021 at 40, n. 10, the examiner has to date maintained the
`
`rejections based on the above interpretation of “client computer.” See Ex. 1017, p.
`
`4 (Patent Owner’s Comments in Response to Examiner’s Determination (Mar. 11,
`
`2015)).
`
`
`
`18
`
`

`
`IPR2016-00062
`
`However, as the PTAB has previously pointed out, “the term ‘automatic’ has a
`
`plain and ordinary meaning of ‘marked by action that . . . arises as a really or
`
`apparently necessary reaction to or consequence of a given set of circumstances’ or
`
`‘having a self-acting or self-regulating mechanism.’” Ex. 1011, p. 7, quoting
`
`WEBSTER’S THIRD NEW INT