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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
`v.
`VirnetX, Inc. and Science Application International Corp.,
`Patent Owner.
`
`Patent No. 8,868,705
`Issued: October 21, 2014
`Filed: September 13, 2012
`Inventors: Victor Larson, et al.
`Title: AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS
`USING SECURE DOMAIN NAMES
`
`Patent No. 8,850,009
`Issued: September 30, 2014
`Filed: June 6, 2013
`Inventors: Victor Larson, et al.
`Title: SYSTEM AND METHOD EMPLOYING AN AGILE NETWORK
`PROTOCOL FOR SECURE COMMUNICATIONS USING SECURE DOMAIN
`NAMES
`Inter Partes Review Nos. IPR2015-00810, IPR2015-00811, IPR2015-00812 and
`IPR2015-00813
`
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF ROBERTO TAMASSIA REGARDING U.S. PATENT
`NOS. 8,868,705 AND 8,850,009
`
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1005
`
`
`VIRNETX EXHIBIT 2015
`Apple v. VirnetX
`IPR2016-00332
`
`Page 1 of 183
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`Petition for Inter Partes Review of U.S. Patent Nos. 8,868,705 and 8,850,009
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`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Engagement ........................................................................................... 1
`
`Background and Qualifications ............................................................. 1
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`Compensation and Prior Testimony ...................................................... 3
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`Information Considered ......................................................................... 3
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`II.
`
`LEGAL STANDARDS FOR PATENTABILITY ...................................... 4
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`A. Anticipation ........................................................................................... 6
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`B.
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`Obviousness ........................................................................................... 7
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`III. THE ‘705 AND ‘009 PATENTS ................................................................. 12
`
`A.
`
`Effective Filing Dates .......................................................................... 13
`
`B.
`
`C.
`
`1. Effective Filing Date of the ’705 Patent .......................................13
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`2. Effective Filing Date of the ’009 Patent .......................................15
`
`Overview of The ‘705 and ‘009 Patents ............................................. 17
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`The Prosecution History of The ‘705 and ‘009 Patents ...................... 20
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`1. The ‘705 Patent .............................................................................20
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`2. The ‘009 Patent .............................................................................21
`
`D.
`
`Construction of Terms Used in the ’705 and ’009 Patent Claims ...... 22
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`1. Background on the Broadest Reasonable Interpretation ...............22
`
`2. Broadest Reasonable Interpretation of Terms of the ’705
`Patent .............................................................................................24
`
`a) “intercepting . . . a request” ....................................................24
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`b) “domain name” .......................................................................25
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`c) “secure domain name” ............................................................26
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`d) “provisioning information” ....................................................27
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`e) “modulated transmission link” / “unmodulated transmission
`link” ........................................................................................29
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`2
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`f) “phone” ...................................................................................31
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`3. Broadest Reasonable Interpretation of Terms of the ’009
`Patent .............................................................................................32
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`a) “domain name service (DNS) request” ..................................32
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`b) “interception of the DNS request” .........................................33
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`c) “encrypted communication link” ...........................................33
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`d) “provisioning information” ....................................................35
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`e) “secure communications service” ..........................................35
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`f) “indication” .............................................................................36
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`g) “virtual private network communication link” ......................38
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`h) “domain name” .......................................................................39
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`i) “modulation” ..........................................................................40
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`E.
`
`Level of Ordinary Skill in the Art ....................................................... 40
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`IV. TECHNICAL BACKGROUND ................................................................. 41
`
`A.
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`COMPUTER NETWORKS ................................................................ 41
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`j) The OSI Model .......................................................................41
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`k) The Internet ............................................................................44
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`B.
`
`C.
`
`Internet Protocol Suite (TCP/IP) ......................................................... 45
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`DOMAIN NAME SYSTEM (DNS) ................................................... 47
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`D. NETWORK ENCRYPTION............................................................... 50
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`1. Symmetric Encryption – DES & AES ..........................................51
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`2. Asymmetric Key Encryption – Public/Private Keys ....................52
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`3. Key Exchange ...............................................................................53
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`V.
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`IDENTIFICATION OF THE PRIOR ART.............................................. 56
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Exhibits 1009-1011 – The Aventail References ................................. 56
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`Exhibit 1007 – U.S. Patent 6,496,867 to Beser and Borella ............... 57
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`Request for Comment (RFC) Publications ......................................... 58
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`Exhibit 1008 – RFC 2401 .................................................................... 60
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`Exhibit 1013 – RFC 2543 .................................................................... 60
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`3
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`VI. OVERVIEW OF THE PRIOR ART ......................................................... 61
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`A. Aventail ............................................................................................... 61
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`1. Overview of Aventail Extranet Center .........................................63
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`2. Aventail Connect ...........................................................................66
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`3. Aventail Extranet Server ...............................................................67
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`4. Aventail Extranet VPN .................................................................71
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`5. Types of Communication Supported by Aventail ........................76
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`6. Physical Implementation of the Networks Used by Aventail .......77
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`7. Security and Encryption in Aventail .............................................78
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`a) SOCKS v5 ..............................................................................79
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`b) Authentication Modules .........................................................81
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`8. Aventail Extranet Center – Operation ...........................................84
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`a) Step 1 – DNS Query Interception ..........................................90
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`b) Step 2 – Connection Interception and Setup ..........................98
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`c) Step 3 – Encrypted Channel Communications .....................106
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`9. MultiProxy ..................................................................................107
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`10. Secure Extranet Explorer ............................................................111
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`11. Domains Names of Hosts on the Private Networks
`Protected by an Aventail Extranet Server ...................................114
`
`B.
`
`U.S. Patent No. 6,496,867 to Beser ................................................... 115
`
`1. Overview of Beser .......................................................................115
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`2. Basic Components .......................................................................119
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`d) Originating and Terminating End Devices...........................120
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`e) First and Second Network Devices ......................................122
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`f) Trusted-Third-Party Network Device ..................................125
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`3. IP Tunnel .....................................................................................128
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`4. Establishing an IP Tunnel ...........................................................129
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`g) Request Containing A Unique Identifier ..............................130
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`h) Negotiation of Private IP Addresses ....................................137
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`4
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`C.
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`RFC 2401, the IPsec Protocol ........................................................... 141
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`1. Overview of RFC 2401 ...............................................................141
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`2. Implementing Aventail Using the RFC 2401 Protocol ...............151
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`3. Incorporating RFC 2401 into the Beser System .........................158
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`D. U.S. Patent No. 5,237,566 to Brand (Ex. 1012) ................................ 165
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`1. Overview of Brand ......................................................................165
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`2. Combination of Aventail and Brand ...........................................166
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`3. Combination of Beser and Brand ................................................168
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`E.
`
`RFC 2543, the Session Initiation Protocol ........................................ 169
`
`1. Overview of RFC 2543 ...............................................................169
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`2. Combining Aventail with RFC 2543 ..........................................170
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`F.
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`Additional Prior Art Combinations ................................................... 171
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`1. Incorporating Beser with RFC 2401 with Brand ........................171
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`2. Combining Aventail, RFC 2401, and RFC 2543 ........................172
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`3. Combining Aventail, RFC 2401, and Brand ...............................173
`
`
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`5
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`I.
`
`INTRODUCTION
`
`A. Engagement
`
`1.
`
`I have been retained by counsel for Apple Inc. as an expert witness in
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`the above-captioned proceeding. I have been asked to provide an opinion
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`regarding the state of the art of the technology described in U.S. Patent Nos.
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`8,868,705 (“the ‘705 Patent”) (Exhibit 1001) and 8,850,009 (“the ‘009 Patent”)
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`(Exhibit 1003). I have been asked to provide a description of various references
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`that I understand are prior art to these patents and to provide a discussion of the
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`meaning of certain words and phrases in the claims of these patents.
`
`B.
`
`2.
`
`Background and Qualifications
`
`I am the Plastech Professor of Computer Science at Brown University.
`
`My research interests include computer security, applied cryptography, analysis,
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`design, and implementation of algorithms, graph drawing and computational
`
`geometry. I have published six textbooks and more than 240 peer-reviewed
`
`research articles in the above areas. I have given more than 70 invited lectures
`
`worldwide. I am a fellow of ACM, AAAS, and IEEE. I have received a Technical
`
`Achievement Award from the IEEE Computer. I am listed among the 360 most
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`cited computer science authors worldwide by Thomson Scientific, Institute for
`
`Scientific Information (ISI). My research has been funded by ARO, DARPA,
`
`NATO, NSF, and several industrial sponsors (including Google, Microsoft,
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`1
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`NetApp, and Sun Microsystems). I received my Ph.D. degree in electrical and
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`computer engineering from the University of Illinois at Urbana-Champaign in
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`1988.
`
`3.
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`I have extensive research and educational experience in computer and
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`network security. I have developed and taught graduate and undergraduate
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`computer security courses at Brown. I have coauthored a widely adopted textbook
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`on computer security that includes two chapters (over one hundred pages) on
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`network security, covering topics such as network layers, TCP/IP, DNS, firewalls,
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`tunneling, and IPsec, wireless networks, and virtual private networks.
`
`4. My research spans a broad range of topics in security and privacy,
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`including cryptographic foundations, access control, authentication, data security
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`and privacy, network security, email and web security, database security,
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`application security, cloud computing security, and the visualization of security.
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`Also, I have been an early developer of distributed systems that provide client-
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`server applications over the internet.
`
`5.
`
`I am often invited by the National Science Foundation to evaluate
`
`grant proposals on computer and network security. I am also regularly asked by my
`
`university and by peer institutions to give an opinion on the research in computer
`
`and network security by faculty candidates considered for hiring, tenure and
`
`2
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`promotion. Finally, I am routinely serving in the program committees of highly
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`selective international conferences in computer and network security.
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`6. My CV is included as an appendix to this report.
`
`C. Compensation and Prior Testimony
`
`7.
`
`I am being compensated at a rate of $500 per hour for my work in this
`
`matter. I am being reimbursed for reasonable and customary expenses associated
`
`with my work in this investigation. My compensation is not contingent on the
`
`outcome of this matter or the specifics of my testimony.
`
`8. Within the last five years, I have testified by deposition in the matter
`
`of Dustan et al. v. comScore, Inc., a software privacy case where I served as an
`
`expert witness for comScore, Inc.,
`
`D.
`
`Information Considered
`
`9. My opinions are based on my years of education, research, and
`
`experience, as well as my investigation and study of relevant materials. In forming
`
`my opinions, I have considered the materials I identify in this report and those
`
`listed in Appendix A.
`
`10.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by the Patent Owner. I may also consider additional
`
`documents and information in forming any necessary opinions — including
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`documents that may not yet have been provided to me.
`
`3
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`11. My analysis of the materials produced in this investigation is ongoing,
`
`and I will continue to review any new material as it is provided. This report
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information
`
`and on my continuing analysis of the materials already provided.
`
`II. LEGAL STANDARDS FOR PATENTABILITY
`
`12. Certain basic legal principles have been explained to me by counsel
`
`for Apple. Below, I have recorded these legal standards as they were explained to
`
`me.
`
`13. First, I understand that for an invention claimed in a patent to be
`
`found patentable, it must be, among other things, new and not obvious from what
`
`was known before the invention was made.
`
`14.
`
`I understand the information that is used to evaluate whether an
`
`invention is new and not obvious is generally referred to as “prior art” and
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`generally includes patents and printed publications (e.g., books, journal
`
`publications, articles on websites, product manuals, etc.).
`
`15.
`
`I understand that in this proceeding Apple has the burden of proving
`
`that the claims of the ‘705 and ‘009 Patents are anticipated by or obvious from the
`
`prior art by a preponderance of the evidence. I understand that “a preponderance
`
`4
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`of the evidence” is evidence sufficient to show that a fact is more likely true than it
`
`is not.
`
`16. As I discuss further in the claim construction section below, I
`
`understand that the claims of the ‘705 and ‘009 Patents must be given their
`
`broadest reasonable construction consistent with the patent specification.
`
`However, I also understand that it is possible that the ‘705 Patent will expire before
`
`the Board in these proceedings issues a final decision, in which case I understand
`
`that it is possible the Board may apply the Phillips standard of claim construction
`
`in that final decision. For this reason, I provide my understanding of that claim
`
`construction standard below. I understand that the claims, after being construed,
`
`are then to be compared to the information in the prior art.
`
`17.
`
`I understand that in this proceeding, the information that may be
`
`evaluated is limited to patents and printed publications.
`
`18.
`
`I understand that there are two ways in which prior art may render a
`
`patent claim unpatentable. First, the prior art can be shown to “anticipate” the
`
`claim. Second, the prior art can be shown to have made the claim “obvious” to a
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`person of ordinary skill in the art. My understanding of the two legal standards is
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`set forth below.
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`5
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`A. Anticipation
`
`19.
`
`I understand that the following standards govern the determination of
`
`whether a patent claim is “anticipated” by the prior art.
`
`20.
`
`I understand that the “prior art” includes patents and printed
`
`publications that existed before the earliest filing date (the “effective filing date”)
`
`of the claim in the patent. I also understand that a patent will be prior art if it was
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`filed before the effective filing date of the claimed invention, while a printed
`
`publication will be prior art if it was publicly available before that date.
`
`21.
`
`I understand that, for a patent claim to be “anticipated” by the prior
`
`art, each and every requirement of the claim must be found, expressly or
`
`inherently, in a single prior art reference as recited in the claim. I understand that
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`claim limitations that are not expressly described in a prior art reference may still
`
`be there if they are “inherent” to the thing or process being described in the prior
`
`art. For example, an indication in a prior art reference that a particular process
`
`complies with a published standard would indicate that the process must inherently
`
`perform certain steps or use certain data structures that are necessary to comply
`
`with the published standard.
`
`22.
`
`I understand that if a reference incorporates other documents by
`
`reference, the incorporating reference and the incorporated reference(s) should be
`
`treated as a single prior art reference for purposes of analyzing anticipation.
`
`6
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`23.
`
`I understand that it is acceptable to consider evidence other than the
`
`information in a particular prior art document to determine if a feature is
`
`necessarily present in or inherently described by that reference.
`
`B. Obviousness
`
`24.
`
`I understand that a claimed invention is not patentable if it would have
`
`been obvious to a person of ordinary skill in the field of the invention at the time
`
`the invention was made.
`
`25.
`
`I understand that the obviousness standard is defined in the patent
`
`statute (35 U.S.C. § 103(a)) as follows:
`
`26. A patent may not be obtained though the invention is not identically
`
`disclosed or described as set forth in section 102 of this title, if the differences
`
`between the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which said subject matter
`
`pertains. Patentability shall not be negatived by the manner in which the invention
`
`was made.
`
`27.
`
`I understand that the following standards govern the determination of
`
`whether a claim in a patent is obvious.
`
`28.
`
`I understand that to find a claim in a patent obvious, one must make
`
`certain findings regarding the claimed invention and the prior art. Specifically, I
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`understand that the obviousness question requires consideration of four factors
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`(although not necessarily in the following order):
`
` The scope and content of the prior art;
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` The differences between the prior art and the claims at issue;
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` The knowledge of a person of ordinary skill in the pertinent art; and
`
` Whatever objective factors indicating obviousness or non-obviousness
`
`may be present in any particular case.
`
`29.
`
`In addition, I understand that the obviousness inquiry should not be
`
`done in hindsight, but must be done using the perspective of a person of ordinary
`
`skill in the relevant art as of the effective filing date of the patent claim.
`
`30.
`
`I understand the objective factors indicating obviousness or non-
`
`obviousness may include: commercial success of products covered by the patent
`
`claims; a long-felt need for the invention; failed attempts by others to make the
`
`invention; copying of the invention by others in the field; unexpected results
`
`achieved by the invention; praise of the invention by those in the field; the taking
`
`of licenses under the patent by others; expressions of surprise by experts and those
`
`skilled in the art at the making of the invention; and the patentee proceeded
`
`contrary to the accepted wisdom of the prior art. I also understand that any of this
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`evidence must be specifically connected to the invention rather than being
`
`associated with the prior art or with marketing or other efforts to promote an
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`invention. I am not presently aware of any evidence of “objective factors”
`
`8
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`suggesting the claimed methods are not obvious, and reserve my right to address
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`any such evidence if it is identified in the future.
`
`31.
`
`I understand the combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable results.
`
`I also understand that an example of a solution in one field of endeavor may make
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`that solution obvious in another related field. I also understand that market
`
`demands or design considerations may prompt variations of a prior art system or
`
`process, either in the same field or a different one, and that these variations will
`
`ordinarily be considered obvious variations of what has been described in the prior
`
`art.
`
`32.
`
`I also understand that if a person of ordinary skill can implement a
`
`predictable variation, that variation would have been considered obvious. I
`
`understand that for similar reasons, if a technique has been used to improve one
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`device, and a person of ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way, using that technique to improve the other
`
`device would have been obvious unless its actual application yielded unexpected
`
`results or challenges in implementation.
`
`33.
`
`I understand that the obviousness analysis need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, but
`
`instead can take account of the “ordinary innovation” and experimentation that
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`does no more than yield predictable results, which are inferences and creative steps
`
`that a person of ordinary skill in the art would employ.
`
`34.
`
`I understand that sometimes it will be necessary to look to interrelated
`
`teachings of multiple patents; the effects of demands known to the design
`
`community or present in the marketplace; and the background knowledge
`
`possessed by a person having ordinary skill in the art. I understand that all these
`
`issues may be considered to determine whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue.
`
`35.
`
`I understand that the obviousness analysis cannot be confined by a
`
`formalistic conception of the words “teaching, suggestion, and motivation.” I
`
`understand that in 2007, the Supreme Court issued its decision in KSR Int'l Co. v.
`
`Teleflex, Inc., 550 U.S. 398 (2007), where the Court rejected the previous
`
`requirement of a “teaching, suggestion, or motivation to combine” known elements
`
`of prior art for purposes of an obviousness analysis as a precondition for finding
`
`obviousness. It is my understanding that KSR confirms that any motivation that
`
`would have been known to a person of skill in the art, including common sense, or
`
`derived from the nature of the problem to be solved, is sufficient to explain why
`
`references would have been combined.
`
`36.
`
`I understand that a person of ordinary skill attempting to solve a
`
`problem will not be led only to those elements of prior art designed to solve the
`
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`same problem. I understand that under the KSR standard, steps suggested by
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`common sense are important and should be considered. Common sense teaches
`
`that familiar items may have obvious uses beyond the particular application being
`
`described in a reference, that if something can be done once it is obvious to do it
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`multiple times, and in many cases a person of ordinary skill will be able to fit the
`
`teachings of multiple patents together like pieces of a puzzle. As such, the prior art
`
`considered can be directed to any need or problem known in the field of endeavor
`
`as of the effective filing date and can provide a reason for combining the elements
`
`of the prior art in the manner claimed. In other words, the prior art does not need
`
`to be directed towards solving the same problem that is addressed in the patent.
`
`Further, the individual prior art references themselves need not all be directed
`
`towards solving the same problem.
`
`37.
`
`I understand that an invention that might be considered an obvious
`
`variation or modification of the prior art may be considered non-obvious if one or
`
`more prior art references discourages or leads away from the line of inquiry
`
`disclosed in the reference(s). A reference does not “teach away” from an invention
`
`simply because the reference suggests that another embodiment of the invention is
`
`better or preferred. My understanding of the doctrine of teaching away requires a
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`clear indication that the combination should not be attempted (e.g., because it
`
`would not work or explicit statements saying the combination should not be made).
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`11
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`Petition for Inter Partes Review of U.S. Patent Nos. 8,868,705 and 8,850,009
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`38.
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`I understand that a person of ordinary skill is also a person of ordinary
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`creativity.
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`39.
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`I further understand that in many fields, it may be that there is little
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`discussion of obvious techniques or combinations, and it often may be the case that
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`market demand, rather than scientific literature or knowledge, will drive design
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`trends. When there is such a design need or market pressure to solve a problem
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`and there are a finite number of identified, predictable solutions, a person of
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`ordinary skill has good reason to pursue the known options within their technical
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`grasp. If this leads to the anticipated success, it is likely the product not of
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`innovation but of ordinary skill and common sense. In that instance the fact that a
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`combination was obvious to try might show that it was obvious. The fact that a
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`particular combination of prior art elements was “obvious to try” may indicate that
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`the combination was obvious even if no one attempted the combination. If the
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`combination was obvious to try (regardless of whether it was actually tried) or
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`leads to anticipated success, then it is likely the result of ordinary skill and
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`common sense rather than innovation.
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`III. THE ‘705 AND ‘009 PATENTS
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`Petition for Inter Partes Review of U.S. Patent Nos. 8,868,705 and 8,850,009
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`A. Effective Filing Dates
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`1.
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`Effective Filing Date of the ’705 Patent
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`40.
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`I have been informed that the ’705 Patent issued from U.S.
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`Application No. 13/615,557, which was filed on September 13, 2012. I have
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`further been informed that the ’557 application is a continuation of Application No.
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`13/049,552 (issued as U.S. Patent No. 8,572,247), which is a continuation of
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`Application No. 11/840,560 (issued as U.S. Patent No. 7,921,211), which is a
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`continuation of Application No. 10/714,849 (issued as U.S. Patent No. 7,418,504),
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`which is a continuation of Application No. 09/558,210, filed April 26, 2000, and
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`now abandoned, which is a continuation-in-part of Application No. of 09/504,783,
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`filed on February 15, 2000 (issued as U.S. Patent No. 6,502,135), which is a
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`continuation-in-part of Application No. 09/429,643, filed on October 29, 1999
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`(issued as U.S. Patent No. 7,010,604). The ’210, ’783 and ’643 applications also
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`claim priority to 60/106,261, filed October 30, 1998 and 60/137,704, filed June 7,
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`1998.
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`41. Based on my review of these applications, I believe the two
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`independent claims of the ‘705 patent (claims 1 and 21) rely on information that
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`was first included in the ’783 application. I therefore understand that the priority
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`date for these claims is the date that application was filed, namely: February 15,
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`2000. Because all of the other claims in the patent are dependent claims that rely
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`Petition for Inter Partes Review of U.S. Patent Nos. 8,868,705 and 8,850,009
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`on claims 1 and 21, and because I have been informed that a patent claim cannot
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`claim an earlier priority date than a claim from which that claim “depends,” it is
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`my understanding that the priority date for all of the claims of the ‘705 patent is
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`February 15, 2000.
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`42. For example, I note that claim 1 of the ’705 patent requires
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`“intercepting … a request to look up an Internet Protocol (IP) address
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`corresponding to a domain name,” while claim 21 specifies “[a] system …
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`including … a server configuration arranged to: intercept … a request to look up
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`an Internet Protocol (IP) address corresponding to a domain name … .” Based on
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`my review of the documents, no application filed prior to the ’783 application
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`mentions the term “domain name” or otherwise provides a description of the
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`techniques that appear in the ’705 patent claims.
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`43.
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`I also have been informed (and reviewed documents that show that) in
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`proceedings involving related patents (the ’135, ’504, ’151, ’211, ’274 and ’697
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`patents), the Patent Owner has not disputed that claims including the words
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`“domain name” have an effective filing date of at least February 15, 2000. See,
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`e.g., Patent Owner Preliminary Oppositions in IPR2013-00348, -00349, -00354, -
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`00375 to -00378, -00393, -00394, -00397, and -00398, as well as IPR2014-00237,
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`-00238, -00403, -00404, and -00610; see also Inter Partes Reexamination Nos.
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`95/001,682, 95/001,679, 95/001,697, 95/001,714, 95/001,788, and 95/001,789.
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`44. Thus, the effective filing date of the ’705 patent claims is not earlier
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`than February 15, 2000.