IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`U.S. Patent No.: 7,490,151
`
`
`
`In re Patent of: Munger et al.
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`
`
`
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`Attorney Docket No. 213.7000-00000
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`
`Issue Date: February 10, 2009
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`
`
`Appl. Serial No.: 10/259,494
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`
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`Filing Date: September 30, 2002
`
`
`
`Title: ESTABLISHMENT OF A SECURE COMMUNICATION LINK BASED
`ON A DOMAIN NAME SERVICE (DNS) REQUEST
`
`
`
`Mail Stop Patent Board
`
`Patent Trial and Appeal Board
`
`U.S. Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`
`UNITED STATES PATENT NO. 7,490,151
`
`VirnetX Exhibit 2019
`Black Swamp IP, LLC v. VirnetX Inc.
`IPR2016-00693
`
`Page 1 of 32
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`Attorney Docket No. 213.7000-00000
`IPR of U.S. Patent No. 7,490,151
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`TABLE OF CONTENTS
`
`
`
`Contents
`
`I.
`
`MANDATORY NOTICES IN ACCORDANCE WITH 37 C.F.R.
`§ 42.8(a)(1). .................................................................................................... 1
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1). .............................. 1
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2). ....................................... 2
`C. Lead And Back-Up Counsel under 37 C.F.R. § 42.8(b)(3). .................... 3
`D. Service Information. ................................................................................ 3
`
`II.
`
`FEE PAYMENT – 37 C.F.R. § 42.103. ......................................................... 3
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104. ......................................................................................................... 4
`A. Standing of Petitioner under 37 C.F.R. § 42.104(a). ............................... 4
`B. Identification of Challenge under 37 C.F.R. § 42.104(b) and Relief
`Requested. ............................................................................................... 4
`C. Claim Construction under 37 C.F.R. § 42.100(b). .................................. 5
`
`IV. SUMMARY OF THE ‘151 PATENT. ........................................................... 9
`A. Disclosure of the ‘151 Patent. ................................................................. 9
`B. Effective Filing Date of the ‘151 Patent. ................................................ 9
`
`V. A REASONABLE LIKELIHOOD AT LEAST ONE CLAIM OF THE ‘151
`PATENT FOR WHICH INTER PARTES REVIEW IS REQUESTED IS
`UNPATENTABLE. .....................................................................................11
`A. Anticipation of Claims 1, 2, 6-8, and 12-14 based on Kiuchi
`(Ground 1). ............................................................................................11
`B. Claims 1, 2, 6-8, and 12-14 are obvious based on Kiuchi in view of
`Rescorla (1996) (Ground 2). .................................................................25
`
`VI. CONCLUSION ............................................................................................27
`
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`Attorney Docket No. 213.7000-00000
`IPR of U.S. Patent No. 7,490,151
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`
`
`Statutes
`35 U.S.C. § 102(b) .......................................................................... 4, 5, 9, 10, 23, 24
`35 U.S.C. § 103(a) ...................................................................................................24
`
`Regulations
`37 C.F.R. § 42.8(a)(1) ................................................................................................ 1
`37 C.F.R. § 42.103 ..................................................................................................... 3
`37 C.F.R. § 42.104 ..................................................................................................... 3
`37 C.F.R. § 42.104(a) ................................................................................................. 3
`37 C.F.R. § 42.104(b) ................................................................................................. 4
`37 C.F.R. § 42.100(b) ................................................................................................. 5
`37 C.F.R. § 42.108(c) ...............................................................................................25
`37 C.F.R. § 42.15(a) ................................................................................................... 3
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 1
`37 C.F.R. § 42.8(b)(2) ................................................................................................ 2
`37 C.F.R. § 42.8(b)(3) ................................................................................................ 3
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`ii
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`Attorney Docket No. 213.7000-00000
`IPR of U.S. Patent No. 7,490,151
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`EXHIBITS
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`
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`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`U.S. Patent No. 7,490,151 to Munger et al. (“the ‘151 patent”).
`
`Institution Decision dated October 15, 2014 in IPR2014-00610.
`
`Institution Decision dated October 7, 2015 in IPR2015-01047.
`
`Takahiro Kiuchi and Shigekoto Kaihara, “C-HTTP – The
`Development of a Secure, Closed HTTP-based Network on the
`Internet,” published by IEEE in the Proceedings of SNDSS 1996
`(“Kiuchi”).
`
`Rescorla, E., et al., “The Secure HyperText Transfer Protocol,”
`Internet Draft by the Internet Engineering Task Force (IETF) as part
`of the development of RFC 2660, February 1996 (“Rescorla (1996)”).
`
`IPR2013-00354, Patent Owner’s Preliminary Response.
`
`Webster’s Third New International Dictionary (1971).
`
`
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`iii
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`Page 4 of 32
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`Attorney Docket No. 213.7000-00000
`IPR of U.S. Patent No. 7,490,151
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`
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`The present Petition for Inter Partes Review is directed to claims 1, 2, 6-8,
`
`and 12-14 of U.S. Patent No. 7,490,151 (“’151 patent”) (Ex. 1001).
`
`For the below-discussed reasons, Petitioner requests that the Board find
`
`unpatentable (and thereby cancel) claims 1, 2, 6-8, and 12-14 of the ‘151 patent.
`
`The substance of Ground 1 presented herein is identical to that of Ground 1
`
`presented in both IPR2014-00610 and IPR2015-01047. Furthermore, there is
`
`substantial overlap between Ground 2 presented herein and Ground 2 presented in
`
`IPR2014-00610. IPR2014-00610 was instituted by the Board with respect to
`
`Grounds 1 and 2 thereof, and subsequently was terminated by the Board due to
`
`settlement of the parties. Furthermore, IPR2015-01047 was instituted, and it is
`
`presently pending before the Board. The Institution Decision in IPR2014-00610 is
`
`attached as Ex. 1002, and the Institution Decision IPR2015-01047 is attached as
`
`Ex. 1003.
`
`For similar reasons, Petitioner requests that Grounds 1 and 2 presented
`
`herein be instituted by the Board.
`
`I. MANDATORY NOTICES IN ACCORDANCE WITH 37 C.F.R.
`§ 42.8(a)(1).
`
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1).
`
`Petitioner, Black Swamp IP, LLC, is the real party-in-interest. Black
`
`Swamp IP, LLC is a member-run LLC. The members are Stoneledge Trust and
`
`
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`1
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`Attorney Docket No. 213.7000-00000
`IPR of U.S. Patent No. 7,490,151
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`Rockwood Trust. David B. Colon is the sole trustee of the Stoneledge Trust, and
`
`John W. McMahon is the sole trustee of the Rockwood Trust.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2).
`
`The ‘151 patent is the subject of a number of civil actions including:
`
`(1) Civ. Act. No. 6:13-cv-00211-LED (E.D. Tex.);
`
`(2) Civ. Act. No. 6:12-cv-00855- LED (E.D. Tex.);
`
`(3) Civ. Act. No. 6:10-cv-00417-LED (E.D. Tex.); and
`
`(4) Civ. Act. No. 6:13-cv-00351-LED (E.D. Tex).
`
`The ’151 patent is also the subject of merged inter partes reexamination nos.
`
`95/001,697 and 95/001,714. The Office issued an Action Closing Prosecution on
`
`September 22, 2015 in the merged proceedings rejecting all 16 claims of the ’151
`
`patent. In pertinent part, the Office has rejected independent claims 1, 7, and 13 as
`
`being anticipated based on Ex. 1004 (Kiuchi).
`
`The ‘151 patent is also the subject of the following petitions for inter partes
`
`review:
`
`(1) IPR2013-00354 filed by Petitioner Apple Inc. – not instituted;
`
`(2) IPR2013-00376 filed by Petitioner New Bay Capital, LLC – terminated
`
`prior to institution;
`
`(3) IPR2014-00173 filed by Petitioner RPX Corp. – not instituted;
`
`
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`2
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`Attorney Docket No. 213.7000-00000
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`(4) IPR2014-00610 filed by Petitioner Microsoft Corp. – instituted and
`
`settled;
`
`(5) IPR2015-00187 filed by Petitioner Apple Inc. – not instituted;
`
`(6) IPR2015-01047 filed by Petitioner The Mangrove Partners Master Fund,
`
`Ltd. – instituted; and
`
`(7) IPR2016-00063 filed by Apple Inc. – pending.
`
`C. Lead And Back-Up Counsel under 37 C.F.R. § 42.8(b)(3).
`
`Petitioner provides the following designation of counsel:
`
`
`
`
`
`LEAD COUNSEL
`Thomas H. Martin
`USPTO Registration No. 34,383
`Telephone Number: (330) 877-0700
`MARTIN & FERRARO, LLP
`1557 Lake O’Pines Street, NE
`Hartville, Ohio 44632
`
`D. Service Information.
`
`BACK-UP COUNSEL
`Wesley C. Meinerding
`USPTO Registration No. 57,925
`Telephone Number: (330) 877-0700
`MARTIN & FERRARO, LLP
`1557 Lake O’Pines Street, NE
`Hartville, Ohio 44632
`
`Please address all correspondence and service to counsel at the address
`
`provided in Section I(C). Black Swamp IP, LLC agrees to service by email at
`
`tmartin@martinferraro.com and docketing@martinferraro.com.
`
`II. FEE PAYMENT – 37 C.F.R. § 42.103.
`
`The USPTO is authorized to charge Deposit Account No. 50-1068 for the fee
`
`set in 37 C.F.R. § 42.15(a) for this Petition, and the USPTO is also authorized to
`
`charge this Deposit Account for any additional fees.
`
`
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`3
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`Attorney Docket No. 213.7000-00000
`IPR of U.S. Patent No. 7,490,151
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`
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`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104.
`
`A. Standing of Petitioner under 37 C.F.R. § 42.104(a).
`
`Petitioner certifies that the ‘151 patent is eligible for inter partes review.
`
`Petitioner also certifies that it is not barred or estopped from requesting inter partes
`
`review challenging the above-identified claims of the ‘151 patent.
`
`B. Identification of Challenge under 37 C.F.R. § 42.104(b) and Relief
`Requested.
`
`Petitioner requests that claims 1, 2, 6-8, and 12-14 be found unpatentable
`
`(and thereby cancelled) in view of Grounds 1 and 2 presented below. At the very
`
`least, Grounds 1 and 2 articulate where each and every element of claims 1, 2, 6-8,
`
`and 12-14 is found in the cited references.
`
`Ground of
`Rejection
`
`Claims of ‘151 Patent
`
`Rejection
`
`Ground 1
`
`1, 2, 6-8, and 12-14
`
`§ 102 rejection based on Kiuchi
`
`Ground 2
`
`1, 2, 6-8, and 12-14
`
`§ 103 rejection based on Kiuchi in view of
`Rescorla (1996)
`
`
`
`As discussed below, the effective filing date of claims 1, 2, 6-8, and 12-14 of
`
`the ‘151 patent is not earlier than February 15, 2000.
`
`Kiuchi (Ex. 1004) is prior art under 35 U.S.C. § 102(b). Kiuchi (Ex. 1004)
`
`qualifies as a printed publication due to its presentation at the 1996 Symposium on
`
`
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`4
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`Attorney Docket No. 213.7000-00000
`IPR of U.S. Patent No. 7,490,151
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`
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`Network and Distributed System Security (SNDSS) on February 22 & 23, 1996,
`
`and its publication by IEEE in the Proceedings of SNDSS 1996.
`
`Rescorla (1996)1 (Ex. 1005) is prior art under 35 U.S.C. § 102(b). Rescorla
`
`(1996) (Ex. 1005) is an Internet Draft by the Internet Engineering Task Force
`
`(IETF) as part of the development of RFC 2660, and Rescorla (1996) qualifies as a
`
`printed publication due to its publication in February 1996 by IETF.
`
`C. Claim Construction under 37 C.F.R. § 42.100(b).
`
`According to 37 C.F.R. § 42.100(b), a claim subject to inter partes review is
`
`given its “broadest reasonable construction in light of the specification of the
`
`patent in which it appears.” As discussed below, Petitioner submits the following
`
`
`1 To avoid confusion, Petitioner notes that Rescorla (1996) has been referred to by
`
`the Board as “RFC 2660” in IPR2014 00610, but “RFC 2660” has also been used
`
`by the Board in IPR2015-01047 in referring to E. Rescorla and A. Schiffman, “The
`
`Secure HyperText Transfer Protocol,” Enterprise Integration Technologies (1999)
`
`(“Rescorla (1999)”). It is noted that the Board instituted based on rejections
`
`relying on Rescorla (1996) in IPR2014-00610. Furthermore, it is noted that in
`
`IPR2015-01047, the ‘047 Petitioner requested institution based on rejections
`
`relying on Rescorla (1996), but the Board instituted based on rejections relying on
`
`Rescorla (1999).
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`5
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`Attorney Docket No. 213.7000-00000
`IPR of U.S. Patent No. 7,490,151
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`
`
`constructions for the following terms. Furthermore, Petitioner submits that the
`
`remaining terms should be given their plain meaning.
`
`1. Meaning of Term “DNS Request.”
`
`The Patent Owner previously has asserted in IPR2013-00354 that a “DNS
`
`request” means “a request for a resource corresponding to a domain name.” (Ex.
`
`1006 at pages 28 and 29.) Petitioner notes that the Board preliminarily adopted
`
`this same meaning for the “DNS request” in the Institution Decision in IPR2014-
`
`00610 (Ex. 1002) at page 6. In light of the broadest reasonable construction
`
`standard applicable to inter partes reviews, Petitioner agrees with the Board’s
`
`construction from IPR2014-00610.
`
`2. Meaning of Term “Secure Server.”
`
`The Patent Owner previously has asserted in IPR2013-00354 that a “secure
`
`server” means “a server that requires authorization for access and that can
`
`communicate in an encrypted channel.” (Ex. 1006 at page 39.) Petitioner notes
`
`that the Board preliminarily adopted a different meaning for “secure server” in the
`
`Institution Decision in IPR2014-00610. According to the Board, “secure server”
`
`means “a server that communicates over a transmission path that restricts access to
`
`data or other information on the path.” (Institution Decision in IPR2014-00610
`
`(Ex. 1002) at page 7.) In light of the broadest reasonable construction standard
`
`
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`6
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`Attorney Docket No. 213.7000-00000
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`applicable to inter partes reviews, Petitioner agrees with the Board’s construction
`
`from IPR2014-00610.
`
`3. Meaning of Term “Automatically Initiating/Creating.”
`
`The Patent Owner previously has asserted in IPR2013-00354 that
`
`automatically initiating/creating an encrypted/secure channel means
`
`“initiating/creating the secure/encrypted channel without involvement of a user.”
`
`(Ex. 1006 at page 41.) As such, the Patent Owner asserted that “automatically”
`
`means “without involvement of a user.” Petitioner notes that the Board
`
`preliminarily adopted a different meaning for “automatically” in the Institution
`
`Decision in IPR2014-00610. The Board recognized that the specification of the
`
`‘151 patent “appears to disclose at least one embodiment of ‘automatically’
`
`initiating a channel in which a user is ‘involved.’” (Institution Decision in
`
`IPR2014-00610 (Ex. 1002) at page 6.) Furthermore, citing to Webster’s Third
`
`New International Dictionary 148 (1971) (Ex. 1007), the Board noted that “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.’” According to the Board, “automatically” means “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.”
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`Attorney Docket No. 213.7000-00000
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`(Institution Decision in IPR2014-00610 (Ex. 1002) at page 7.) Petitioner agrees
`
`with the Board’s construction from IPR2014-00610.
`
`4. Meaning of Term “Client.”
`
`The Patent Owner previously has asserted in IPR2013-00354 that “client”
`
`means a “user’s computer.” (Ex. 1006 at page 42.) Petitioner notes that the Board
`
`preliminarily adopted a different meaning for “client” in the Institution Decision in
`
`IPR2014-00610. According to the Board, “client” means “a device, computer,
`
`system, or program from which a data request to a server is generated.”
`
`(Institution Decision in IPR2014-00610 (Ex. 1002) at page 8.) In light of the
`
`broadest reasonable construction standard applicable to inter partes reviews,
`
`Petitioner agrees with the Board’s construction from IPR2014-00610.
`
`5. Meaning of Term “Between.”
`
`According to the Board, “between” should be given its plain and customary
`
`meaning. (Institution Decision in IPR2014-00610 (Ex. 1002) at page 8.) As such,
`
`citing to Webster’s Third New International Dictionary 209 (1971) (Ex. 1007), the
`
`Board noted that the term “between” has a plain and ordinary meaning of “in the
`
`space that separates.” Petitioner agrees with the Board’s construction from
`
`IPR2014-00610.
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`Attorney Docket No. 213.7000-00000
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`6. Meaning of Term “Domain Name.”
`
`The Patent Owner previously has asserted in IPR2013-00354 that a “domain
`
`name” means “a name corresponding to a network address.” (Ex. 1006 at pages 29
`
`and 30.) In light of the broadest reasonable construction standard applicable to
`
`inter partes reviews, Petitioner agrees that the term “domain name” should be
`
`construed to mean “a name corresponding to a network address.”
`
`IV. SUMMARY OF THE ‘151 PATENT.
`
`A. Disclosure of the ‘151 Patent.
`
`The ‘151 patent generally describes a system and method for securely
`
`communicating over the Internet. (Ex. 1001 at 3:8.) A Domain Name Server
`
`(“DNS”) provides a look-up function that returns the IP address of a requested
`
`computer or host. (Ex. 1001 at 36:61-63.) A user sends a request to the DNS to
`
`look up the IP address associated with a name of a destination host. (Ex. 1001 at
`
`37:4-7.) The DNS returns the IP address to the client, which is then able to use the
`
`IP address to communicate with the host. (Ex. 1001 at 37:6-9.)
`
`The ‘151 patent includes 16 claims including independent claims 1, 7, and
`
`13.
`
`B. Effective Filing Date of the ‘151 Patent.
`
`U.S. 7,490,151 issued on February 10, 2009 based on U.S. Serial No.
`
`10/259,494 (“the ‘494 application”). The ‘494 application was filed on September
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`Attorney Docket No. 213.7000-00000
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`30, 2002 a divisional application of U.S. Serial No. 09/504,783 (“the ’783
`
`application”), now U.S. Patent No. 6,502,135. The ‘783 application was filed
`
`February 15, 2000 as a continuation-in-part application of U.S. Serial No.
`
`09/429,643 (“the ‘643 application”), now U.S. Patent No. 7,010,604. Each of the
`
`‘494, ‘783, and ‘643 applications claim priority to Provisional Application Nos.
`
`60/106,261 (filed October 30, 1998) and 60/137,704 (filed June 7, 1999).
`
`Therefore, the earliest potential priority date of the ‘151 patent is October 30,
`
`1998. Each of the below-discussed references (i.e., Kiuchi and Rescorla (1996))
`
`are printed publications under 35 U.S.C. § 102(b) with respect to the earliest
`
`potential priority date of the ‘151 patent.
`
`However, the ‘151 patent is not entitled to the earliest potential priority date.
`
`Independent claim 1 of the ’151 patent recites “determining whether the
`
`intercepted DNS request corresponds to a secure server,” and additional recitations
`
`refer to the “DNS request.” In similar fashion, independent claims 7 and 13 also
`
`include recitations involving a “DNS request.” The ‘783 application is the first
`
`application in chain of priority of the ‘151 patent that includes the term “DNS.”
`
`As discussed above, the ‘783 application is a continuation-in-part application.
`
`Because the earlier applications do not disclose DNS requests, the earlier
`
`applications do not disclose or enable the recitations of independent claims 1, 7,
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`Attorney Docket No. 213.7000-00000
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`and 13 referencing the “DNS request.” As such, the earliest effective filing date of
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`the ‘151 patent is the filing date of the ‘783 application, i.e., February 15, 2000.
`
`V. A REASONABLE LIKELIHOOD AT LEAST ONE CLAIM OF THE
`‘151 PATENT FOR WHICH INTER PARTES REVIEW IS
`REQUESTED IS UNPATENTABLE.
`
`A. Anticipation of Claims 1, 2, 6-8, and 12-14 based on Kiuchi (Ground 1).
`
`Kiuchi (Ex. 1004) is a printed publication under 35 U.S.C. § 102(b). Kiuchi
`
`was presented at the 1996 Symposium on Network and Distributed System
`
`Security (SNDSS) on February 22 & 23, 1996, and published by IEEE in the
`
`Proceedings of SNDSS 1996. Kiuchi is therefore prior art to the ‘151 patent under
`
`§ 102(b) based on the earliest potential priority date of the ‘151 patent, i.e.,
`
`October 30, 1998.
`
`1.
`
`Discussion of Kiuchi.
`
`Kiuchi discloses a closed HTTP-based network (“C-HTTP”) for a closed
`
`group of institutions, in which each member is protected by its own firewall.
`
`(Kiuchi (Ex. 1004) at page 64.) Communication is made possible with a client-
`
`side proxy (for one institution), a server-side proxy (for another institution), and a
`
`C-HTTP name server that provides both client-side and server-side proxies with
`
`each peer’s public key and Nonce values for both request and response. (Kiuchi
`
`(Ex. 1004) at pages 64 and 65.)
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`Attorney Docket No. 213.7000-00000
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`The client-side proxy asks the C-HTTP name server whether it can
`
`communicate with the host specified in a given URL. If the connection is
`
`permitted, the C-HTTP name server sends the IP address and public key of the
`
`server-side proxy and both request and response Nonce values, which are
`
`encrypted and certified using asymmetric key encryption and digital signature
`
`technology. (Kiuchi (Ex. 1004) at page 65.)
`
`The client-side proxy then sends an encrypted request (including the client-
`
`side proxy’s IP address, hostname, request Nonce value, and symmetric data
`
`exchange key for request encryption) to the server-side proxy, which then asks the
`
`C-HTTP name server if the query from the client-side proxy is legitimate. (Kiuchi
`
`(Ex. 1004) at page 65.) If the request is confirmed to be legitimate and access is
`
`permitted, the C-HTTP name server sends the IP address and public key of the
`
`client-side proxy and both request and response Nonce values to the server-side
`
`proxy. After receiving the client-side proxy’s IP address, hostname and public
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`key, the server-side proxy generates and sends a connection ID to the client-side
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`proxy. After the client-side proxy accepts the connection ID from the server-side
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`proxy, the connection is established. (Kiuchi (Ex. 1004) at page 66.)
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`Attorney Docket No. 213.7000-00000
`IPR of U.S. Patent No. 7,490,151
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`2.
`
`Anticipation of Independent Claim 1 based on Kiuchi.
`
`a.
`
`“A data processing device, comprising memory
`storing a domain name server (DNS) proxy module
`that intercepts DNS requests sent by a client.”
`
`As discussed below, Kiuchi discloses “[a] data processing device,
`
`comprising memory storing a domain name server (DNS) proxy module that
`
`intercepts DNS requests sent by a client,” as recited in independent claim 1. In the
`
`Institution Decision in IPR2014-00610, the Board was persuaded that “Kiuchi
`
`discloses a client-side proxy that receives a request from a user.” (Institution
`
`Decision in 2014-00610 (Ex. 1002) at page 11 (internal quotations omitted).)
`
`Petitioner agrees with the Board.
`
`Petitioner submits that Kiuchi’s client-side proxy is a domain name server
`
`(DNS) proxy module, and this DNS proxy module intercepts DNS requests
`
`sent by a user agent. (See Kiuchi (Ex. 1004) at page 64, § 2.1; page 65, § 2.3;
`
`and page 67, § 4.2.) Furthermore, Petitioner submits that Kiuchi indicates that
`
`the client-side proxy is installed on a firewall. (Kiuchi (Ex. 1004) at page 64,
`
`§ 2.1.) As such, the client-side proxy is necessarily a program that is stored
`
`in the memory of a data processing device. (See Kiuchi (Ex. 1004) at
`
`page 65, § 2.2.)
`
`The client-side proxy in Kiuchi receives a request from the user agent.
`
`(See Kiuchi (Ex. 1004) at page 65, § 2.3.) According to Kiuchi (Kiuchi at
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`page 65, § 2.3), to initiate the request, the user agent selects a hyperlink
`
`URL in the form of:
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`http://server.in.current.connection/sample.html=@=6zdDfldfcZLj8V!i.
`
`As such, the hostname is “server.in.current.connection,” the requested
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`resource is an HTML document, i.e., “sample.html,” and the connection ID
`
`is “6zdDfldfcZLj8V!i.” Accordingly, the user agent’s request is necessarily
`
`a request for a resource corresponding to a hostname in a hyperlink URL.
`
`(See Kiuchi (Ex. 1004) at page 65, § 2.3.) Furthermore, the request from the
`
`client-side proxy is necessarily a request for resources corresponding to the
`
`hostname. (Kiuchi (Ex. 1004) at page 65, § 2.3.)
`
`In Kiuchi, because the hostname corresponds to an IP address, the
`
`hostname is a “domain name” under the broadest reasonable construction of
`
`that term; because the user agent is a computer and/or computer program from
`
`which a resource request is made, the user agent is a “client” under the
`
`broadest reasonable construction of that term; and because the user agent’s
`
`request is a request for a resource (i.e., an HTML document) corresponding
`
`to a domain name (i.e., the hostname), the request from the user agent to the
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`client-side proxy is a “DNS request” under the broadest reasonable
`
`construction of that term.
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`Attorney Docket No. 213.7000-00000
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`For these reasons, Petitioner submits that it is clear that Kiuchi
`
`discloses “[a] data processing device, comprising memory storing a domain
`
`name server (DNS) proxy module that intercepts DNS requests sent by a
`
`client,” as recited in independent claim 1.
`
`b.
`
`“Determining whether the intercepted DNS request
`corresponds to a secure server.”
`
`As discussed below, Kiuchi discloses that the DNS proxy module performs
`
`the step of “determining whether the intercepted DNS request corresponds to a
`
`secure server,” as recited in independent claim 1. In the Institution Decision in
`
`IPR2014-00610, the Board was persuaded that “the client-side proxy determines
`
`whether the request from the user agent corresponds to a secure server by asking
`
`the C-HTTP name server whether it can communicate with the host specified in a
`
`given URL.” (Institution Decision in 2014-00610 (Ex. 1002) at page 11 (internal
`
`quotations omitted).) Petitioner agrees with the Board.
`
`As described above, the client-side proxy receives a request from the user
`
`agent that includes a hostname. (Kiuchi (Ex. 1004) at page 65, § 2.3.) The
`
`hostname can correspond to an origin server that is behind the server-side proxy.
`
`(See Kiuchi (Ex. 1004) at page 65, § 2.3.)
`
`At least the origin server is a secure server under the construction
`
`preliminarily adopted by Board in IPR2014-00610. That is, the origin server is “a
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`server that communicates over a transmission path that restricts access to data or
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`other information on the path.” (Institution Decision in 2014-00610 (Ex. 1002) at
`
`page 7) As discussed below, authorization is needed to access the origin server.
`
`According to Kiuchi, “[w]hen a server-side proxy accepts a request for
`
`connection from a client-side proxy, [the server-side proxy] asks the C-HTTP
`
`name server whether the client-side proxy is an appropriate member of the closed
`
`network,” and “[i]f the [C-HTTP] name server confirms that the query is
`
`legitimate, [the C-HTTP name server] then examines whether the client-side proxy
`
`is permitted to access the server-side proxy,” and hence, is permitted to access the
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`origin server. (Kiuchi (Ex. 1004) at pages 65 and 66, § 2.3.) “If access is
`
`permitted [by the C-HTTP server], the C-HTTP name server sends the IP address
`
`and public key of the client-side proxy and both request and response Nonce
`
`values,” which are used to establish the C-HTTP connection. (Kiuchi (Ex. 1004) at
`
`page 66, § 2.3.) Furthermore, “[o]nce the connection is established, a client-side
`
`proxy forwards HTTP/1.0 requests from the user agent in encrypted form using C-
`
`HTTP format.” (Kiuchi (Ex. 1004) at page 66, § 2.3.) Accordingly, Petitioner
`
`submits that in Kiuchi to access the server-side proxy, and hence, the origin server,
`
`authorization is required to establish the C-HTTP connection for the client-side
`
`proxy that facilitates such access communication. As such, in addition to the origin
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`server, the server-side proxy is a secure server under the construction preliminarily
`
`adopted by the Board in IPR2014-00610.
`
`In addition to the origin server and the server-side proxy being secure
`
`servers, Petitioner submits that the client-side proxy determines if the request from
`
`the user agent corresponds to a secure server. To illustrate, “[a] client-side proxy
`
`asks the C-HTTP name server whether it can communicate with the host specified
`
`in a given URL,” and “[i]f the name server confirms that the query is legitimate, it
`
`examines whether the requested server-side proxy [corresponding to the hostname]
`
`is registered in the closed network and is permitted to accept the connection from
`
`the client-side proxy.” (Kiuchi (Ex. 1004) at page 65, § 2.3.) According to Kiuchi,
`
`“[i]f the connection is permitted, the C-HTTP name server sends the IP address
`
`and public key of the server-side proxy and both request and response Nonce
`
`values,” and “[i]f it is not permitted, it sends a status code which indicates an
`
`error.” (Kiuchi (Ex. 1004) at page 65, § 2.3.)
`
`For these reasons, Petitioner submits that it is clear that Kiuchi discloses that
`
`the DNS proxy module performs the step of “determining whether the intercepted
`
`DNS request corresponds to a secure server,” as recited in independent claim 1.
`
`
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`c.
`
`“When the intercepted DNS request does not
`correspond to a secure server, forwarding the DNS
`request to a DNS function that returns an IP address
`of a nonsecure computer.”
`
`As discussed below, Kiuchi discloses that the DNS proxy module performs the
`
`step of “when the intercepted DNS request does not correspond to a secure server,
`
`forwarding the DNS request to a DNS function that returns an IP address of a
`
`nonsecure computer,” as recited in independent claim 1. In the Institution Decision
`
`in IPR2014-00610, the Board was persuaded that “Kiuchi discloses that the client-
`
`side proxy receives a status code that indicates an error when the DNS request does
`
`not correspond to a secure server and, responsive to the status code, performs DNS
`
`lookup, behaving like an ordinary HTTP/1.0 proxy. (Institution Decision in 2014-
`
`00610 (Ex. 1002) at page 12 (internal quotations omitted).) Petitioner agrees with
`
`the Board.
`
`As discussed above, “[i]f [the connection] is not permitted, [the C-HTTP
`
`name server] sends a status code which indicates an error.” (Kiuchi (Ex. 1004) at
`
`page 65, § 2.3.) According to Kiuchi, “[i]f a client-side proxy receives an error
`
`status, then [the client-side proxy] performs DNS lookup, behaving like an
`
`ordinary HTTP/1.0 proxy.” (Kiuchi (Ex. 1004) at page 65, § 2.3.) As such,
`
`Petitioner submits that the client-side proxy in Kiuchi connects on behalf of the
`
`
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`user agent to the host using an IP address of the host returned after performing a
`
`lookup to the DNS server.
`
`For these reasons, Petitioner submits that it is clear that Kiuchi discloses that the
`
`DNS proxy module performs the step of “when the intercepted DNS request does
`
`not correspond to a secure server, forwarding the DNS request to a DNS function
`
`that returns an IP address of a nonsecure computer,” as recited in independent
`
`claim 1.
`
`d.
`
`“When the intercepted DNS request corresponds to a
`secure server, automatically initiating an encrypted
`channel betw