IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In reInter Partes Reexamination of:
`
`Victor Larson et al.
`
`)
`)
`) Control No.: 95/001,788
`)
`) Group Art Unit: 3992
`)
`) Examiner: Roland Foster
`)
`For: AGILE NETWORK PROTOCOL FOR SECURE ) Confirmation No.: 5823
`COMMUNICATIONS USING SECURE
`)
`DOMAINNAMES
`)
`
`U.S. Patent No. 7,418,504
`
`Issued: August 26, 2008
`
`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PATENT OWNER'S RESPONSE TO
`OFFICE ACTION OF DECEMBER 29, 2011
`
`VirnetX Exhibit 2021
`Black Swamp IP, LLC v. VirnetX Inc.
`IPR2016-00693
`
`Page 1 of 65
`
`

`
`Control No. 95/001,788
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .... .. .. ........................ ... ...... ..................... ...... .......... .. ............................ . 1
`
`A.
`
`Applicable Legal Standards ................................................................................... 2
`
`1.
`
`2.
`
`3.
`
`The Law of Anticipation ....... ........ .............................. ... ..... .. .... ............ ..... 2
`
`The Law of Obviousness ........................................................................... 2
`
`The Law oflnherency ................................................................................ 3
`
`B.
`
`Background of the '504 Patent .............................................................................. 3
`
`II.
`
`CLAIMS 1-60 ARE PATENTABLE ......... ........................................... .... .......... .. ...... .. .... 5
`
`A.
`
`The Rejections Based on Solana and/or Reed Are Improper Because
`Neither Reference Has Been Shown to Be Prior Art (Grounds 1-8, 11, 15,
`19, 24, 28, and 33) ................ ....................... ........... ............... ........ .. ...................... 5
`
`1.
`
`2.
`
`3.
`
`A Reference Is a "Printed Publication" Only When the Requisite
`Showing Is Made ............. .. .................. .................... .......................... .. .. .. .. 6
`
`Requester Failed to Satisfy Its Duty to Disclose Any Evidence of
`Publication and Is Presumed to Have None ............................................... 6
`
`Requester's Bare Contention of Publication Is Inadequate ....... ............... . 7
`
`B.
`
`C.
`
`The Rejections Based on the RFC Documents (Grounds 2, 5-8, 10, 13-20,
`and 22-35) Are Improper Because the RFC Documents Have Not Been
`Shown to Be Prior Art ............................................................................................ 8
`
`Independent Claims 1, 36, and 60 Are Patentable over the Cited Art
`Applied in the Rejections of These Claims (Grounds 1, 5, 9, 13, 17, 21,
`25, and 30) ............. .... .... ......... ....................... ...... .......... ........ ........ .... .................. 10
`
`1.
`
`Independent Claims 1, 36, and 60 Are Patentable over Solana
`(Ground 1) .... ................ ...... .......................................... ...... ...................... 10
`
`a)
`
`b)
`
`Overview of Solana ................................................... .... .............. 10
`
`Solana Does Not Disclose the Elements of Independent
`Claim 1 ......................................................................................... 11
`
`(1)
`
`(2)
`
`(3)
`
`Solana Does Not Disclose "a Domain Name
`Service System Configured to . . . Store Domain
`Names and Corresponding Network Addresses" ...... ....... 11
`
`Solana Does Not Disclose "a Domain N arne
`Service System Configured to ... Receive a Query
`for a Network Address" ................................................... 13
`
`Solana Does Not Teach "a Domain Name Service
`System Configured to . . . Comprise an Indication
`that the Domain Name Service System Supports
`Establishing a Secure Communication Link" .................. 15
`
`-11-
`
`Page 2 of 65
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`

`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Control No. 95/001,788
`
`c)
`
`Solana Does Not Disclose the Elements of Independent
`Claims 36 and 60 ... ... .......... .... .............. ................ ..... ...... .......... .. 16
`
`Independent Claims 1, 36, and 60 Are Patentable over Solana in
`View ofRFC 2504 (Ground 5) ....... ................ ........ ................................. 16
`Independent Claims 1, 36, and 60 Are Patentable over Provino
`(Ground No.9) ............. .. .. .. .............. ...................... ...... .......... ... ... .......... .. 18
`a)
`Overview of Provino ...................................................... .. ............ 18
`b)
`Provino Does Not Disclose Each and Every Element of
`Independent Claims 1, 36, and 60 .. ................ ....................... .. ... .. 19
`Independent Claims 1, 36, and 60 Are Patentable over Provino in
`View ofRFC 2230 (Ground 13) .............................................................. 22
`Independent Claims 1, 36, and 60 Are Patentable over Provino in
`View ofRFC 2504 (Ground 17) ........................................ .. ....... .. .. .. ....... 23
`Independent Claims 1, 36, and 60 Are Patentable over Beser
`(Ground 21) ........... ... .. ..... .. ..... .. ... ...... ......... .......... .... ................ .... ............ 24
`
`a)
`b)
`
`Overview of Beser ........ .... ............ .............. ..... .. .... .. ......... ...... ..... 24
`Beser Does Not Disclose "a Domain Name Service System
`Configured ... to Comprise an Indication that the Domain
`Name Service System Supports Establishing a Secure
`Communication Link" ... .............. ................. ................... ............ 25
`Independent Claims 1, 36, and 60 Are Patentable over RFC 2230
`(Ground 25) .... .. ............ .. ............ .... ............ .. ............ ... ... ......... ... .............. 26
`
`a)
`b)
`
`Overview ofRFC 2230 .................................. .. .... .... .. .................. 27
`RFC 2230 Does Not Disclose Each and Every Element of
`Independent Claim 1 ........ ............................. .. ... ........................ .. 27
`(1)
`A KX Resource Record Is Not "an Indication that
`the Domain Name Service System Supports
`Establishing a Secure Communication Link" .. .. ........... .. . 28
`The Alleged Establishment and Use of an IPsec
`Security Association Is Not "an Indication that the
`Domain Name
`Service
`System
`Supports
`Establishing a Secure Communication Link" .................. 29
`RFC 2230 Discloses a Conventional Domain Name
`Service System Distinguished by the '504 Patent ........... 30
`Independent Claims 1, 36, and 60 Are Patentable over RFC 2538
`(Ground 30) .... .. ............ .... ............................ .. .......................... .. .............. 31
`
`(2)
`
`(3)
`
`a)
`b)
`
`Overview of RFC 2538 ................................................................ 32
`RFC 2538 Does Not Disclose Each and Every Element of
`Independent Claims 1, 36, and 60 ................................................ 32
`
`- iii -
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`Page 3 of 65
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`

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`Control No. 95/001,788
`
`D.
`
`E.
`
`Dependent Claims 2-35 and 37- 59 Are Patentable over the Cited
`References (Grounds 1-35) ........ ..... ...................... .... ................................. .... ...... 34
`
`Dependent Claims 5, 23, and 47 Are Patentable over the Cited References ....... 34
`
`1.
`
`2.
`
`Rejections Based on Solana (Grounds 1, 2, 5, and 6) .............................. 35
`
`Rejections Based on Provino (Grounds 9, 10, 13, 14, 17, and 18) .......... 35
`
`F.
`
`Dependent Claims 8 and 9 Are Patentable over the Cited References .. ... ...... ..... 36
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Rejections Based on Solana (Grounds 1 and 5) ....................................... 37
`
`Rejections Based on Provino (Grounds 9, 13, and 17) ............................ 37
`
`Rejections Based on Beser (Ground 23) ................... .... ........................... 38
`
`Rejections Based on RFC 2230 (Ground 27) ...................... ... ... .............. 39
`
`Rejections Based on RFC 2538 (Ground 32) .......................................... 40
`
`G.
`
`Dependent Claims 16, 17, 27, 33, 40, 41, 51, and 57 Are Patentable over
`the Cited References .............. .. .. .. ... ............................................ .. ..... ............ ...... 40
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Rejections Based on Solana (Grounds 1 and 5) ....................................... 4 1
`
`Rejections Based on Provino (Grounds 9, 13, and 17) ............................. 42
`
`Rejections Based onBeser (Ground 21) ................... ....................... ........ 43
`
`Rejections Based on RFC 2230 (Ground 25) .......................................... 43
`
`Rejections Based on RFC 2538 (Ground 30) .......................................... 44
`
`H.
`
`Dependent Claims 18 and 42 Are Patentable over the Cited References .... ........ 44
`
`1.
`
`2.
`
`3.
`
`4.
`
`Rejections Based on Solana (Grounds 1 and 5) ....................................... 45
`
`Rejections Based on Beser (Ground 21) .......................................... ....... . 45
`
`Rejections Based on RFC 2230 (Ground 25) .......................................... 46
`Rejections Based on RFC 2538 (Ground 30) ...................................... .... 47
`
`I.
`
`Dependent Claims 24 and 48 Are Patentable over the Cited References .... .. ...... 47
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Rejections Based on Solana (Grounds 1, 2, 5, and 6) .............................. 4
`Rejections Based on Provino (Grounds 9, 10, 13, 14, 17, and 18) ......... . 49
`
`Rejections Based on Beser (Grounds 21 and 22) ...... ............................... 50
`Rejections Based on RFC 2230 (Grounds 25 and 26) ............. ....... ... ...... 5J
`
`Rejections Based on RFC 253 8 (Grounds 30 and 31) ................. ............ 52
`
`J.
`
`Dependent Claims 26 and 50 Are Patentable over the Cited References ............ 53
`
`1.
`
`2.
`
`3.
`
`Rejections Based on Solana (Grounds 1 and 5) ........... ......... ............... .... 53
`
`Rejections Based on Provino (Grounds 9, 13, and 17) .... ............. ...... .. ... 54
`
`Rejections Based on Beser (Ground 21) ..................... .. ... .. ...... ................ 55
`
`- iv-
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`Page 4 of 65
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`Control No. 95/001,788
`
`Rejections Based on RFC 2230 (Ground 25) .................... .. .............. .. .. .. 55
`4.
`Rejections Based on RFC 2538 (Ground 30) .......... .. .............................. 56
`5.
`A Prima Facie Case of Obviousness Has Not Been Established ........................ 56
`Secondary Considerations Demonstrate Nonobviousness ................................... 57
`CONCLUSION ................................... .... .... .. .. .................. .. .. ..... ......................... ............. 60
`
`K.
`L.
`
`III.
`
`-v -
`
`Page 5 of 65
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`

`
`I.
`
`INTRODUCTION
`VirnetX Inc. ("Patent Owner"), the owner of U.S. Patent No. 7,418,504 ("the '504 patent"),
`
`hereby responds to the Office Action ("Office Action" or "OA'') and Order granting reexamination
`
`("Order") mailed on December 29, 2011, in the above-identified reexamination proceeding, which
`
`was initiated by Third-Patty Requester, Apple Inc. ("Requester"), on October 18, 2011 ("the
`
`Request" or "Req."). Patent Owner is grateful for the one-month extension of time to respond,
`
`extending the time for reply to March 29, 2012. The Examiner adopted all thirty-five issues the
`
`Requester identified.
`
`The patent at issue in this reexamination, the '504 patent, is part of a family of patents
`
`("Munger patent family") that stems from U.S. provisional application nos. 60/106,261 ("the '261
`
`application"), filed on October 30, 1998, and 60/137,704 ("the '704 application"), filed on June 7,
`
`1999. The '504 patent is a continuation of U.S. application no. 09/558,210 ("the '210 application"),
`
`filed April 26, 2000, (now abandoned), which is a continuation-in-part of U.S. application no.
`
`09/504,783 (now U.S. Patent No. 6,502,135, "the' 135 patent"). The' 135 patent is a continuation-in(cid:173)
`
`part of U.S. application no. 09/429,643 (now U.S. Patent No. 7,010,604, "the '604 patent"), which
`
`claims priolity to the '261 and '704 applications.
`
`The Munger patent family discloses numerous inventions relating to secure communications.
`
`Patents in this family have been subject to several reexamination proceedings and district court
`
`actions. For instance, three other patents from the family were asserted in an action against
`Microsoft Corporation in the Eastern District ofTexas. 1 The jury found the asserted claims willfully
`
`infringed and not invalid and awarded VimetX over one hundred million dollars in damages. (Ex. A(cid:173)
`
`I at 2.) Microsoft also sought reexamination of two of the patents, but all claims were confirmed
`
`during those proceedings.
`
`(See control nos. 95/001,269 and 95/001,270.) And just recently, the
`
`Office denied a request for reexamination of one of the patents in the Munger patent family. (Order
`
`in control no. 95/001, 792.)
`
`Given that the validity of the patents in the Munger patent family has now been tested
`
`multiple times, and for the other reasons set forth below, including that the asserted references do not
`
`disclose or suggest the combination of features recited in the claims, Patent Owner requests
`
`1 One of these patents, U.S. Patent No. 6,839,759 was assetied initially but was dropped from
`this case before trial.
`
`- 1 -
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`Control No. 95/001,788
`
`reconsideration and withdrawal of all the rejections in the Office Action and confirmation of the
`
`patentability of all of the claims of the '504 patent.
`
`Patent Owner's statements below are suppolied, where indicated, by an expeli Declaration of
`
`Angelos D. Keromytis, Ph.D. ("Keromytis Dec!.") and a Declaration of Dr. Robert Dunham Short III
`
`("Short Decl.").
`
`A.
`
`Applicable Legal Standards
`
`1.
`
`The Law of Anticipation
`
`"A claim is anticipated only if each and evety element as set forth in the claim is found,
`
`either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union
`
`Oil Co. of Cal., 814 F.2d 628, 631, 2 U.S.P.Q.2d 1051, 1053 (Fed. Cir. 1987). "The identical
`
`invention must be shown in as complete detail as is contained in the .. . claim." Richardson v.
`
`Suzuki Motor Co., 868 F.2d 1226, 1236, 9 U.S.P.Q.2d 1913, 1920 (Fed. Cir. 1989). Although identity
`
`of terminology is not required, the elements must be arranged as required by the claim. In re Bond,
`
`910 F.2d 831, 15 U.S.P.Q.2d 1566 (Fed. Cir. 1990). Thus, "unless a reference discloses within the
`
`four corners of the document not only all of the limitations claimed but also all of the limitations
`
`arr-anged or combined in the same way as recited in the claim, it ... cannot anticipate under 35
`
`U.S.C. § 102." Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).
`
`The Law of Obviousness
`2.
`A claim can only be rejected as being obvious if the differences between it 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 ati." See 35 U.S.C. § 103(a) (1994); Graham v. John
`
`Deere Co., 383 U.S. 1, 13-14 (1966). The ultimate determination ofwhether an invention is obvious
`
`is a legal conclusion based on underlying factual inquiries including: ( 1) the scope and content of the
`
`prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention
`
`and the prior art; and (4) objective evidence of secondary considerations of nonobviousness. See
`
`Graham, 383 U.S. at 17-18; Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 877, 27 U.S.P.Q.2d
`
`1123, 1128 (Fed. Cir. 1993).
`
`A statement that modifications of the prior art to meet the claimed invention would have been
`
`"well within the ordinary skill of the art at the time the claimed invention was made" because the
`
`references relied upon teach that all aspects of the claimed invention were individually known in the
`
`art, is not sufficient to establish a prima facie case of obviousness without some objective reason to
`
`combine the teachings of the references. M.P.E.P. § 2143.01 (citing Ex parte Levengood,
`
`28 U.S.P.Q.2d 1300 (B.P.A.I. 1993)). "[R]ejections on obviousness cannot be sustained by mere
`
`- 2-
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`Page 7 of 65
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`Control No. 95/001,788
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`conclusory statements; instead, there must be some atiiculated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness." KSR Int 'l Co. v. Telejlex Inc., 550
`
`U.S. 398, 418, 82 U.S.P.Q.2d 1385, 1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988, 78
`
`U.S.P.Q.2d 1329, 1336 (Fed. Cir. 2006)).
`
`Further, even in view of KSR, it is not permissible to simply "pick and choose" elements of
`
`the prior art to arrive at the claimed subject matter. There must be some basis or rationale suggesting
`
`the modification and a reasonable expectation of success. M.P .E.P. § 2143.02
`
`3.
`
`The Law of Inherency
`
`The express, implicit, and inherent disclosures of a prior art reference may be relied upon in
`
`the rejection of claims under 35 U.S.C. § 102 or§ 103. M.P.E.P. § 2112. The fact that a certain
`
`result or characteristic may occur or be present in the prior art is not sufficient to establish the
`
`inherency of that result or characteristic. Id. To establish inherency, the extrinsic evidence must
`
`make clear that the missing descriptive matter is necessarily present in the thing described in the
`
`reference, and that it would be so recognized by persons of ordinary skill. Id.
`
`B.
`
`Background of the '504 Patent
`
`The '504 patent discloses several embodiments of a domain name service ("DNS") system
`
`for establishing a secure communication link, such as a virtual private network ("VPN")
`
`communication link, between devices connected to a network. In one such embodiment, a novel,
`
`specialized DNS server receives a traditional DNS request, and the DNS server automatically
`
`facilitates the establishment of a secure communication link between a target node and a user.
`
`(Keromytis Decl. ~ 16; '504 patent 39:46-51.) This specialized DNS server is different from a
`
`conventional DNS server known at the time of the invention for at least the reason that the
`
`specialized DNS server supports the establishment of a secure communication link beyond merely a
`
`requested IP address or public key. (Keromytis Dec!.~ 16.)
`
`For example, in the exemplars of FIGS. 26 and 27 of the '504 patent, reproduced below, a
`
`DNS server 2602 including a DNS proxy 2610 supports establishing a VPN link between a computer
`
`2601 and a secure target site 2604. ('504 patent 39:67-41:59; Keromytis Decl. ~ 17.)
`
`- 3 -
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`Control No. 95/001,788
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`FIG. 26
`
`FIG. 27
`
`In one embodiment, the DNS server 2602 receives a DNS request for a target site from computer
`
`2601. ('504 patent 40:49-52; Keromytis Decl. ~ 18.) The DNS proxy 2610 determines whether the
`
`target site is a secure site. ('504 patent 40:6-8, 40:49-56; Keromytis Dec!. ~ 18.) If access to a
`
`secure site has been requested, the DNS proxy 2610 determines whether the computer 2601 is
`
`authorized to access the site. ('504 patent 40:57-59; Keromytis Dec!.~ 18.) If so, the DNS proxy
`
`261 0 transmits a message to gatekeeper 2603 to facilitate the creation of a VPN link between
`
`computer 2601 and secure target site 2604. ('504 patent 40:18-24.) The DNS proxy 2610 then
`
`responds to the computer's 2601 DNS request with an address received from the gatekeeper 2604.
`
`(!d. at 40: 19-22; Keromytis Decl. ~ 18.) A secure VPN link is then established between the computer
`
`2601 and the secure target site 2604. ('504 patent 41:5-8; Keromytis Decl. ~ 18.) As shown in this
`
`example, the specialized DNS server supports creating a secure communication link and does more
`
`than a conventional DNS server at the time of the invention. (Keromytis Decl. ~ 18.)
`
`The '504 patent highlights this distinction between the specialized DNS server disclosed in
`
`its specification and a conventional DNS scheme, which merely returns a requested IP address or
`
`public key:
`
`Conventional Domain Name Servers (DNSs) provide a look-up function
`that returns the IP address of a requested computer or host. For example,
`when a computer user types in the web name "Yahoo.com," the user's
`web browser transmits a request to a DNS, which converts the name into a
`four-part IP address that is returned to the user's browser ....
`
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`Control No. 95/001,788
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`One conventional scheme that provides secure virtual private networks over
`the Internet provides the DNS server with the public keys of the machines
`that the DNS server has the addresses for. This allows hosts to retrieve
`automatically the public keys of a host that the host is to communicate with
`so that the host can set up a VPN without having the user enter the public key
`of the destination host. One implementation of this standard is presently
`being developed as part ofthe FreeS/WAN project (RFC 2535).
`
`The conventional scheme suffers from certain drawbacks. For example, any
`user can perform a DNS request. Moreover, DNS requests resolve to the
`same value for all users.
`
`According to certain aspects of the invention, a specialized DNS server traps
`DNS requests and, if the request is from a special type of user (e.g., one for
`which secure communication services are defined), the server does not return
`the ttue IP address of the target node, but instead automatically sets up a
`virtual private network between the target node and the user.
`
`('504 patent 39:7-51; Keromytis Dec!.~ 19.) Compared with a conventional DNS known at the time
`
`of the filing date of the '504 patent, the specialized DNS disclosed in the '504 patent supports
`
`establishing a secure communication linlc (Keromytis Dec!. '1]19.) The claims of the '504 patent are
`
`also directed to a domain name service for establishing a secure communication link. (See, e.g., '504
`
`patent 55:49-56, 57:48-58, 60:3-14; Keromytis Decl. '1]19.)
`
`II.
`
`CLAIMS 1-60 ARE PATENT ABLE
`
`A.
`
`The Rejections Based on Solana and/or Reed Are Improper Because Neither
`Reference Has Been Shown to Be Prior Art (Grounds 1-8, 11, 15, 19, 24, 28, and
`33)
`
`As a threshold matter, Patent Owner notes that the Request and the Office Action rely on the
`
`following two references without showing that these references have been published:
`
`1. E. Solana eta!., "Flexible Internet Secure Transactions Based on Collaborative Domains,"
`
`Lecture Notes in Computer Science, vol. 1361, at 37-51 ("Solana") (Req. Ex. X1); and
`
`2. M. Reed et a!., "Proxies for Anonymous Routing," lih Annual Computer Security
`
`Applications Conference, San Diego, CA ("Reed'') (Req. Ex. X10) .
`
`Neither reference is a patent. The entirety of the support for these references being prior art printed
`
`publications is a bald assertion in the Request, adopted by the Office Action, that the references were
`
`publicly distributed prior to the effective date of the '504 patent. This attorney argument does not
`
`establish these references as prior art for at least the following reasons.
`
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`Control No. 95/001,788
`
`1.
`
`A Reference Is a "Printed Publication" Only When the Requisite
`Showing Is Made
`
`Solana and Reed are prior art only if they are "printed publications." The statutory phrase
`
`"printed publication" means that the alleged reference must have been sufficiently accessible to the
`
`public interested in the art. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989) (quoting Constcmt v.
`
`Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988)). M.P.E.P. § 2128 provides in
`
`part:
`
`A reference is a "printed publication" only "upon a satisfactory showing
`that such document has been disseminated or otherwise made available to
`the extent that persons interested and ordinarily skilled in the subject
`matter or art, exercising reasonable diligence, can locate it."
`In re
`Wyer, 655 F.2d 221, 210 USPQ 790 (C.C.P.A. 1981) (quoting I.C.E.
`Corp. v. Annco Steel Corp., 250 F. Supp. 738, 743, 148 USPQ 537, 540
`(SDNY 1966)).
`
`Thus, a showing of dissemination and public accessibility are the keys to the legal
`
`determination of whether a document was "published." The record is devoid of any showing that
`
`Solana and Reed were disseminated or otherwise publicly available at the time asserted by the
`
`Requester. Rather, the Request baldly asserts that "Solana is a printed publication that was
`
`distributed to the public without restriction no later than 1997." (Req. at 11.) Similarly, the Request
`
`asserts that "Reed is a printed publication that was distributed publicly without restriction no later
`
`than December 13, 1996 . .. . " (!d. at 12.)
`
`Solana contains no publication date on the document. The face of the document identifies
`
`only that the authors are affiliated with the University of Geneva. There is no indication on the
`
`document that it was published on the date asserted by the Requester.
`
`Reed identifies the 12th Annual Security Applications Conference, San Diego, CA, and a
`
`date of December 9-13, 1996, but there is no evidence that the document was actually "published"
`
`within those dates, nor that the document was "otherwise available to the extent that persons
`
`interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, could
`
`locate it" at the time.
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`2.
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`Requester Failed to Satisfy Its Duty to Disclose Any Evidence of
`Publication and Is Presumed to Have None
`Under 37 C.F.R. § 11.18, the Requester was required to produce any evidence proving
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`Solana or Reed were publicly distributed without restriction at the time assetied by the Requester?
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`Yet, it produced none. The logical conclusion is that no such evidence exists. Should the Requester
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`subsequently attempt to introduce any evidence that Solana or Reed is prior ati at the time asserted
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`by the Requester, then the remedies provided by 3 7 C.F.R. § l1.18(c) should be exercised- absent a
`
`showing that the evidence was not available to the Requester at the time the Request was filed-to
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`strike the paper attempting to submit that evidence, 37 C.F.R. § 11.18(c)(l), or to terminate this
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`proceeding entirely, 37 C.F.R. § ll.l8(c)(5)).
`
`3.
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`Requester's Bare Contention of Publication Is Inadequate
`
`As stated above, the Requester's sole basis for relying on Solana and Reed as prior ati is a
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`bald assertion that they were printed publications distributed before the critical date. These bald
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`assertions are nothing more than attorney argument, which is not evidence. See In re Wyer, 655 F.2d
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`221, 227 (C.C.P.A. 1981) ("[T]he one who wishes to characterize the information, in whatever form
`
`it may be, as a 'printed publication' ... should produce sufficient proof of its dissemination or that it
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`has otherwise been available and accessible to persons concerned with the art to which the document
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`relates and thus most likely to avail themselves of its contents .... "(emphasis added)).
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`The M.P.E.P. expressly recognizes that attorney argument is not evidence: M.P.E.P.
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`§ 716.0 l(c) ("The arguments of counsel cannot take the place of evidence in the record." (citing In re
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`Schulze, 346 F.2d 600, 602, 145 U.S.P.Q. 716, 718 (C.C.P.A. 1965))). Although M.P.E.P. §
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`716.01(c) focuses on certain types of evidence typically used to rebut rejections, it is not exclusive to
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`those types of evidence. Moreover, the broader notion of M.P.E.P. § 716.0l(c) that attorney
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`argument cannot replace real evidence is a well founded , common-sense position permeating the
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`Office rules.
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`Because the record is devoid of evidence that Solana and Reed were printed publications on
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`the dates assetied, each rejection based, in whole or in pmi, on either reference is fatally defective.
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`Patent Owner respectfully requests that all such rejections (specifically Grounds 1-8, 11, 15, 19, 24,
`
`28, and 33) be withdrawn. Without admitting that Solana and Reed are publications as of the dates
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`2 37 C.F.R. § 11.18(b)(2)(iii) requires that all "factual contentions have evidentimy support
`or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity
`for further investigation or discovery .... " (emphasis added). The Requester's factual contentions
`regarding the public distribution of Solana and Reed do not state that those contentions are likely to
`have evidentiary support.
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`asserted by the Requester, Patent Owner will assume, arguendo, that the references are publications
`
`as of the asserted dates for the pmposes of this response.
`
`B.
`
`The Rejections Based on the RFC Documents (Grounds 2, 5-8, 10, 13-20, and
`22-35) Are Improper Because the RFC Documents Have Not Been Shown to Be
`Prior Art
`
`Similarly, the Request and the Office Action rely on several RFC documents (collectively
`
`referred to in this section as "the RFC documents") without showing that these references have been
`
`published:
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`I. RFC 2230, "Key Exchange Delegation Record for the DNS" ("RFC 2230") (Req.
`
`Ex. X4);
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`2. RFC 2538, "Storing Certificates in the Domain Name System (DNS)" ("RFC
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`2538") (Req. Ex. X5);
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`3. RFC 2401, "Security Architecture for the Internet Protocol" ("RFC 2401") (Req.
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`Ex. X6);
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`4. RFC 2065, "Domain Name System Security Extensions" ("RFC 2065") (Req. Ex.
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`X7);
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`5. RFC 920, "Domain Requirements" ("RFC 920") (Req. Ex. X8);
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`6. RFC 2504, "Users' Security Handbook" ("RFC 2504") (Req. Ex. X9);
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`7. RFC 1035, "Domain Names-Implementation and Specification" ("RFC 1035")
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`(Req. Ex. Y2);
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`8. RFC 1123, "Requirements for Internet Hosts-Applications and Support" ("RFC
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`1123") (Req. Ex. Y3);
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`9. RFC 1825, "Security Architecture for the Internet Protocol" ("RFC 1825") (Req.
`
`Ex. Y4);
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`10. RFC 2459, "Internet X.509 Public Key Infrastructure Certificate and CRL
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`Profile" ("RFC 2459") (Req. Ex. Y5); and
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`11. RFC 1034, "Domain Names-Concepts and Facilities" ("RFC 1034") (Req. Ex.
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`Y6).
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`The RFC documents cited in the Request cannot be relied on as publications as of the asserted dates
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`because the record is devoid of evidence that any of these references are patents or printed
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`publications as ofthose dates.
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`The Requester appears to have relied on the date (month and year, or year) indicated in each
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`of the RFC documents. The Requester asserted, for example, that "RFC 2230 is a printed publication
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`that was distributed to the public without restriction no later than November 1997, and is publicly
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`available at http://tools.ietf.org/html/rfc2230." (Req. at 11.) However, the indication of a particular
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`date in a document, without any description thereof, does not necessarily mean that the indicated date
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`is the publication date of the document or the date when the documents were first publicly available.
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`Nor is it evident that, even if the documents were each distributed on the dates indicated, such
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`distribution was "without restriction" since it is unknown who had access to the documents. These
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`documents refer to a "Network Working Group." Such a reference is vague at best as to whether
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`these documents were disseminated or otherwise made available to the extent that persons interested
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`and ordinarily skilled in the subject matter or art, exercising reasonable diligence, could locate it at
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`the time alleged by the Requester. Thus, such dates provided in each of the RFC documents are
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`insufficient to establish them as publications constituting prior art under 35 U.S.C. §§ 102 and 103 as
`
`of the asserted dates. While the Requester has mentioned that each RFC document is currently
`
`available on the Internet, the fact that they are currently available on the Internet does not establish
`
`the documents as publications at the times alleged by the Requester. M.P.E.P. § 2128 states in part:
`
`Prior art disclosures on the Internet or on an on-line database are
`considered to be publicly available as of the date the item was publicly
`posted. Absent evidence of the date that the disclosure was publicly
`posted, if the publication itself does not include a publication date (or
`retrieval date), it cannot be relied upon as prior art under 35 U.S.C. 102(a)
`or (b).
`
`M.P.E.P. § 2128 (emphasis added).
`
`M.P.E.P. § 2128 clearly requires a "publication date" or "retrieval date" for a prior art
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`disclosure on the Internet or on an on-line database. The Requester, however, has failed to provide
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`any evidence that the date indicated in each of the RFC documents, which is a disclosure on the
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`Internet, is a "publication date" or "retrieval date."
`
`For the same reasons discussed above with regard to Solana and Reed, t