IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Application of:
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`Larsonet al.
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`Application Serial Ne.
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`LE/679,416
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`Filing Date:
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`Title:
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`Rebruary 27, 2007
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`METHOD FOR ESTABLISHING SECURE COMMUNICATION
`LINK BETWEEN COMPUTERS OF VIRTUAL PRIVATE
`NETWORK
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`Examiner:
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`Art Unit:
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`Confirmation Noa.:
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`Lim, Krisna
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`245
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`3
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`3528
`an fae
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`Atty. Docket No.:
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`077580-0015 (VRNK-LCP2DVCON}
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`Mail Stop Amendment
`Commissionerfor Patents
`P.O. Box 1456
`Alexandria, VA 22313-1450
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`RESPONSE AND REQUEST FOR RECONSIDERATION
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`The Applicants responds to the non-final Office Action mailed December7, 2010 (‘the
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`Office Action’) as follows:
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`Remarks, beginning on page 2 ofthis paper.
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`Page 1 of 10
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`-1-
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`VirnetX Exhibit 2007
`Black SwampIP, LLC v. VirnetX Inc.
`IPR2016-00957
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`
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`VirnetX Exhibit 2007
`Black Swamp IP, LLC v. VirnetX Inc.
`IPR2016-00957
`Trial PGR2016-00007
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`Page 1 of 10
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`Serial No.: 11/679,416
`Response to December 7, 2010 Office Action
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`Applicants appreciate the Examiner’s examination of the subject application. Claims 2-
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`Remarks
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`36 are currently pending. No claims have been amended or cancelled.
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`In the Office Action, the Examiner has rejected Claims 2-30 under 35 U.S.C. § 1020b), as
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`being anticipated by Aventail Connect v 3.1/v2.6 Admuinistrator’s Guide (‘Aventail”’).
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`Applicants respectfully traverse the outstanding rejection and requests reconsideration of
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`the subject application in light of the following remarks.
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`Patentability under 35 U.S.C. § £02
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`The Examiner has rejected Claims 2-30 under 35 U.S.C. § 102(b), as being anticipated by
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`Aventail. These rejections are respectfully traversed, and reconsideration and withdrawal of
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`these rejections are respectfully requested.
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`independent claim 2 recites the following:
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`A method of using a first device to cornmunicate with a second device having a
`secure name, the method comprising:
`from the first device, sending 4 message to a secure name service, the
`message requesting a network address associated with the secure name of the
`second device;
`at the first device, receiving a message containing the network address
`associated with the secure mame of the second device; and
`fromthe first device, sending a message to the network address associated
`with the secure name ofthe seconddevice using a secure communication link.
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`(ermphasis added).
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`As a preliminary matter,Aventatl has not been shown to be priorart to all pending claims
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`in the present application, including claim 2. In fact, Aventail is not prior art. The present
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`application claims priority to U.S. Patent Nos. 6,502,135 (hereinafter “the °135 patent’) and
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`7,188,180 Chereinafter “the °180 patent”). The 7135 and ’180 Patents were subject to inter partes
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`reexamination proceedings, Control Nos. 93/001,269 (heremafter “the “269 Reexam’”) and
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`Serial No.: 11/679,415
`Response to December 7, 2010 Office Action
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`95/001 ,270 (heremafter “the "270 Reexam’”), respectively (collectively “Reexams”). In both
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`Reexams, the USPTO determined that “Aventail cannot be relied uponas prior art to the
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`fpatents].” See Reexamination Control No. 95/001,269, Action Closing Prosecution, June 16,
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`2010, p. 3 (Exhibit A}; Reexamination Control No. 95/001,270, Action Ciosing Prosecution,
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`June 16, 2610, p. 3 (Exhibit B). This sound determination was based on the fact that no evidence
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`was found to establish Aventail’s publication date.
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`Indeed, Aventail’s identification of a copyright date range of 1996 — 1999 is not
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`equivalent to a publication date. The distinction between a publication date and a copyright date
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`is critical. To establish a date of publication, the reference rust be shown to have “been
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`disserninated or otherwise made available to the extent that persons interested and ordinarily
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`skilled in the subject matter or art, exercising reasonable diligence, can locate it.” fn re Wyre,
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`655 F.2d 221 (C.C.PLA. 1981). Aventail, on its face, provides “© 1996-1999 Aventail
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`Corporation.” The copyright date does not meet this standard. Unlike a publication date, a
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`copyright date merely establishes “the date that the document was created or printed.”
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`Hilgraeve, inc. v. Symantec Corp., 271 F. Supp. 2d 964, 975 CE.D. Mich, 2003).
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`Even presuming the author of the document accurately represented the date the document
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`was created, a creation date alone is not evidence of arysort of publication or dissemination.
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`Without more, this bald assertion of the creation of the document does not meet the “publication”
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`standard requnred for a document to be relied uponas prior art.
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`Further exacerbating matters is the filing date of the ’135 Patent: February 15, 2006.
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`Suppose the relied upon sections of the Aventail reference were created on December 31, 1999,
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`and the copyright date range were accordingly amended to read “1996-1999.” Underthese
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`circurnstances, it is possible that the document, although created, was not made publicly
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`Serial No.: 11/679,415
`Response to December 7, 2010 Office Action
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`available until after the filing date of the °135 Patent, six weeks after creation. And, under these
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`circurnstances, Aventail clearly would not be cligible to be relied upon as prior art to the °135
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`Patent.
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`As an aside, the Applicant notes that the present assignee (VirnetX Inc.) and its
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`prosecution counsel have been accused of inequitabie conduct during the °269 Roexarn ina
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`litigation proceeding, VirnetX Inc. v. Cisco Systems, Inc., et al., United States District Court for
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`the Eastern District of Texas, Tyler Division, Case No. 6:10-cv-417. Exhibits C-E.
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`Inits
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`OriginalAnswer, Affirmative Defenses, and Counterclaims to the Virnetx’s Original Complaint,
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`the Defendant Apple Inc. (Apple) alleges that evidence of Aventail’s publication as early as
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`June 1999 was presented in a different tral mvolving Microsoft Corporation. Exhibit C at | 23
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`(p. 14). Apple farther alleges that “VirnetX was aware that the Aventail reference may have
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`been published at least as early as Ime 1999." Exhibit C at 423. Defendants Aastra
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`Technologies Limited and Aastra USA Inc. (“Aastra’’) have made similar allegations in their
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`responsive pleadings. Exhibit D at 7 86 (p. 19); Exhibit E at 7 86 (p. 19).
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`To the contrary, the applicants are unaware of evidence establishing Aventail’s
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`publication date, and specifically are unaware of the June 1999 publication date alleged by Apple
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`and Aastra in their pleadings. The trial transcript from the Microsoft trial doos not discuss
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`anything about a publication date for the Aventail reference. Exhibit F. While thetrial transeript
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`references the Aventail product, tt does not mention anything about a publication date. See e.g.
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`Exhibit F-2, pp. 112, 146; Exhibit F-3, pp. 115, 119-20; Exhibit F-10 pp. 21-40; Exhibit F-11,
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`pp. 21-32, 120-150. The deposition of Gary Tomlinson (former ernaployee of Aventail) taken
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`during discovery prior to the Microsoft trial is inconclusive, at best. Exhibit H at pp. 33-36.
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`Thus, although an allegation of knowledge has been made bya third party, the applicants, the
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`Serial No.: 11/679,416
`Response to December 7, 2010 Office Action
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`assignee and applicants’ prosecution counsel have not had and do not have such knowledge. To
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`be sure, the Applicants will notify the USPTO immediately ifit becomes aware of evidence of
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`Aventail’s publication date,
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`Assuming arguendo, that Aventail is prior art to the present application, it is not
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`understood to disclose the features of claim 2, particularly with respectto at least the features of
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`“a secure communication link,”
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`39 66,
`“a secure name service,” and a “secure namc.”
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`Aventail’s disclosure was summarized in the Declaration of Professor Jason Nich in
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`support of the "270 Reexam. Reexamination Control No. 95/001,270, Declaration ofJason
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`Nieh, PhD, Pursuant to 37 CPR. § 1.432, April 19, 2010, 4) 14 - 29 CExhibit G) (hereinafter
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`“Nieh Decl”). The Nich Decl. is cited hereto characterize the cited references andtheir
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`deficiencies.
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`Aventail discloses a system and architecture for transmitting data between two
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`computers using the SOCKS protocol. Nich Decl. at] 14. The system routes certain, predefined
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`network traffic from a WinSock (Windows sockets) application to an extranct (SOCKS) server,
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`possibly through successive servers. Aventail at 7; Nich Decl. at #14. Upon receipt of the
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`network traffic, the SOCKS server then transmits the network traffic to the Internet or external
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`network. Aventail at 7; Nich Deci. at @ 14. Aventail’s disclosure is limited to connections
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`created at the socket layer of the network architecture. Nich Decl. at { 14.
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`In operation, a component of the Aventail Connect software described in the reference
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`resides between WinSock andthe underlying TCP/IP stack. See Aventail at 9; Nieh Decl. at |
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`15. The Aventail Connect software intercepts all connection requests from the user, and
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`determines whether cach request matches local, preset criteria for redirection to a SOCKSserver.
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`See Aventail at 10; Nich Decl. at15. If redirection is appropriate, then Aventall Connect
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`Serial No.: 11/679,416
`Response to December 7, 2010 Office Action
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`creates a false DNS entry to return to the requesting application. See Aventail at 12; Nich Decl.
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`at 16. Aventail discloses that Aventail Connect then forwards the destination hostname to the
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`extranet SOCK server over a SOCKS connection. SeeAventail at 12; Nich Decl. at 16. The
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`SOCKSserver performs the hostname resolution. Aventail at 12; Nich Decl. at 17. Once the
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`hostname is resolved, the user can transmit data over a SOCKSconnection to the SOCKSserver.
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`Nich Decl. at { 17. The SOCKSserver, then, separatelyrelays that transmitteddatato the target.
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`Nich Decl. at Y 17.
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`Aventail fails to disclose “a secure name service” and a “secure name.” Aventail
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`discloses conventional domain name services and domain names. Indeed, in reexamination of
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`the “180 Patent, the Patent Office found that Aventail discloses a conventional “DNS server and
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`the creation of a secure tunnel to 4 secure remote site.” Reexamination Control No. 95/001,270,
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`Action Closing Prosecution, une 16, 2016, Exhibit B, at 48] 6-7. Aventail does nat disclose a
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`non-conventional system. fa In contrast to Aventail, paragraphs [6318] — [6320] of the present
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`application distinguish the claimed mvention from conventional systems. See, generally, Nich
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`Dec, at 4] 10-13.
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`Aventail also does not teach the claimed secure communication link. First,Aventail has
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`not been shown to demonstrate that computers connected via the Aventail system are able to
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`comumunicate with each other as though they were on the same network. fd. at | 25. Aventail
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`discloses establishing point-to-point SOCKS connections betweena chent computer and a
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`SOCKSserver. fd. The SOCKSserver then relays data received to the intended target.
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`fd.
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`Aventail does not disclose a secure communication link, where data can be addressed to a target,
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`ey
`regardicss of the location ofthe target. See, generally, id., (24-27.
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`Serial No.: 11/679,415
`Response to December 7, 2010 Office Action
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`Second, according to Aventail, Aventail Connect’s fundamental operation is
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`mcompatible with users transmitting data that are sensitive to network information. /d. at 728.
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`As stated above, Aventail discloses thatAventail Connect operates between the WinSock and
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`TCP/IP layers, as depicted on page 9:
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`;:::i
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`:
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`S
`eRSnaeBoece
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`:
`i
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`|
` Asmervheadl Comeynect
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`aygeramed Sarees: Poagtetieer :
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`PORAS ohoesk
`|
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`Aventail at 9; id. Because Aventail discloses that Aventail Connect operates between these
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`layers, it can intercept DNS requests. Nich Decl. at 728. Aventail discloses that Aventail
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`Connect intercepts certain DNS requests and returns a false DNS response to the user if the
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`requested hostrarne rnatches a hostname or a user-defined list. fd. Accordingly, Aventail
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`discloses that the user will receive false network information from Aventail Connect for these
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`hostnames.
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`/d. If the client computer hopes to transfer to the target data that is sensitive to
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`network information, Aventail Connect’s falsification of the network information would prevent
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`the correct transfer of data. fd. Aventail has not been shownto disclose a secure communication
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`link.
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`Serial No.: 11/679,416
`Response to December 7, 2010 Office Action
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`Third, Aventail has not been shown to disclose a secure communication link because
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`computers connected according to Aventail do not cornmunicate directly with each other. fd. at
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`#29. Aventail discloses a system where a client on a public network transmits data to a SOCKS
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`server via a singular, point-to-point SOCKS connection at the socket layer of the network
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`architecture. fd. The SOCKSserver then relays that data to a target computer on a private
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`network on which the SOCKS server alse resides. fd. All communications between the client
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`and target stop andstart at the intermediate SOCKS server. fd. The chent cannot open a
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`connection with the target itself. Therefore, one skilled in the art would not have considered the
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`chent and target to be virtually on the same private network. Jd. Instead, the client computer
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`and target computer are deliberately separated by the interrnediate SOCKS server. Ad. For these
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`reasons, Aventatl not onlyfails to disclose the claimed secure communication link.
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`For all these reasons, Applicant respectfully submits that Aventail does not disclose the
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`elements of independent claim 2. Applicant respectfully submits that claim 2 is in condition for
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`allowance. Reconsideration and withdrawal ofthe rejection of independent claim 2 is
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`respectfully requested.
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`independent claims 24, 26, and 28-30 recite one or more of “a secure name,” “a secure
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`name service,” or “a secure cornmunication link.” For the reasons stated above, Applicant
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`respectfully submits that claims 24, 26, and 26-30 are in condition for allowance.
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`Reconsideration and withdrawal ofthe rejection of independent claim 2 is respectfully requested.
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`The other claims currently under consideration in the application are dependent from
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`their respective independent claims discussed above and therefore are believed to be allowable
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`over the applied reterences for at least the reasons providedabovefor their respective
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`independent claims. Because cach dependent claimis deernedto define anadditional aspect of
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`Serial No.: 11/679,415
`Response to December 7, 2010 Office Action
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`the invention, the individual consideration of each on its own merits is respectfully requested.
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`Reconsideration and withdrawal of the rejections of the dependent clairns are respecttully
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`requested.
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`The absence of a reply to a specific rejection, issue, or comment does not signify
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`agreernent with or concession of that rejection, issue, or comment. In addition, because the
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`arguments made above maynot be exhaustive, there may be other reasons for patentability of
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`any or all claims that have not been expressed. Finally, nothing in this paper should be construed
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`as an intent to concede, or an actual concession of, any issue with regard to any claim, or any
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`cited art, except as specifically stated in this paper, and the amendment or cancellation of any
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`claim does not necessarily signify concession of unpatentability of the claimpriorto its
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`amendment or cancellation.
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`Serial No.: 11/679,415
`Response to December 7, 2010 Office Action
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`In light of the Amendments and Remarks herein, the Applicant submits that the pending
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`CONCLUSION
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`claims, claims 2-30, are in condition for allowance and respectfully requests a notice to this
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`effect. Should the Examiner have any questions, please call the undersigned at the phone
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`number listed below.
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`To the extent necessary, a petition for an extension of time (@ months} under 37 CLFLR. §
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`1.136 is hereby made. Please charge any shortage in fees due in connection with the filing of
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`this paper, including extension of time fees, to Deposit Account 501133 and please credit any
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`excess fees to such deposit account.
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`Respectfully submitted,
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`McDERMOTT WILL & EMERY LLP
`
`‘Toby H. Kusmer/
`Toby H. Kusrner
`Registration No. 26,418
`28 State Street
`Boston, MA 02109
`Phone: 617-335-4065
`Facsimile: 617-535-3800
`Date: Fune 7, 2073
`
`DM_US 28866337-1.077580.G015
`
`Date: June 7, 2011
`
`Please recognize our Customer No. 23638 as
`our correspondence address.
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