`
`In re Application of:
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`Larsonet al.
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`Application Scrial No.:
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`11/839,987
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`Filing Date:
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`Title:
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`August 16, 2007
`
`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 No.:
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`Lim, Krisna
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`2453
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`9470
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`077580-0066 (VRNK-1CP2DVCN2)
`Atty. Docket No.:
`
`
`Mail Stop Amendment
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`RESPONSE
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`In response to the non-final Office Action mailed July 8, 2010 (“the Office Action’),
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`please amend the above-identified application as follows:
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`Remarks, beginning on page 2 of this paper.
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`Page 1 of 12
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`VirnetX Exhibit 2008
`Black Swamp IP, LLC v. VirnetX Inc.
`IPR2016-00957
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`
`
`
`VirnetX Exhibit 2008
`Black Swamp IP, LLC v. VirnetX Inc.
`IPR2016-00957
`Trial PGR2016-00007
`
`Page 1 of 12
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`Serial No.: 11/839,987
`Response to June 8, 2010 Office Action
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`Applicant appreciates the Examiner’s examination of the subject application. Claims 1-
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`Remarks
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`18 are currently pending.
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`In the Office Action, the Examiner hasrejected Claims 1-18 under 35 U.S.C. § 103(a), as
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`being unpatentable over VPN Overview and Aventail Connect v 3.1/v2.6 Administrator’s Guide
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`(“Aventail’”). The Examiner rejected claims 1-18 on the ground of nonstatutory obviousness-
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`type double patenting as being unpatentable over claims 2-23 of co-pending Application No.
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`11/679,416.
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`Applicant respectfully traverses the outstanding objection and rejections and requests
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`reconsideration of the subject application in light of the foregoing amendmentsandthe following
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`remarks.
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`Patentability under 35 U.S.C. § 103
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`The Examinerhas rejected Claims 1-18 under 35 U.S.C. § 103(a), as being unpatentable
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`over VPN Overview and Aventail. These rejections are respectfully traversed, and
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`reconsideration and withdrawalof these rejections are respectfully requested.
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`Independent claim 1 recites the following:
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`A methodof accessing a secure network address, comprising:
`sending a query message fromafirst network device to a secure domain
`service, the query message requesting from the secure domain service a secure
`network address for a second network device;
`receiving at the first network device a response message from the secure
`domain name service containing the secure network address for the second
`network device; and
`sending an access request message from the first network device to the
`secure network address using a virtual private network communication link.
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`(emphasis added).
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`Page 2 of 12
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`Page 2 of 12
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`Serial No.: 11/839,987
`Response to June 8, 2010 Office Action
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`As a preliminary matter, neither Aventail nor VPN Overview have been shown to be
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`prior art to all claims in the present application, including claim 1. Aventail is not priorart
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`because the present application claimspriority to U.S. Patent Nos. 6,502,135 (hereinafter “the
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`‘135 patent”) and 7,188,180 (hereinafter “the ‘180 patent’). The ‘135 and ‘180 Patents have
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`been subject to an inter partes reexamination proceedings, Control Nos. 95/001,269 (hereinafter
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`“the ‘269 Reexam’’) and 95/001,270 (hereinafter “the ‘270 Reexam’”), respectively. In both
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`Reexams, the USPTO determined that “Aventail cannot be relied uponasprior art to the
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`[patents]. See Reexamination Control No. 95/001,269, Action Closing Prosecution, June 16,
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`2010, attached as Exhibit A, and Reexamination Control No. 95/001,270, Action Closing
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`Prosecution, June 16, 2010, attached as Exhibit B. This determination was soundly based on the
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`fact that no evidence was foundthat established 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 must be shownto have “been
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`disseminated or otherwise made available to the extent that persons interested and ordinarily
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`skilled in the subject matteror art, exercising reasonable diligence, can locate it.” In re Wyre,
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`655 F.2d 221 (C.C.P.A. 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 wascreated or printed.”
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`Hilgraeve, Inc. v. Symantec Corp., 271 P. Supp. 2d 964, 975 (E.D. Mich. 2003).
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`Presuming the author of the document accurately represented the date the document was
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`created, this creation date is not evidence of any sort of publication or dissemination. Without
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`Page 3 of 12
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`Page 3 of 12
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`Serial No.: 11/839,987
`Response to June 8, 2010 Office Action
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`more, this bald assertion of the creation of the document does not meetthe “publication”
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`standard required for a documentto be relied upon aspriorart.
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`Further exacerbating mattersis the filing date of the ‘135 Patent: February 15, 2000.
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`Supposethe relied upon sections of the Aventail reference were created on December31, 1999,
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`and the copyright date range were accordingly amended to read “1996-1999.” Under these
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`circumstances, it is possible that the document, although created, was not made publicly
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`available until after the filing date of the ‘135 Patent, six weeks after creation. Under these
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`circumstances, Aventail clearly would not be eligible to be relied uponaspriorart to the ‘135
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`Patent.
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`Asan aside, the Applicant notes that the present assignee (VirnetX Inc.) andits
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`prosecution counsel have been accused of inequitable conduct during the ‘269 Reexam in a
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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. In its
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`Original Answer, 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 trial involving Microsoft Corporation. Exhibit C at [23
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`(p. 14). Apple further alleges that “VirnetX was aware that the Aventail reference may have
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`been publishedat least as early as June 1999.” Exhibit C at { 23. 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 J 86 (p. 19); Exhibit E at { 86 (p. 19). To the contrary, the
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`applicants are unaware of evidence establishing Aventail’s publication date, and specifically are
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`unaware of the June 1999 publication date alleged by Apple and Aastra in their pleadings. The
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`trial transcript from the Microsoft trial does not discuss anything about a publication date for the
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`Serial No.: 11/839,987
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`Aventail reference. Exhibit F. While the trial transcript references the Aventail product, it does
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`not mention anything about a publication date. See e.g. Exhibit F-2, pp. 112, 146; Exhibit F-3,
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`pp. 115, 119-20; Exhibit P-10 pp. 21-40; Exhibit F-11, pp. 21-32, 120-150. The deposition of
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`Gary Tomlinson (former employee of Aventail) taken during discovery prior to the Microsoft
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`trial is inconclusive, at best. Exhibit H at pp. 33-36. Thus, although an allegation of knowledge
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`has been madebya third party, the applicants, the assignee and applicants’ prosecution counsel
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`have not had and do not have such knowledge. To be sure, the applicants will notify the USPTO
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`immediately if it becomes aware of evidence of Aventail’s publication date.
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`VPN Overviewhasalso not been shownto be prior art. On its face, VPN Overview only
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`providesthat it was copyrighted in 1998. VPN Overview at 2. Further, the reference identifies
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`itself as being nothing more than a draft. VPN Overviewat 1 (Stating the following: “White
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`Paper —DRAFT”). The lack of a publication date in conjunction with the document’s status as a
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`draft fail to evidence that VPN Overviewis prior art to the present application.
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`Assuming arguendo, that both of these references are prior art to the present application,
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`neither VPN Overview nor Aventail, alone or in combination, are understood to disclose or
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`suggest the features of claim 1. particularly with respect to at least the features of “a virtual
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`private network communication link,” “a secure domain nameservice” and a “secure computer
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`network address.”
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`Aventail’s and VPN Overview’s disclosures were summarized in the Declaration of
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`Professor Jason Nieh in support of the ‘270 Reexam. Reexamination Control No. 95/001,270,
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`Declaration of Jason Nieh, Ph.D., Pursuant to 37 C.F.R. § 1.132, April 19, 2010, attached as
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`Exhibit G (hereinafter “Nieh Decl.’”). The Nieh Decl. is cited herein to characterize the cited
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`references and their deficiencies.
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`Serial No.: 11/839,987
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`Aventail discloses a system and architecture for transmitting data between two
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`computers using the SOCKSprotocol. Nieh Decl. at { 14. The system routes certain, predefined
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`network traffic from a WinSock (Windowssockets) application to an extranet (SOCKS) server,
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`possibly through successive servers. Aventail at 7; Nieh Decl. at { 14. Upon receipt of the
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`network traffic, the SOCKSserver then transmits the network traffic to the Internet or external
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`network. Aventail at 7; Nieh Decl. at { 14. Aventail’s disclosure is limited to connections
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`created at the socket layer of the network architecture. Nieh Decl. at { 14.
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`In operation, a componentof the Aventail Connect software described in the reference
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`resides between WinSock and the 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 each request matcheslocal, preset criteria for redirection to a SOCKSserver.
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`See Aventail at 10; Nieh Decl. at { 15. If redirection is appropriate, then Aventail Connect
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`creates a false DNSentry to return to the requesting application. See Aventail at 12; Nieh Decl.
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`at 16. Aventail discloses that Aventail Connect then forwards the destination hostnameto the
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`extranet SOCK server over a SOCKS connection. See Aventail at 12; Nich Decl. at | 16. The
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`SOCKSserver performs the hostnameresolution. Aventail at 12; Nieh Decl. at { 17. Once the
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`hostnameis resolved, the user can transmit data over a SOCKS connection to the SOCKSserver.
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`Nieh Decl. at { 17. The SOCKSserver, then, separately relays that transmitted data to the target.
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`Nieh Decl. at 7 17.
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`Aventail does not teach a VPN. In fact, the system disclosed in Aventail is incompatible
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`with a VPN,and oneskilled in the art would be unable to combine the two. Theseassertions are
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`true for at least three reasons. First, Aventail has not been shown to demonstrate that computers
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`connected via the Aventail system are able to communicate with each other as though they were
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`on the same network.
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`/d. at { 25. Aventail discloses establishing point-to-point SOCKS
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`connections between a client computer and a SOCKSserver. /d. The SOCKSserver then relays
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`data received to the intended target. Jd. Aventail does not disclose a VPN, where data can be
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`addressed to one or more different computers across the network, regardless of the location of
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`the computer.
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`/d.
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`For example, suppose two computers, A and B, reside on a public network.
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`/d. at { 26.
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`Further, suppose two computers, X and Y, reside on a private network.
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`/d. If A establishes a
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`VPN connection with X and Y’s network to address data to X, and B separately establishes a
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`VPN connection with X and Y’s network to address data to Y, then A would nevertheless be able
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`to address data to B, X, and Y without additional set up.
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`/d. This is true because A, B, X, and Y
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`would all be a part of the same VPN. Jd.
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`In contrast, suppose, according to Aventail, which only discloses communicationsat the
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`socket layer, A establishes a SOCKSconnection with a SOCKSserverfor relaying data to X,
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`and B separately establishes a SOCKS connection with the SOCKSserverfor relaying data to Y.
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`Id. at { 27. In this situation, not only would A be unable to address data to Y without
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`establishing a separate SOCKSconnection (i.e. a WPN according to the Office Action), but A
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`would be unable to address data to B over a secure connection.
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`/d. This is one example of how
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`the cited portions of Aventail fail to disclose a VPN. Id.
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`Second, according to Aventail, Aventail Connect’s fundamental operationis
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`incompatible with users transmitting data that are sensitive to network information.
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`/d. at { 28.
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`Asstated above, Aventail discloses that Aventail Connect operates between the WinSock and
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`TCP/IP layers, as depicted on page 9:
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`Vindovrs: POPAP
`
`CLESeS
`Aithuey yy
`
`apgplicatian
`ke dt oo
`
`
`
`
`
`
` Aventail Tonnect
`
`WainSosde 2
`
`
`i
`
`{Layered Service Provider) {
`aanaan
`‘
`~-
`
`TRAP stank.
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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. Nieh Dec. at 28. Aventail discloses that Aventail
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`Connect intercepts certain DNS requests, and returns a false DNS response to the userif the
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`requested hostname matches a hostnameon a user-defined list. Jd. 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 hopesto 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. Jd. Aventail has not been shownto disclose a VPN.
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`Third, Aventail has not been shownto disclose a VPN because computers connected
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`according to Aventail do not communicate directly with each other.
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`/d. at { 29. Aventail
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`discloses a system where a client on a public network transmits data to a SOCKSservervia a
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`singular, point-to-point SOCKSconnection at the socket layer of the network architecture. Id.
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`The SOCKSserver then relays that data to a target computer on a private network on which the
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`SOCKSserver also resides. Jd. All communications between the client and target stop andstart
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`at the intermediate SOCKSserver. Jd. The client cannot open a connection with the target itself.
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`Therefore, one skilled in the art would not have considered the client and target to be virtually on
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`the same private network.
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`/d. Instead, the client computer and target computer are deliberately
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`separated by the intermediate SOCKSserver. /d. For these reasons, Aventail not only fails to
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`disclose a VPN,butit discloses a system that is inherently incompatible with a VPN.
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`Dr. Nieh also summarized VPN Overview in his declaration. VPN Overview provides an
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`overview of VPNs, describing their basic requirements, and someof the key technologies that
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`permit private networking over public networks. See, VPN Overview at Abstract; Nieh Dec. at
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`30. As described above, Aventail is inherently incompatible with a VPN. Thus, one skilled in
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`the art would be unable to implement the system disclosed in VPN Overview on the system
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`disclosed in Aventail. The two references cannot be combined in the manner suggested in the
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`Office Action of June 9, 2010, even if the references wereprior art to the present application.
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`Accordingly, VPN Overview and Aventail, either alone or in combination, are not understood to
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`disclose, teach, or suggest the features of independent claim 1.
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`Moreover, neither Aventail nor VPN Overview teach or disclose “a secure domain name
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`service” and a “secure computer network address.” Both Aventail and VPN Overview disclose
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`conventional domain nameservices and computer network addresses, but not “a secure domain
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`name” or “a secure computer network address.” See Office Action at 3. Indeed, in
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`reexamination of a patent to which the current application claimspriority, the Patent Office
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`found that neither Aventail nor VPN Overviewteach or disclose “a secure domain name
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`service.” Reexamination Control No. 95/001,270, Action Closing Prosecution, June 16, 2010,
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`attached as Exhibit B, at {§[ 6-7 and 9-10.
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`(“‘Aventail does not teach the claimed .
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`.
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`. secure
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`domain nameservice .
`
`.
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`. as being a part of a non-conventional domain name system;” “WPN
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`Overview [does not] teach the claimed .
`
`.
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`. secure domain nameservice .
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`.
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`. as being a part of a
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`non-conventional domain namesystem.” Paragraphs [0303] — [0306] of the application also
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`support the distinction that “a secure domain name” and “a secure computer network address”
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`are not conventional domain nameservices and computer network addresses. See also Nieh Dec.
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`at { 10-13.
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`Forall these reasons, Applicant respectfully submits that neither Aventail nor VPN
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`Overview teach or disclose the elements of independent claim 1. Applicant respectfully submits
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`that claim 1 is in condition for allowance. Reconsideration and withdrawalof the rejection of
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`independentclaim 1 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 referencesfor at least the reasons provided abovefor their respective
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`independent claims. Because each dependent claim is deemed to define an additional aspect of
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`the invention, the individual consideration of each on its own merits is respectfully requested.
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`Reconsideration and withdrawalof the rejections of the dependent claimsare respectfully
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`requested.
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`The absenceof a reply to a specific rejection, issue, or comment doesnotsignify
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`agreement with or concession of that rejection, issue, or comment. In addition, because the
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`arguments made above may not be exhaustive, there may be other reasonsfor 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 amendmentor cancellation of any
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`claim does not necessarily signify concession of unpatentability of the claim prior toits
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`amendmentor cancellation.
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`Non-statutory Double Patenting Rejection
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`Examiner has rejected claims 1-18 on the ground of nonstatutory obviousness-type
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`double patenting as being unpatentable over claims 2-23 of co-pending Application No.
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`11/679,416. Accordingly, Applicant submits herewith a terminal disclaimer. Applicant
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`respectfully submits that this rejection has been overcome and requests withdrawal of this
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`rejection.
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`Serial No.: 11/839,987
`Response to June 8, 2010 Office Action
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`In light of the Amendments and Remarksherein, the Applicant submits that the pending
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`CONCLUSION
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`claims, claims 1-19, 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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`numberlisted below.
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`To the extent necessary, a petition for an extension of time (3 months) under 37 C.F.R. §
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`1.136 is hereby made. Please charge any shortage in fees due in connection with thefiling 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,
`
`McDERMOTT WILL & EMERY LLP
`
`/Toby H. Kusmer/
`Toby H. Kusmer
`Registration No. 26,418
`28 State Street
`Boston, MA 02109
`Phone: 617-535-4065
`Facsimile: 617-535-3800
`Date: January 10, 2011
`
`DM_US27382961-1.077580.0066
`
`Please recognize our Customer No. 23630 as
`our correspondence address.
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