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`UNITED STA TES DEPARTMENT OF COMMERCE
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`United States Patent and Trademark Office
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`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`www.uspto.gov
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO. CONFIRMATION NO.
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`95/001,788
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`10/18/2011
`
`Victor Larson
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`077580-0146
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`5823
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`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
`
`22852
`7590
`05/27/2014
`
`
`LLP
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`EXAMINER
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`FOSTER, ROLAND G
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`901 NEW YORK A VENUE, NW
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`WASHINGTON, DC 20001-4413
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`ART UNIT
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`PAPER NUMBER
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`3992
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`MAILDATE
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`DELIVERY MODE
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`05/27/2014
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL-90A (Rev. 04/07)
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`
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`Control No.
`Transmittal of Communication to
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`95/001,788
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`Third Party Requester
`Examiner
`Inter Partes Reexamination
`ROLAND FOSTER
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`Patent Under Reexamination
`
`LARSON ET AL.
`Art Unit
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`3992
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
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`r-1 --
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`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS) ----.I
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`SIDLEY AUSTIN LLP
`2001 Ross Avenue, Suite 3600
`Dallas, TX
`75201
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`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
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`in the above-identified reexamination prceeding. 37 CFR 1.903.
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`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
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`the inter partes reexamination
`the third party requester of
`may once file written comments within a
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`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
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`statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot be extended. See also 37 CFR 1.947.
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`If an ex parte reexamination has been merged with the inter partes reexamination,
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`no responsive
`by any ex parte third party requester is
`permitted.
`submission
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`All correspondence
`relating to this inter partes reexamination proceeding should be directed to the
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`
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`Central Reexamination Unit at the mail, FAX, or
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`hand-carry addresses given at the end of the
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`communication enclosed with this transmittal.
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`U.S. Patent and Trademark Office
`PTOL-2070 (Rev. 07-04)
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`PaperNo.20140520
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`
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`Control No.
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`Patent Under Reexamination
`
`Right of Appeal Notice
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`(37 CFR 1.953)
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`95/001,788
`Examiner
`
`LARSON ET AL.
`Art Unit
`
`ROLAND FOSTER
`3992
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. --
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`Responsive to the communication(s) filed by:
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`
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`Patent Owner on 16 December, 2012
`2013 Third Party(ies) on 23 January,
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`Patent owner and/or third party requester(s) may file a notice of appeal with respect to any adverse decision
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`with payment of the fee set forth in 37 CFR 41.20(b)(1) within
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`one-month or thirty-days (whichever is
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`longer). See MPEP 2671. In addition, a party may file a notice of cross appeal and pay the 37 CFR
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`of appeal. See timely filed notice 41.20(b)(1) fee within fourteen days of service of an opposing party's
`MPEP 2672.
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`proceeding should be directed to the All correspondence relating to this inter partes reexamination Central
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`at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`Reexamination Unit
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`If no party timely files a notice of appeal, prosecution on the merits of this reexamination proceeding will be
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`concluded, and the Director of the USPTO will proceed to issue and publish a certificate under 37 CFR 1.997 in
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`accordance with this Office action.
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`The proposed amendment filed
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`D will not be entered*
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`D will be entered
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`*Reasons for non-entry are given in the body of this notice.
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`__
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`__
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`__
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`__
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`__
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`1 a. [8'.I Claims 1-60 are subject to
`reexamination.
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`1 b. D Claims are not subject to reexamination.
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`2. D Claims have been cancelled.
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`3. D Claims are confirmed. [Unamended patent claims].
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`4. D Claims are patentable. [Amended or new claims].
`5. 1:8:1 Claims 1-60 are rejected.
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`to. 6. D Claims are objected
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`D are acceptable. D are not acceptable.
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`7. D The drawings filed on __
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`request filed on __ 8. D The drawing correction
`is D approved. D disapproved.
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`copy or (f). The certified for priority under 35 U.S.C. 119 (a)-(d) 9. D Acknowledgment is made of the claim
`has:
`D been received.
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`10.D Other
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`D not been received. D been filed in Application/Control No. __ .
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`__
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`Attachments
`1. D Notice of References Cited by Examiner, PT0-892
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`2. D Information Disclosure Citation, PTO/SB/08
`3. D --
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`U.S. Patent and Trademark Office
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`PTOL-2066 (08-06)
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`Right of Appeal Notice (37 CFR 1.953)
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`Part of Paper
`No. 20140520
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`Application/Control Number: 95/001,788
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`Page 2
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`Art Unit: 3992
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`SUPPLEMENTAL RIGHT OF APPEAL NOTICE
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`1. Introduction
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`This Office action addresses claims 1-60 of United States Patent No. 7,418,504 B2 (the
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`"Larson" patent), for which reexamination was granted in the Order Granting Inter Partes
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`Reexamination (hereafter the "Order"), mailed December 29, 2011 in response to a Request for
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`Inter Partes Reexamination, filed October 18, 2011 (the "Request").
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`An Action Closing Prosecution ("ACP") mailed September 26, 2012 rejected all original
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`claims 1-60 of the Larson patent.
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`The patent owner responded by filing arguments and associated evidence on December
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`26, 2012 (the "Response").
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`The third party requester responded by filing Comments on the Patent Owner's Response
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`on January 23, 2013 (the "Comments").
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`The patent owner also filed a supplemental declaration of Angelos D. Keromytis, Ph.D
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`on December 26, 2012 (the "Supplemental Keromytis Declaration"), which is entered into the
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`record and considered in this Office action in accordance with the Petition Decision mailed
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`February 27, 2014. As indicated in the prior Right of Appeal Notice (page 3), the Examiner
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`previously reviewed the Supplemental Keromytis Declaration. Because this Declaration is now
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`Application/Control Number: 95/001,788
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`Page 3
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`Art Unit: 3992
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`of record, the Examiner's prior review of the Supplemental Keromytis Declaration is made
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`explicit in this Office action.
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`Conclusion
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`The examiner has fully considered the arguments and evidence of record provided in the
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`patent owner's Response, the third party requester's Comments, and the Supplemental Keromytis
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`Declaration. Based on consideration of the entire record, the third party requester's arguments
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`and evidence are deemed more persuasive. See the "Response to Arguments" section for further
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`explanation. All prior rejections are maintained. Accordingly, this Office action is made a Right
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`of Appeal Notice, which is a final Office action. See MPEP § 2673.01, .02. See also the
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`"conclusion" section to this Office action.
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`Submissions after the Action Closing Prosecution (ACP)
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`Said Response, Comments and Supplemental Keromytis Declaration (which was
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`previously reviewed) were submitted after the ACP, all of which have been entered for the
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`reasons discussed above.
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`Application/Control Number: 95/001,788
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`Page 4
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`Art Unit: 3992
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`2.
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`Final Decisions
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`2.A.
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`Final Decisions Regarding Patentability -Right of Appeal
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`37 CFR § 1.953 states regarding the Examiner's Right of Appeal Notice in an inter partes
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`reexamination:
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`(c) The Right of Appeal Notice shall be a final action, which comprises a final rejection setting
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`forth each ground of rejection and /or final decision favorable to patentability including each
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`determination not to make a proposed rejection, an identification of the status of each claim, and
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`the reasons for decisions favorable to patentability and /or the grounds of rejection for each
`claim ....
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`35 U.S.C. 315, in turn, states regarding an appeal from an inter partes reexamination:
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`(a) PATENT OWNER. -The patent owner involved in an inter partes reexamination
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`
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`proceeding under this chapter -
`of section 134 ... with respect to any decision
`(1) may appeal under the provisions
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`
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`adverse to the patentability of any original or proposed amended or new claim of
`the patent; and
`(2) may be a party to any
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`(b).
`-(b) THIRD-PARTY REQUESTER. -A third-party requester
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`of section 134 ... with respect to
`(1) may appeal under the provisions
`any final
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`decision favorable to the patentability of any original or proposed amended or
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`new claim of the patent.. ..
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`appeal taken by a third-party requester under subsection
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`2.B.
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`Final Decision Favorable to Patentability
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`(Determinations NOT to Adopt the Proposed Rejections)
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`There are no final decisions favorable to patentability.
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`Application/Control Number: 95/001,788
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`Page 5
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`Art Unit: 3992
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`2C.
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`Final Decision Unfavorable to Patentability
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`(Determinations to Adopt the Proposed Rejections)
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`A total of ten references, in certain combinations, have been asserted in the Request as
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`providing teachings relevant to the claims of the Larson patent.
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`Solana, E. et al., "Flexible Internet Secure Transactions Based on Collaborative
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`Domains," Lecture Notes in Computer Science, Vol. 1361, at 37-51 (1997), attached to
`the Request as Exhibit X l ("Solana").
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`U.S. Patent No. 6,557,037 to Provino, attached to the Request as Exhibit X2 ("Provino").
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`U.S. Patent No. 6,496,867 to Beser, attached to the Request as Exhibit X3 ("Beser").
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`Atkinson, R., IETF RFC 2230, "Key Exchange Delegation Record for the DNS,"
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`November 1997, attached to the Request as Exhibit X4 ("RFC 2230").
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`Eastlake, D. et al., IETF RFC 2538, "Storing Certificates in the Domain Name System
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`(DNS)," March 1999, attached to the Request as Exhibit X5 ("RFC 2538").
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`Kent, S. et al., IETF RFC 2401, "Security Architecture for the Internet Protocol,"
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`November 1998, attached to the Request as Exhibit X6 ("RFC 2401").
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`Eastlake, D. et al., IETF RFC 2064, "Domain Name System Security Extensions,"
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`January 1997, attached to the Request as Exhibit X7 ("RFC 2065").
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`Postel, J. et al., IETF RFC 920, "Domain Requirements," October 1984, attached to the
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`Request as Exhibit X8 ("RFC 920").
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`Guttman, E. et al., IETF RFC 2504, "Users' Security Handbook,'' February 1999,
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`attached to the Request as Exhibit X9 ("RFC 2504").
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`Reed, M. et al., "Proxies for Anonymous Routing,'' Ith Annual Computer Security
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`Applications Conference, Sand Diego, CA (December 9-13, 1996), attached to the
`Request as Exhibit X l 0 ("Reed").
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`The third party requester also cited six prior art patents and printed publications to
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`demonstrate the knowledge in the field of the invention.
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`Application/Control Number: 95/001,788
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`Page 6
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`Art Unit: 3992
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`Goldschlag et al., "Hiding Routing Information," Workshop on Information Hiding,
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`Cambridge, UK, May 1996, attached to the Request as Exhibit Y l ("Goldschlag").
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`Mockapetris, P., RFC 1035, "Domain Names - Implementation and Specification,"
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`November 1987, attached to the Request as Exhibit Y2 ("RFC 1035").
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`Braken, R., RFC 1123, "Requirements for Internet Hosts -Application and Support,"
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`October 1989, attached to the Request as Exhibit Y3 ("RFC 1123").
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`Atkinson, R., RFC 1825, "Security Architecture for the Internet Protocol," August 1995,
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`attached to the Request as Exhibit Y 4 ("RFC 1825").
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`Housley, R. et al., RFC 2459, "Internet X.509 Public Key Infrastructure Certificate and
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`CRL profile," January 1999, attached to the Request as Exhibit Y5 ("RFC 2459").
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`Mockapetris, P., RFC 1034, "Domain Names -Concepts and Facilities," November
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`1987, attached to the Request as Exhibit Y 4 ("RFC 1034").
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`2.D. Summary Regarding Those Proposed Rejections Adopted by the Examiner
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`The rejections identified in Issues 1-35 are adopted because the stated combinations
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`establish a reasonable likelihood that the requester will prevail with respect to at least one of the
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`claims 1-60 in the Larson patent, as explained in said Order.
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`2.E. Entitlement to the Benefit of an Earlier Filing Date
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`Some of the references cited are intervening art. MPEP 2617. Requestor asserts that the
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`instant claims are not entitled to the earliest filing date of October 30, 1998, the filing date of the
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`oldest parent, provisional application. The examiner agrees. U.S. Patent No. 7,010,604, which
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`issued from parent application 09/429,643, and which was filed Oct. 29, 1999, fails to explicitly
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`recite nor imply the phrase "domain name service" present in all independent claims in the
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`Application/Control Number: 95/001,788
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`Page 7
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`Art Unit: 3992
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`Larson patent for which reexamination is now sought. Indeed, the 7,010,604 patent does not
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`appear to even be directed to services similar to domain name lookup. The patent thus neither
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`provides written description support nor enables the subject matter recited in claims 1-60 of the
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`Larson patent. Accordingly, the Larson patent is not entitled to the benefit of the 7,010,604
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`patent filing date. The effective filing date for claims 1-60 is no earlier than the filing date of the
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`U.S. Patent No. 6,502,135, which issued from parent application 09/504,783.
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`2.F. Rejections Based upon Solana (Issues 1-8)
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`Claim Rejections -35 USC§ 102
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`The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless -
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or
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`on sale in this country, more than one year prior to the date of application for patent in the United States.
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`Claims 1, 2, 5, 6, 8, 9, and 14-60
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`are rejected under 35 U.S.C. 102(b) as being
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`anticipated by Solana.
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`Claim Rejections -35 USC§ 103
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in
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`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
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`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
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`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
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`manner in which the invention was made.
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`Application/Control Number: 95/001,788
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`Page 8
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`Art Unit: 3992
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`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Solana as applied to the respective, parent claims above (if applicable), and
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`further in view of RFC 920.
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`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Solana as
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`applied to the respective, parent claims above (if applicable), and further in view of Reed.
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`Claims 7, 32 and 56 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Solana as applied to the respective, parent claims above (if applicable), and further in view of
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`Beser.
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`Claims 1, 2, 5, 6, 8, 9 and 14-60 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Solana as applied to the respective, parent claims above (if applicable), and
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`further in view of RFC 2504.
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`Claims 2-5, 24, 25, 37, 48 and 49 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Solana as applied to the respective, parent claims above (if applicable), and
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`further in view of RFC 2504, and further in view of RFC 920.
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`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Solana as
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`applied to the respective, parent claims above (if applicable), and further in view of RFC 2504,
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`and further in view of Reed.
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`Application/Control Number: 95/001,788
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`Page 9
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`Art Unit: 3992
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`Claims 7, 32 and 56 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`Solana as applied to the respective, parent claims above (if applicable), and further in view of
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`RFC 2504, and further in view of Beser.
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`Incorporation by Reference
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`Thus, the third party requester proposed rejection of claims 1-60 on pages 14-116 of the
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`Request and Exhibits C l and C2 (claim charts), are adopted and incorporated by reference.
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`2.G. Rejections Based upon Provino (Issues 9-20)
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`Claim Rejections -35 USC§ 102
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`The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless -
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`( e) the invention was described in (1) an application for patent, published under section 122(b ), by another filed
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`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
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`patent by another filed in the United States before the invention by the applicant for patent, except that an
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`international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this
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`subsection of an application filed in the United States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
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`Claims 1, 2, 5,
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`6, 8, 9 and 14-60 are rejected under 35 U.S.C. 102(e) as being anticipated
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`by Provino.
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`Application/Control Number: 95/001,788
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`Page 10
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`Art Unit: 3992
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`Claim Rejections -35 USC§ 103
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`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
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`further in view of RFC 920.
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`Claims 10-13
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`are rejected under 35 U.S.C. 103(a) as being unpatentable over Provino as
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`applied to the respective, parent claims above (if applicable), and further in view of Reed.
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`Claims 7, 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Solana as applied to the respective, parent claims above (if applicable), and further in view
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`of Beser.
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`Claims 1, 2, 5, 6, 8, 9 and 14-60 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
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`further in view of RFC 2230.
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`Claims 2-5, 24, 25, 37, 48 and 49 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
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`further in view of RFC 2230, and further in view of RFC 920.
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`Application/Control Number: 95/001,788
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`Page 11
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`Art Unit: 3992
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`Claims 10-13
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`are rejected under 35 U.S.C. 103(a) as being unpatentable over Provino as
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`applied to the respective, parent claims above (if applicable), and further view of RFC 2230, and
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`further in view of Reed.
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`Claims 7, 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Provino as applied to the respective, parent claims above (if applicable), and further in view
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`of RFC 2230, and further in view of Beser.
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`Claims 1, 2, 5, 6, 8, 9 and 14-60 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
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`further in view of RFC 2504.
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`Claims 2-5, 24, 25, 37, 48 and 49 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
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`further in view of RFC 2504, and further in view of RFC 920.
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`Claims 10-13
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`are rejected under 35 U.S.C. 103(a) as being unpatentable over Provino as
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`applied to the respective, parent claims above (if applicable), and further view of RFC 2504, and
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`further in view of Reed.
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`Application/Control Number: 95/001,788
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`Page 12
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`Art Unit: 3992
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`Claims 7, 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over Provino as applied to the respective, parent claims above (if applicable), and further in view
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`of RFC 2504, and further in view of Beser.
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`Incorporation by Reference
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`Thus, the third party requester proposed rejection of claims 1-60 on pages 117-223 of the
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`Request and Exhibits C3, C4 and C5 (claim charts), are adopted and incorporated by reference.
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`2.H. Rejections Based upon Beser (Issues 21-24)
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`Claim Rejections - 35 USC§ 102
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`Claims 1, 2, 5-7 and 14-60 are rejected under 35 U.S.C. 102(e) as being anticipated by
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`Beser.
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`Claim Rejections -35 USC§ 103
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`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Beser as applied to the respective, parent claims above (if applicable), and
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`further in view of RFC 920.
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`Claims 8 and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable over Beser as
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`applied to the respective, parent claims above (if applicable), and further in view of RFC 2401.
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`Application/Control Number: 95/001,788
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`Page 13
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`Art Unit: 3992
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`Claims 10-13
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`are rejected under 35 U.S.C. 103(a) as being unpatentable over Beser as
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`applied to the respective, parent claims above (if applicable), and further view of RFC 2401, and
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`further in view of Reed.
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`Incorporation by Reference
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`Thus, the third party requester proposed rejection of claims 1-60 on pages 224-275 of the
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`Request and Exhibit C6 (claim chart), are adopted and incorporated by reference.
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`2.1. Rejections Based upon RFC 2230 (Issues 25-29)
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`Claim Rejections - 35 USC§ 102
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`Claims 1, 2, 6, 7 and 14-60 are rejected under 35 U.S.C. 102(b) as being anticipated by
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`RFC 2230.
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`Claim Rejections -35 USC§ 103
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`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over RFC 2230 as applied to the respective, parent claims above (if applicable), and
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`further in view of RFC 920.
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`Claims 8 and 9
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`are rejected under 35 U.S.C. 103(a) as being unpatentable over RFC
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`2230 as applied to the respective, parent claims above (if applicable), and further in view of RFC
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`2401.
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`Application/Control Number: 95/001,788
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`Page 14
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`Art Unit: 3992
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`Claims 10-13
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`are rejected under 35 U.S.C. 103(a) as being unpatentable over RFC 2230
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`as applied to the respective, parent claims above (if applicable), and further view of RFC 2401,
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`and further in view of Reed.
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`Claims 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable over
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`RFC 2230 as applied to the respective, parent claims above (if applicable), and further in view of
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`RFC 2230, and further in view of Beser.
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`Incorporation by Reference
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`Thus, the third party requester proposed rejection of claims 1-60 on pages 276-321 of the
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`Request and Exhibit C7 (claim chart), are adopted and incorporated by reference.
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`30-35) 2.J. Rejections Based upon RFC 2538 (Issues
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`Claim Rejections -35USC§102
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`(a) the invention was known or used by others in this country, or patented or described in a printed publication in
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`this or a foreign country, before the invention thereof by the applicant for a patent.
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`Claims 1, 2, 6, 14-22, 24-46, 48-52 and 57-60 are rejected under 35 U.S.C. 102(a) as
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`being anticipated by RFC 2538.
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`Claim Rejections -35USC§103
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`Claims 3, 4, 24, 25, 48 and 49 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over RFC 2538 as applied to the respective, parent claims above (if applicable), and further in
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`view of RFC 920.
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`Application/Control Number: 95/001,788
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`Page 15
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`Art Unit: 3992
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`Claims 8 and 9
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`are rejected under 35 U.S.C. 103(a) as being unpatentable over RFC
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`2538 as applied to the respective, parent claims above (if applicable), and further in view of RFC
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`2401.
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`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over RFC 2538
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`as applied to the respective, parent claims above (if applicable), and further view of RFC 2401,
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`and further in view of Reed.
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`Claims 7, 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable
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`over RFC 2538 as applied to the respective, parent claims above (if applicable), and further in
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`view of Beser.
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`Claims 5, 23 and 47
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`are rejected under 35 U.S.C. 103(a) as being unpatentable over RFC
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`2538 as applied to the respective, parent claims above (if applicable), and further in view of RFC
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`2065.
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`Incorporation by Reference
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`Thus, the third party requester proposed rejection of claims 1-60 on pages 322-364 of the
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`Request and Exhibit C8 (claim chart), are adopted and incorporated by reference.
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`Application/Control Number: 95/001,788
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`Page 16
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`Art Unit: 3992
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`3. Response to Arguments
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`The examiner has considered the arguments and evidence of record provided in both the
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`patent owner's Response, in the third party requester's Comments, and in the Supplemental
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`Keromytis Declaration. Based on consideration of the entire record, the third party requester's
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`arguments and evidence are deemed more persuasive.
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`The patent owner appears to have presented new arguments in the Response while
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`dropping other arguments first presented in response to the ACP. The reader of this RAN is
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`requested to consult the prosecution history, including the ACP, if "older" arguments are again
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`presented in the patent owner's Brief, should one be filed.
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`3.1. Claim Interpretation
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`Claim 1, which is representative, broadly recites (emphasis added):
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`A system for providing a domain name service for establishing a secure
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`communication link, the system comprising:
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`a domain name service system configured to be connected to a communication network, to store
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`a plurality of domain names and corresponding network addresses, to receive a query for a
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`network address, and to comprise an indication that the domain name service system
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`supports establishing a secure communication link.
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`Thus, claim 1 recites a domain name service ("DNS") "system" and not a particular
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`computer device or structural configuration, such as a single secure DNS server. Such an
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`see, e.g.,
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`interpretation is consistent with the specification of the patent under reexamination, col.
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`40, 11. 35-48, where the DNS system is implemented using gatekeeper 2603, DNS proxy 2610
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`Application/Control Number: 95/001,788
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`Page 17
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`Art Unit: 3992
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`and DNS server 2609. The examiner agrees with the requester, who notes the "DNS system
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`according to the claims can be distributed across multiple computer systems .... " Fratto
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`Declaration, June 25, 2012, paragraph 30. Thus, the DNS system is reasonably interpreted as
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`comprising a single device or multiple devices.
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`The patent owner characterizes the invention as a special and separate DNS device that
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`traps DNS queries, determines whether the query is from a "special type of user," and then
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`actively assists in the creation of a virtual private network ("VPN") link. See the original
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`Declaration of Angelos D. Keromytis, Ph.D., filed on March 29, 2012 (the original "Keromytis"
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`declaration), <JI 17-19.
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`Regarding whether the DNS device(s) are a separate device, as discussed above, the
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`claims do not recite a particular special DNS device, much less a device physically separate from
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`a conventional DNS server, which is also consistent with the specification of the patent under
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`reexamination. Indeed in one embodiment, the patent owner states "It will be appreciated that
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`the functions of DNS proxy 2610 and DNS server 2609 can be combined into a single server for
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`convenience." (Col. 40, 11. 43-45) (emphasis added).
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`In view of the above, the claimed DNS "system" is interpreted reasonably broad
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`consistent with the specification to comprise a single device (e.g., a DNS server) or various
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`combinations of multiple devices (e.g., a DNS server and other DNS devices) (e.g., a DNS
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`server, a DNS proxy) (e.g., a DNS server, a DNS proxy, and other DNS devices).
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`Application/Control Number: 95/001,788
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`Page 18
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`Art Unit: 399 2
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`Regarding whether the DNS system determines the query is from a special user and then
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`actively assists in the establishment of a VPN, the patent owner asserts the special DNS server
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`2602 (Fig. 26) in the patent under reexamination differs from a conventional DNS server in that
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`"DNS proxy 2610 [part of DNS server 2602] ... determines whether the computer 2601 is
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`authorized to access the site" and, if so, "transmits a message to gatekeeper 2603 to facilitate the
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`creation of a VPN link between computer 2601 and secure target site 2604". Original Keromytis
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`Declaration, paragraph 18. "DNS proxy 2610 then responds to the computer's 2601 DNS
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`request with an address received from the gatekeeper 2604." Id. That is, rather than
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`conventionally returning a public key to the initiator (e.g., computer 2601) so that the target and
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`the initiator can establish a VPN, the special DNS server authenticates the request, then relies
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`upon the services of a gatekeeper to receive an address (e.g., a "hopblock" address, col. Col. 40,
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`11. 15-25) that the DNS server then provides to the initiator so that the initiator and target can
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`establish a VPN. See also the original Keromytis Declaration, <JI 19.
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`The claims however do not recite a DNS "server" (as previously discussed) much less a
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`DNS server that authenticates a user and relies upon the services of a gatekeeper, which is also
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`consistent with the specification. Indeed in one embodiment, the patent owner states the DNS
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`server (SDNS 3319) is queried "in the clear" (without using a VPN link) and without
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`authenticating the user. Col. 51, 11. 48-61. The server then replies without the use of a
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`gatekeeper 3314 "in the clear" so that the initiator and the target can establish a VPN. Id.
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`Application/Control Number: 9 5/001,788
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`Page 19
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`In view of the above, the claimed DNS system is interpreted reasonably broad consistent
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`with the specification has not requiring a DNS server capable of authenticating the user and not
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`requiring the services of a gatekeeper to aid in the establishment of a VPN.
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`The district court in related litigation interpreted "indication" as having no special
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`meaning in view of the specification of the patent under reexamination and indeed the
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`specification does not use this term specifically. Thus, the term may be construed broadly to
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`mean a visible message or signal to a user that the DNS system supports establishing a secure
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`communication link. Markman Claim Construction Order, April 25, 2012, p. 27, Virtnetx Inc.
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`v.
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`Cisco Systems, Inc., Case No. 6: 1 O-CV-41 7, District Court for the Eastern District of Texas.
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`Attached as Ex. A. to the Comments on the Action Closing Prosecution, filed September 20,
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`2012.
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`Moreover, the Larson patent under reexamination states:
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`Preferably, a user enables a secure communication link using a single click of a mouse, or a
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`corresponding minimal input from another input device such as a keystroke entered on a
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`keyboard or a click entered through a trackball. Alternatively, the secure link is automatically
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`established as a default setting at boot-up of the computer (i.e., no click).
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`Col. 49 , 11. 6-12.
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`Thus, the "specification envisions alternative methods of activating a secure
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`communication link other than clicking a hyperlink, which is necessarily visible ... Neither the
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`specification nor the claim language provides a basis for limiting 'indicating' to a visual
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`Page 20
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`Art Unit: 3 9 92
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`(Markman
`indicator."
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`at 27). Inde