UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTIVIENT OF COMMERCE
`United States Patent and ‘Trademark Ofine
`Address: COMIMISSIONER FOR PATENTS
`PD. Box 1450
`A|axandrla.Vi.rgi.I:|ia 22313-14-SD
`www.nIp1o.g0|f
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVEVTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95I001.789
`
`l0I18I20ll
`
`7921211
`
`41484-80150
`
`6053
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
`1.I_.P
`901 NEW YORK AVENUE, NW
`wAsHINGToN,Dc20oo1-4413
`
`FOSTER, ROLAND <3
`
`3992
`
`MAIL DATE
`
`05f23I20l4
`
`DELIVERY MODE
`
`PAPER
`
`Please find below andlor attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 0410'?)
`
`EXHIBIT 1009
`
`Black Swamp IP, LLC V. VirnetX, Inc.
`IPR of U.S. Patent No. 7,921,211
`
`

`
`.
`
`_
`
`_
`
`*'a"s""***"°'°°"'"'""'°='*'°"*°
`Third Party Requester
`
`
`
`Co
`
`IN .
`
`EZWWELL39
`
`ROLAND FOSTER
`
`P
`
`U d
`
`Fl
`
`'
`
`79212“
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address. —
`
`% (THIRD PARTY REQUESTER’S CORRESPONDENCE ADDRESS) —-—-I
`
`SIDLEY AUSTIN LLP
`2001 Ross Avenue, Suite 3600
`Dallas. TX 75201
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above-identified reexamination prceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this communication,
`the third party requester of the inter partes reexamination may once file written comments within a
`period of 30 days from the date of service of the patent owner's response. This 30-day time period is
`statutory (35 U.S.C. 314(b)(2)). and, as such, it cannot be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceedin should be directed to the
`central Reexamination Unit at the mail, FAX, or hand—carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`U.S. Patent and Trademark Office
`PTOL-2070 (Rev. 07-04)
`
`Paper No. 20140520
`
`

`
`Right of Appeal Notice
`951001 739
`7921211
`‘3’ 1
`
`ROLAND FOSTER
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address. -
`
`Responsive to the communication(s) filed by:
`Patent Owner on 26 December 2012
`
`Third Party(ies) on 23 January, 2013
`
`Patent owner and/or third party requester(s) may file a notice of appeal with respect to any adverse decision
`with payment of the fee set forth in 37 CFR 41 .20(b)(1) within one-month or thirty-days (whichever is
`longer). See MPEP 2671. In addition, a party may file a notice of cross appeal and pay the 37 CFR
`41 .20(b)(1) fee within fourteen days of service of an opposing party's timely filed notice of appeal. See
`MPEP 2672.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`If no party timely files a notice of appeal, prosecution on the merits of this reexamination proceeding will be
`concluded, and the Director of the USPTO will proceed to issue and publish a certificate under 37 CFR 1.997 in
`accordance with this Office action.
`
`The proposed amendment filed
`
`[I will be entered
`
`[I will not be entered*
`
`*Fleasons for non—entry are given in the body of this notice.
`
`S-°.°°.".°>.‘-":"S*’!“
`
`Claims 1_-cg are subject to reexamination.
`1a.
`1b. El Claims _: are not subject to reexamination.
`El Claims _ have been cancelled.
`El Claims __ are confirmed. [Unamended patent claims].
`[I Claims __ are patentable. [Amended or new claims].
`IZI Claims bi are rejected.
`El Claims
`are objected to.
`|:| are not acceptable.
`[I The drawings filed on j [I are acceptable.
`El The drawing correction request filed on
`is El approved. El disapproved.
`I:I Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-(d) or (f). The certified copy
`has:
`[I been received.
`10. El Other
`
`I:I not been received.
`
`[I been filed in Application/Control No.
`
`Attachmgng
`1. E] Notice of References Cited by Examiner, PTO-892
`2. I] Information Disclosure Citation, PTO/SB/08
`3-El
`
`U.S. Patent and Trademark Office
`PTOL-2066 (08-06)
`
`Right of Appeal Notice (31 CFR 1.953)
`
`Part of Paper No. 20140520
`
`

`
`Application/Control Number: 95/001,789
`Art Unit: 3992
`
`Page 2
`
`SUPPLEMENTAL RIGHT OF APPEAL NOTICE
`
`L
`
`Introduction
`
`This Office action addresses claims 1-60 of United States Patent No. 7,921,211 B2 (the
`
`"Larson" patent), for which reexamination was granted in the Order Granting Inter Parres
`
`Reexamination (hereafter the "Order"), mailed January 18, 2012 in response to a Request for
`
`Inter Partes Reexamination, filed October 18, 2011 (the "Request").
`
`An Action Closing Prosecution ("ACP") mailed September 26, 2012 rejected all original
`
`claims 1-60 of the Larson patent.
`
`The patent owner responded by filing arguments and associated evidence on December
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`26, 2012 (the "Response").
`
`The third party requester responded by filing Comments on the Patent Owner's Response
`
`on January 23, 2013 (the "Comments").
`
`The patent owner also filed a supplemental declaration of Angelos D. Keromytis, Ph.D
`
`on December 26, 2012 (the "Supplemental Keromytis Declaration"), which is entered into the
`
`record and considered in this Office action in accordance with the Petition Decision mailed
`
`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
`
`

`
`Application/Control Number: 95/001,789
`
`Art Unit: 3992
`
`Page 3
`
`of record, the Examiner's prior review of the Supplemental Keromytis Declaration is made
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`explicit in this Office action.
`
`Conclusion
`
`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
`
`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
`
`of Appeal Notice, which is a final Ofiice action. See MPEP § 2673.01, .02. See also the
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`“conclusion” section to this Office action.
`
`Submissions after the Action Closing Prosecution (ACP)
`
`Said Response, Comments and Supplemental Keromytis Declaration (which was
`
`previously reviewed) were submitted after the ACP, all of which have been entered for the
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`reasons discussed above.
`
`

`
`ApplicationlContro1 Number: 95/001,789
`
`Art Unit: 3992
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`Page 4
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`2.
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`2.A.
`
`Final Decisions
`
`Final Decisions Regarding Patentability — Right of Appeal
`
`37 CFR § 1.953 states regarding the Examiner’s Right ofAppeal Notice in an inter partes
`
`reexamination:
`
`(c) The Right of Appeal Notice shall be a final action, which comprises a final rejection setting
`forth each ground of rejection and for final decision favorable to patentability including each
`determination not to make a proposed rejection, an identification of the status of each claim, and
`the reasons for decisions favorable to patentability and for the grounds of rejection for each
`claim....
`
`35 U.S.C. 315, in turn, states regarding an appeal from an inter partes reexamination:
`
`(a) PATENT OWNER. —— The patent owner involved in an inter partes reexamination
`proceeding under this chapter —
`(1)
`may appeal under the provisions of section 134...with respect to any decision
`adverse to the patentability of any original or proposed amended or new claim of
`the patent; and
`may be a party to any appeal taken by a third-party requester under subsection
`(b).
`(b) TI-IIRD-PARTY REQUESTER. — A Ihird-party requester —
`(1)
`may appeal under the provisions of section 134...with respect to any final
`decision favorable to the patentability of any original or proposed amended or
`new claim of the patent....
`
`(2)
`
`ZIBO
`
`Final Decision Favorable to Patentability
`(Determinations NOT to Adopt the Proposed Rejections)
`
`There are no final decisions favorable to patentability.
`
`

`
`Application/Control Number: 95/001,789
`Art Unit: 3992
`
`Page 5
`
`2C.
`
`Final Decision Unfavorable to Patentability
`(Determinations to Adopt the Proposed Rejections)
`
`A total of ten references, in certain combinations, have been asserted in the Request as
`
`providing teachings relevant to the claims of the Larson patent.
`
`Solana, E. et al., “Flexible Internet Secure Transactions Based on Collaborative
`Domains,” Lecture Notes in Computer Science, Vol. 1361, at 37-51 (1997), attached to
`the Request as Exhibit X1 (“Solana”).
`
`U.S. Patent No. 6,557,037 to Provino, attached to the Request as Exhibit X2 (“Provino”).
`
`U.S. Patent N0. 6,496,867 to Beser, attached to the Request as Exhibit X3 (“Beser”).
`
`Atkinson, R., IETF RFC 2230, “Key Exchange Delegation Record for the DNS,”
`November 1997, attached to the Request as Exhibit X4 (“RFC 2230”).
`
`Eastlake, D. et al., IETF RFC 2538, “Storing Certificates in the Domain Name System
`(DNS),” March 1999, attached to the Request as Exhibit X5 (“RFC 253 8”).
`
`Kent, S. et al., IETF RFC 2401, “Security Architecture for the Internet Protocol,”
`November 1998, attached to the Request as Exhibit X6 (“RFC 2401”).
`
`Eastlake, D. et al., IETF RFC 2064, “Domain Name System Security Extensions,”
`January 1997, attached to the Request as Exhibit X7 (“RFC 2065”).
`
`Postel, J. et al., IETF RFC 920, “Domain Requirements,” October 1984, attached to the
`Request as Exhibit X8 (“RFC 920”).
`
`Guttman, E. et al., IETF RFC 2504, “Users” Security Handbook,” February 1999,
`attached to the Request as Exhibit X9 (“RFC 2504”).
`
`Reed, M. eta1., “Proxies for Anonymous Routing,” 12"‘ Annual Computer Security
`Applications Conference, Sand Diego, CA (December 9-13, 1996), attached to the
`Request as Exhibit X10 (“Reed”).
`
`The third party requester also cited six prior art patents and printed publications to
`
`demonstrate the knowledge in the field of the invention.
`
`

`
`Application/Control Number: 95/001,789
`Art Unit: 3992
`
`Page 6
`
`Goldschlag et al., “Hiding Routing Information,” Workshop on Information Hiding,
`Cambridge, UK, May 1996, attached to the Request as Exhibit Y1 (“Goldschlag”).
`
`Mockapetris, P., RFC 1035, “Domain Names — Implementation and Specification,”
`November 1987, attached to the Request as Exhibit Y2 (“RFC 1035”).
`
`Braken, R., RFC 1123, “Requirements for Intemet Hosts — Application and Support,”
`October 1989, attached to the Request as Exhibit Y3 (“RFC 1123”).
`
`Atkinson, R., RFC 1825, “Security Architecture for the Internet Protocol,” August 1995,
`attached to the Request as Exhibit Y4 (“RFC 1825”).
`
`Housley, R. et al., RFC 2459, “Internet X509 Public Key Infrastructure Certificate and
`CRL profile,” January 1999, attached to the Request as Exhibit Y5 (”RFC 2459”).
`
`Mockapetris, P., RFC 1034, “Domain Names — Concepts and Facilities,” November
`1987, attached to the Request as Exhibit Y4 (“RFC 1034”).
`
`2.D.
`
`Summary Regarding Those Proposed Rejections Adopted by the Examiner
`
`The rejections identified in Issues 1-35 are adopted because the stated combinations
`
`establish a reasonable likelihood that the requester will prevail with respect to at least one of the
`
`claims 1-60 in the Larson patent, as explained in said Order.
`
`2.E.
`
`Entitlement to the Benefit of an Earlier Filing Date
`
`Some of the references cited are intervening art. MPEP 2617. Requestor asserts that the
`
`instant claims are not entitled to the earliest filing date of June 7, 1998, the filing date of the
`
`oldest parent, provisional application. The examiner agrees. U.S. Patent No. 7,010,604, which
`
`issued from parent application 09/429,643, and which was f'1led Oct. 29, 1999, fails to explicitly
`
`recite not imply the phrase “domain name service” present in all independent claims in the
`
`

`
`Application/Control Number: 95/001,789
`Art Unit: 3992
`
`Page 7
`
`Larson patent for which reexamination is now sought. Indeed, the 7,010,604 patent does not
`
`appear to even be directed to services similar to domain name loolcup. The patent thus neither
`
`provides written description support nor enables the subject matter recited in claims 1-60 of the
`
`Larson patent. Accordingly, the Larson patent is not entitled to the benefit of the 7,010,604
`
`patent filing date. The effective filing date for claims 1-60 is no earlier than the Feb. 15, 2000
`
`filing date of the U.S. Patent No. 6,502,135, which issued from parent application 09/504,783.
`
`2.F.
`
`Rejections Based upon Solana (Issues 1-8)
`
`Claim Rejections - 35 USC § 102
`
`The following is a quotation of pre-AIA 35 U.S.C. 102 which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or
`on sale in this country, more than one year prior to the date of application for patent in the United States.
`
`Claims 1, 2, 5, 6, 8, 9, and 14-60 are rejected under 35 U.S.C. 102(b) as being
`
`anticipated by Solana.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`

`
`Application/Control Number: 95/001,789
`Art Unit: 3992
`
`Page 8
`
`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Solana as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 920.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Solana as
`
`applied to the respective, parent claims above (if applicable), and further in view of Reed.
`
`Claims 7, 32 and 56 are rejected under 35 U.S.C. l03(a) as being unpatentable over
`
`Solana as applied to the respective, parent claims above (if applicable), and further in view of
`
`Beser.
`
`Claims 1, 2, 5, 6, 8, 9 and 14-60 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Solana as applied to the respective, parent claims above (if applicable), and
`
`further in View of RFC 2504.
`
`Claims 2-5, 24, 25, 37, 48 and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Solana as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 2504, and further in View of RFC 920.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Solana as
`
`applied to the respective, parent claims above (if applicable), and further in view of RFC 2504,
`
`and further in View of Reed.
`
`

`
`Application/Control Number: 95/001,789
`Art Unit: 3992
`
`Page 9
`
`Claims 7, 32 and 56 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Solana as applied to the respective, parent claims above (if applicable), and further in view of
`
`RFC 2504, and further in view of Beser.
`
`Incorporation by Reference
`
`Thus, the third party requester proposed rejection of claims 1-60 on pages 14-117 of the
`
`Request and Exhibits C1 and C2 (claim charts), are adopted and incorporated by reference.
`
`2.G. Rejections Based upon Provino (Issues 9-20)
`
`Claim Rejections - 35 USC § 102
`
`The following is a quotation of pre-AIA 35 U.S.C. 102 which forms the basis for all
`
`obviousness rejections set forth in this Offlce action:
`
`A person shall be entitled to a patent unless —
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this
`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.
`
`Claims 1, 2, 5, 6, 8, 9 and 14-60 are rejected under 35 U.S.C. 102(e) as being anticipated
`
`by Provino.
`
`

`
`Application/Control Number: 95/001,789
`Art Unit: 3992
`
`Page 10
`
`Claim Rejections - 35 USC § 103
`
`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 920.
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Provino as
`
`applied to the respective, parent claims above (if applicable), and further in view of Reed.
`
`Claims 7, 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Solana as applied to the respective, parent claims above (if applicable), and further in view
`
`of Beser.
`
`Claims 1, 2, 5, 6, 8, 9 and 14-60 are rejected under 35 U.S.C. l03(a) as being
`
`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
`
`further in View of RFC 2230.
`
`Claims 2-5, 24, 25, 3'7, 48 and 49 are rejected under 35 U.S.C. l03(a) as being
`
`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 2230, and further in view of RFC 920.
`
`

`
`Application/Control Number: 95/001,789
`Art Unit: 3992
`
`Page 11
`
`Claims 10-13 are rejected under 35 U.S.C. l03(a) as being unpatentable over Provino as
`
`applied to the respective, parent claims above (if applicable), and further view of RFC 2230, and
`
`further in view of Reed.
`
`Claims 7, 29-32 and 53-56 are rejected under 35 U.S.C. l03(a) as being unpatentable
`
`over Provino as applied to the respective, parent claims above (if applicable), and further in view
`
`of RFC 2230, and further in View of Beser.
`
`Claims 1, 2, 5, 6, 8, 9 and 14-60 are rejected under 35 U.S.C. l03(a) as being
`
`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 2504.
`
`Claims 2-5, 24, 25, 37, 48 and 49 are rejected under 35 U.S.C. l03(a) as being
`
`unpatentable over Provino as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 2504, and further in view of RFC 920.
`
`Claims 10-13 are rejected under 35 U.S.C. l03(a) as being unpatentable over Provino as
`
`applied to the respective, parent claims above (if applicable), and further view of RFC 2504, and
`
`further in view of Reed.
`
`

`
`Application/Control Number: 95/001,789
`Art Unit: 3992
`
`Page 12
`
`Claims 7, 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Provino as applied to the respective, parent claims above (if applicable), and further in view
`
`of RFC 2504, and further in view of Beser.
`
`Incorporation by Reference
`
`Thus, the third party requester proposed rejection of claims 1-60 on pages 118-225 of the
`
`Request and Exhibits C3, C4 and C5 (claim charts), are adopted and incorporated by reference.
`
`2.H. Rejections Based upon Beser (Issues 21-24)
`
`Claim Rejections - 35 USC § 102
`
`Claims 1, 2, 5-7 and 14-60 are rejected under 35 U.S.C. 102(e) as being anticipated by
`
`Beser.
`
`Claim Rejections - 35 USC § 103
`
`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Beser as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 920.
`
`Claims 8 and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable over Beser as
`
`applied to the respective, parent claims above (if applicable), and further in view of RFC 2401.
`
`

`
`Application/Control Number: 95/001,789
`Art Unit: 3992
`
`Page 13
`
`Claims 10-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Beser as
`
`applied to the respective, parent claims above (if applicable), and further view of RFC 2401, and
`
`further in View of Reed.
`
`Incorporation by Reference
`
`Thus, the third party requester proposed rejection of claims 1-60 on pages 226-277 of the
`
`Request and Exhibit C6 (claim chart), are adopted and incorporated by reference.
`
`2.I.
`
`Rejections Based upon RFC 2230 (Issues 25-29)
`
`Claim Rejections - 35 USC § 102
`
`Claims 1, 2, 6, 7 and 14-60 are rejected under 35 U.S.C. l02(b) as being anticipated by
`
`RFC 2230.
`
`Claim Rejections - 35 USC § 103
`
`Claims 2-5, 24, 25, 37, 48, and 49 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over RFC 2230 as applied to the respective, parent claims above (if applicable), and
`
`further in view of RFC 920.
`
`Claims 8 and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable over RFC
`
`2230 as applied to the respective, parent claims above (if applicable), and further in view of RFC
`
`2401.
`
`

`
`Application/Control Number: 95/001,789
`Art Unit: 3992
`
`Page 14
`
`Claims 10-13 are rejected under 35 U.S.C. l03(a) as being unpatentable over RFC 2230
`
`as applied to the respective, parent claims above (if applicable), and further view of RFC 2401,
`
`and further in view of Reed.
`
`Claims 29-32 and 53-56 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`RFC 2230 as applied to the respective, parent claims above (if applicable), and further in view of
`
`RFC 2230, and further in view of Beser.
`
`Incomoration by Reference
`
`Thus, the third party requester proposed rejection of claims 1-60 on pages 278-323 of the
`
`Request and Exhibit C7 (claim chart), are adopted and incorporated by reference.
`
`2.J.
`
`Rejections Based upon RFC 2538 (Issues 30-35)
`
`Claim Rejections - 35 USC § 102
`
`(a) the invention was known or used by others in this country, or patented or described in a printed publication in
`this or a foreign country, before the invention thereof by the applicant for a patent.
`
`Claims 1, 2, 6, 14-22, 24-46, 48-52 and 57-60 are rejected under 35 U.S.C. 102(a) as
`
`being anticipated by RFC 2538.
`
`Claim Rejections - 35 USC § 103
`
`Claims 3, 4, 24, 25, 48 and 49 are rejected under 35 U.S.C. l03(a) as being unpatentable
`
`over RFC 2538 as applied to the respective, parent claims above (if applicable), and further in
`
`view of RFC 920.
`
`

`
`Application/Control Number: 95/001,789
`Art Unit: 3992
`
`Page 15
`
`Claims 8 and 9 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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`240 1.
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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 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 324-366 of the
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`Request and Exhibit C8 (claim chart), are adopted and incorporated by reference.
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`

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`Application/Control Number: 95/001,789
`Art Unit: 3992
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`Page 16
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`;
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`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.
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`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
`communication link, the system comprising:
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`a domain name service system configured and arranged to be connected to a communication
`network, store a plurality of domain names and corresponding network addresses, receive a query
`for a network address, and indicate in response to the query whether the domain name
`service system 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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`interpretation is consistent with the specification of the patent under reexamination, see, e.g., col.
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`

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`Application/Control Number: 95/001,789
`Art Unit: 3992
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`Page 17
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`40, 11. 35-48, where the DNS system is implemented using gatekeeper 2603, DNS proxy 2610
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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, ‘J[ 31. Thus, the DNS system is reasonably interpreted as comprising
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`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 ofAngelos D. Keromytis, Ph.D., filed with the Response (the original “Keromytis”
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`declaration), ‘][ 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
`
`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, ll. 27-31) (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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`

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`ApplicationlControl Number: 95/001,789
`Art Unit: 3992
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`Page 18
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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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`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, 11 18. “DNS proxy 2610 then responds to the computer’s 2601 DNS request with an
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`address received from the gatekeeper 2604.” Id. That is, rather than conventionally returning a
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`public key to the initiator (e.g., computer 2601) so that the target and the initiator can establish a
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`VPN, the special DNS server authenticates the request, then relies upon the services of a
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`gatekeeper to receive an address (e.g., a “hopblock” address, col. Col. 39, 67 — col. 40, l. 8) that
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`the DNS server then provides to the initiator so that the initiator and target can establish a VPN.
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`See also the original Keromytis Declaration, ‘j[ 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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`

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`Application/Control Number: 95/001,789
`Art Unit: 3992
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`Page 19
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`authenticating the user. Col. 51, 11. 37-50. 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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`In view of the above, the claimed DNS system is interpreted reasonably broad consistent
`
`with the specification has n_c>t requiring a DNS server capable of authenticating the user and n_ot
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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
`
`mean a visible message or signal to a user that the DNS system supports establishing a secure
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`communication link. Marlcman Claim Construction Order, April 25, 2012, p. 27, Virtnetx Inc. v.
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`Cisco Systems, Inc., Case No. 6: 10-CV-417, District Court for the Eastern District of Texas.
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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
`corresponding minimal input from another input device such as a keystroke entered on a
`keyboard or a click entered through a trackball. Alternatively, the secure link is automatically
`established as a default setting at boot-up of the computer (i.e., no click).
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`Col. 48, 11. 60-66.
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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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`

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`Application/Control Number: 95/001,789
`Art Unit: 3992
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`Page 20
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`specification nor the claim language provides a basis for limiting ‘indicating’ to a visual
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`indicator." (Markman at 27).
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`Indeed, the Larson patent discloses an embodiment (quoted
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`above), where the secure link is "automatically established as a default setting at boot-up of the
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`computer.....In such an embodiment, it would be reasonable to interpret the “indication” (that the
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`DNS among other systems associated with the computer supports establishing a secure
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`communication link) to read on the ability of the user to communicate using a secure link after
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`boot-up. If the user attempts to establish a secure communication link using a DNS system after
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`booting and is able to do so, then the user has been provided a broadly recited and discernible
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`"indication" that the DNS in some manner supports establishing a communication link.
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`3.2.
`
`Response to Patent Owner and Third Party Requester
`Comments Regarding Claim Interpretation
`
`3.2.A. Domain Name Service System
`
`The patent owner asserts the “office construes a ‘DNS system’ and interprets a ‘DNS
`
`device’ as having no bounds whatsoever...." (Response at 3) (Supplemental Keromytis
`
`Declaration, ‘M 7-9). The examiner’s claim analysis immediately above however, which was
`
`repeated from the last Office action, does no such thing.
`
`The patent owner states the “office relies on the Larson patent's description of gatekeeper
`
`2603, DNS proxy 2610, and DNS server 2609 to support its unreasonable interpretation of a
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`DNS system. However, the Larson patent discloses significant DNS functionality and
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`coordination between these devices in acting upon a DNS request." (Response at 3, 4) (See also
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`said original Keromytis Declaration, ‘][‘][ 17-19).
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`

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`Application/Control Number: 95/001,789
`Art Unit: 3992
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`Page 21
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`The claims however do not recite these specific components. Claim 1 recites a DNS
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`"system" and not a particular device or structural configuration. For example, one part of the
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`Larson specification describes a DNS system implemented using gatekeeper, proxy and server
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`(col. 40,11. 18-31) whfle another part of the specification describes a DNS system using one
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`server (col. 40, ll. 27-31). In view of the above, the claimed DNS “system” is interpreted
`
`reasonably broad consistent with the specification to comprise a single dev