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`Attorney Docket No. 213.7002-00000
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`U.S. Patent No.: 7,921,211
`
`In re Patent of: Larson et al.
`
`Issue Date: April 5, 2011
`
`Appl. Serial No.: 11/840,560
`
`Filing Date: August 17, 2007
`
`Title: AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS
`USING SECURE DOMAIN NAMES
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`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
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`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,921,211
`
`
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`
`
`I.
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`Attorney Docket No. 213.7002-00000
`IPR of U.S. Patent No. 7,921,211
`
`
`TABLE OF CONTENTS
`
`MANDATORY NOTICES IN ACCORDANCE WITH 37 C.F.R.
`§ 42.8(a)(1). .................................................................................................... 2
`
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1). .............................. 2
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2). ....................................... 2
`
`C. Lead And Back-Up Counsel under 37 C.F.R. § 42.8(b)(3). .................... 5
`
`D. Service Information. ................................................................................ 5
`
`II.
`
`FEE PAYMENT – 37 C.F.R. § 42.103. ......................................................... 6
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §
`42.104. ............................................................................................................ 6
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a). .............................. 6
`
`B. Identification of Challenge under 37 C.F.R. § 42.104(b). ...................... 6
`
`C. Claim Construction under 37 C.F.R. § 42.100(b). .................................. 7
`
`1. Meaning of Term “Domain Name Service System.” .................... 7
`
`2. Meaning of “Indicate”/“Indicating” .............................................. 9
`
`3. Meaning of Term “Secure Communication Link.” ..................... 12
`
`4. Meaning of Term “Transparently.” ............................................. 14
`
`IV. SUMMARY OF THE ‘211 PATENT. ......................................................... 14
`
`A. Disclosure of the ‘211 Patent. ............................................................... 14
`
`B. Effective Filing Date of the ‘211 Patent. .............................................. 15
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`Attorney Docket No. 213.7002-00000
`IPR of U.S. Patent No. 7,921,211
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`V. A REASONABLE LIKELIHOOD AT LEAST ONE CLAIM OF THE ‘211
`PATENT FOR WHICH INTER PARTES REVIEW IS REQUESTED IS
`UNPATENTABLE. ..................................................................................... 16
`
`A. Anticipation of Claims 1, 2, 5, 6, 15, 16, 23, 27, 36, 37, 39, 40, 47, 51,
`and 60 (including independent claims 1, 36, and 60) based on Kiuchi
`(Ground 1). ............................................................................................ 16
`
`1. Discussion of Kiuchi. ................................................................... 17
`
`2. Kiuchi Anticipates Claim 1 .......................................................... 21
`
`3. Kiuchi Anticipates Claim 36 ........................................................ 26
`
`4. Kiuchi Anticipates Claim 60 ........................................................ 27
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`5. Kiuchi Anticipates Claims 2 and 37 ............................................. 28
`
`6. Kiuchi Anticipates Claim 5 .......................................................... 28
`
`7. Kiuchi Anticipates Claim 6 .......................................................... 29
`
`8. Kiuchi Anticipates Claims 15 and 39 ........................................... 29
`
`9. Kiuchi Anticipates Claims 16 and 40 ........................................... 30
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`10. Kiuchi Anticipates Claims 23 and 47. ......................................... 32
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`11. Kiuchi Anticipates Claim 51 ........................................................ 32
`
`VI. CONCLUSION ............................................................................................ 33
`
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`Attorney Docket No. 213.7002-00000
`IPR of U.S. Patent No. 7,921,211
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`
`Statutes
`35 U.S.C. § 102(b) .................................................................................... 1, 6, 15, 16
`35 U.S.C. § 102 ................................................................................................... 5, 16
`Rules
`MPEP § 706.02 Part V ............................................................................................. 16
`Regulations
`37 C.F.R. § 42.100(b) ................................................................................................. 6
`37 C.F.R. § 42.103 ..................................................................................................... 4
`37 C.F.R. § 42.104 ..................................................................................................... 5
`37 C.F.R. § 42.104(a) ................................................................................................. 5
`37 C.F.R. § 42.104(b) ................................................................................................ 5
`37 C.F.R. § 42.108(c) ............................................................................................... 33
`37 C.F.R. § 42.15(a) ................................................................................................... 5
`37 C.F.R. § 42.8(a)(1) ................................................................................................ 2
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 2
`37 C.F.R. § 42.8(b)(2) ................................................................................................ 2
`37 C.F.R. § 42.8(b)(3) ................................................................................................ 4
`
`iii
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`Attorney Docket No. 213.7002-00000
`IPR of U.S. Patent No. 7,921,211
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`
`EXHIBITS
`
`U.S. Patent No. 7,921,211.
`
`Institution Decision dated October 15, 2014 in IPR2014-00615,
`IPR2014-00616, and IPR2014-00618 requested by Microsoft
`Corp. (“Microsoft Institution Decision”).
`
`Right of Appeal Notice in Inter Partes Reexam. 95/001,788.
`
`Right of Appeal Notice in Inter Partes Reexam. 95/001,851.
`
`Takahiro Kiuchi and Shigekoto Kaihara, “C-HTTP – The
`Development of a Secure, Closed HTTP-based Network on the
`Internet,” published by IEEE in the Proceedings of SNDSS
`1996 (“Kiuchi”).
`
`Patent Owner’s Preliminary Response in IPR2013-00397.
`
`Patent Owner’s Preliminary Response in IPR2013-00398.
`
`Selected Portions of Webster’s Third New International
`Dictionary (1971).
`
`Right of Appeal Notice in Inter Partes Reexam. 95/001,789.
`
`Right of Appeal Notice in Inter Partes Reexam. 95/001,856.
`
`
`
`Exhibit 1001
`
`Exhibit 1002
`
`
`Exhibit 1003
`
`Exhibit 1004
`
`Exhibit 1005
`
`
`Exhibit 1006
`
`Exhibit 1007
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`Exhibit 1008
`
`
`Exhibit 1009
`
`Exhibit 1010
`
`
`
`iv
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`
`
`The present Petition for Inter Partes Review is directed to claims 1, 2, 5, 6,
`
`15, 16, 23, 27, 36, 37, 39, 40, 47, 51, and 60 (including independent claims 1, 36,
`
`and 60) of U.S. Patent No. 7,921,211 (“211 patent”) (Ex. 1001).
`
`For the below-discussed reasons, Petitioner requests that the Board find
`
`unpatentable (and thereby cancel) claims 1, 2, 5, 6, 15, 16, 23, 27, 36, 37, 39, 40,
`
`47, 51, and 60 of the ‘211 patent under 35 U.S.C. § 102(b) based on Kiuchi (Ex.
`
`1005). The rejection under 35 U.S.C. § 102(b) based on Kiuchi (Ex. 1005)
`
`presented herein is substantially similar to that of Ground 1 presented in IPR2014-
`
`00615. IPR2014-00615 was requested by Microsoft Corp., and was instituted by
`
`the Board with respect to Ground 1 thereof in an Institution Decision dated
`
`October 15, 2014 (“Microsoft Institution Decision”) attached as Ex. 1002.
`
`IPR2014-00615 was subsequently terminated by the Board due to settlement of the
`
`parties.
`
`In instituting IPR2014-00615, the Board found there was a reasonable
`
`likelihood that claims 1, 2, 6, 15, 16, 23, 27, 36, 37, 39, 40, 47, 51, and 60 are
`
`unpatentable under 35 U.S.C. § 102(b) based on Kiuchi. For similar reasons,
`
`Petitioner requests that the present Petition for Inter Partes Review likewise be
`
`instituted by the Board.
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`
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`1
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`
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`I. MANDATORY NOTICES IN ACCORDANCE WITH 37 C.F.R.
`§ 42.8(a)(1).
`
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1).
`
`Petitioner, Black Swamp IP, LLC, is the real party-in-interest. Black
`
`Swamp IP, LLC is a member-run LLC. The members are Stoneledge Trust and
`
`Rockwood Trust. David B. Colon is the sole trustee of the Stoneledge Trust, and
`
`John W. McMahon is the sole trustee of the Rockwood Trust.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2).
`
`The ‘211 patent is the subject of a number of civil actions including:
`
`(i) Civ. Act. No. 6:13-cv-00211 (E.D. Tex.);
`
`(ii) Civ. Act. No. 6:12-cv-00855 (E.D. Tex.);
`
`(iii) Civ. Act. No. 6:10-cv-00417 (E.D. Tex.);
`
`(iv) Civ. Act. No. 6:11-cv-00018 (E.D. Tex.);
`
`(v) Civ. Act. No. 6:13-cv-00351 (E.D. Tex.);
`
`(vi) Civ. Act. No. 6:13-mc-00037 (E.D. Tex.); and
`
`(vii) Civ. Act. No. 9:13-mc-80769 (E.D. Fld).
`
`The ‘211 patent is also the subject of two inter partes reexamination nos.
`
`95/001,789 (“’789 reexamination”) and 95/001,856 (“’856 reexamination”). On
`
`May 23, 2014, a Right of Appeal Notice (Ex. 1009) was issued in the ‘789
`
`reexamination in which claims 1-60 of the ‘211 patent stand rejected. On January
`
`
`
`2
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`
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`9, 2015, a Right of Appeal Notice (Ex. 1010) was issued in the ‘856 reexamination
`
`in which claims 36-60 stand rejected as obvious based in part on Kiuchi (Ex.
`
`1005). The ‘789 reexamination has been assigned Appeal No. 2016-004466, and
`
`the ‘856 reexamination is in the briefing stage of appeal to the Board.
`
`It is noted that the ‘211 patent is a continuation of U.S. Patent No. 7,418,504
`
`(“’504 patent”). It is also noted that the independent claims of the ‘504 patent are
`
`very similar to the independent claims of the ‘211 patent – there is overlap between
`
`many of the claim terms used in the ‘211 and ‘504 patents.
`
`The ‘504 patent is the subject of two inter partes reexamination nos.
`
`95/001,788 (‘788 reexamination) and 95/001,851 (‘851 reexamination). On May
`
`27, 2014, a Right of Appeal Notice (Ex. 1003) was issued in the ‘788
`
`reexamination in which claims 1-60 of the ‘211 patent stand rejected. On February
`
`26, 2015, a Right of Appeal Notice (Ex. 1004) was issued in the ‘851
`
`reexamination in which claims 1-10, 12-35, and 60 of the ‘211 patent stand
`
`rejected. The ‘788 reexamination has been assigned Appeal No. 2016-004435, and
`
`the ‘851 reexaminations has been assigned Appeal No. 2016-004575.
`
`Given that the specification of the ‘211 patent is shared with the ‘504 patent,
`
`the similarities between the independent claims of the ‘211 and ‘504 patents, and
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`the overlap between many of the claim terms used in the ‘211 and ‘504 patents,
`
`Petitioner submits that positions taken by the Patent Owner in the ‘788 and ‘851
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`3
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`reexaminations with respect to claim construction of the ‘504 patent should also
`
`apply to the ‘211 patent.
`
`The ‘211 patent is also the subject of the following petitions for inter partes
`
`review:
`
`(1) IPR2013-00378 by Petitioner New Bay Capital, LLC –
`
`terminated prior to institution;
`
`(2) IPR2013-00397 and IPR2013-00398 by Petitioner Apple
`
`Inc. – not instituted;
`
`(3) IPR2014-00174 and IPR2014-00175 by Petitioner RPX
`
`Corp. – not instituted;
`
`(4) IPR2014-00616 by Petitioner Microsoft Corp. – not
`
`instituted;
`
`(5) IPR2014-00615 and IPR2014-00618 by Petitioner
`
`Microsoft Corp. – instituted and settled;
`
`(6) IPR2015-00185 and IPR2015-00186 by Apple Inc. – not
`
`instituted.
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`4
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`C.
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`Lead And Back-Up Counsel under 37 C.F.R. § 42.8(b)(3).
`
`Petitioner provides the following designation of counsel:
`
`
`BACK-UP COUNSEL
`Wesley C. Meinerding
`USPTO Registration No. 57,925
`Telephone Number: (330) 877-0700
`MARTIN & FERRARO, LLP
`1557 Lake O’Pines Street, NE
`Hartville, Ohio 44632
`
`LEAD COUNSEL
`Thomas H. Martin
`USPTO Registration No. 34,383
`Telephone Number: (330) 877-0700
`MARTIN & FERRARO, LLP
`1557 Lake O’Pines Street, NE
`Hartville, Ohio 44632
`
`D.
`
`Service Information.
`
`Please address all correspondence and service to counsel at the address
`
`provided in Section I(C). Black Swamp IP, LLC agrees to service by email at
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`tmartin@martinferraro.com and docketing@martinferraro.com.
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`5
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`
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`II. FEE PAYMENT – 37 C.F.R. § 42.103.
`
`The USPTO is authorized to charge Deposit Account No. 50-1068 for the fee
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`set in 37 C.F.R. § 42.15(a) for this Petition, and the USPTO is also authorized to
`
`charge this Deposit Account for any additional fees.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104.
`
`A. Grounds for Standing Under 37 C.F.R. § 42.104(a).
`
`Petitioner certifies that the ‘211 patent is eligible for inter partes review.
`
`Petitioner also certifies that it is not barred or estopped from requesting inter partes
`
`review challenging the above-identified claims of the ‘211 patent.
`
`B.
`
`Identification of Challenge under 37 C.F.R. § 42.104(b).
`
`Petitioner requests that claims 1, 2, 5, 6, 15, 16, 23, 27, 36, 37, 39, 40, 47,
`
`51, and 60 be found unpatentable (and thereby cancelled) in view of Ground 1 of
`
`rejection presented below. At the very least, Ground 1 clearly articulates where
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`each and every element of claims 1, 2, 5, 6, 15, 16, 23, 27, 36, 37, 39, 40, 47, 51,
`
`and 60 is found in the cited references.
`
`Ground of
`Rejection
`
`Ground 1
`
`Claims of ‘211 Patent Rejection
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`1, 2, 5, 6, 15, 16, 23,
`27, 36, 37, 39, 40, 47,
`51, and 60
`
`§ 102 rejection based on Kiuchi.
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`6
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`As discussed below, the effective filing date of claims 1, 2, 5, 6, 15, 16, 23,
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`27, 36, 37, 39, 40, 47, 51, and 60 of the ‘211 patent is not earlier than February 15,
`
`2000.
`
`Kiuchi (Ex. 1005) is prior art under 35 U.S.C. § 102(b). Kiuchi (Ex. 1005)
`
`qualifies as a printed publication due to its presentation at the 1996 Symposium on
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`Network and Distributed System Security (SNDSS) on February 22 & 23, 1996,
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`and its publication by IEEE in the Proceedings of SNDSS 1996.
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`C. Claim Construction under 37 C.F.R. § 42.100(b).
`
`According to 37 C.F.R. § 42.100(b), a claim subject to inter partes review is
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`given its “broadest reasonable construction in light of the specification of the
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`patent in which it appears.” As discussed below, Petitioner submits the following
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`constructions for the following terms. Furthermore, Petitioner submits that the
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`remaining terms should be given their plain meaning.
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`1. Meaning of Term “Domain Name Service System.”
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`
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`The Patent Owner has repeatedly asserted to the Board that no construction
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`of the claim term “domain name service system” is required. (Ex. 1006 at pages
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`32-34, and Ex. 1007 at pages 29-31.) According to the Patent Owner, the claims
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`themselves define the characteristics of the domain name service system. (Ex.
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`1006 at pages 32-33, and Ex. 1007 at pages 29-30.) Thus, it is reasonable, in
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`7
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`view of Patent Owner’s position, to consider the claim term “domain name
`
`service system” to encompass any system with the features of the claims.
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`Furthermore, from a reading of the ‘211 patent, it is clear that the word
`
`“system” (in the claim term “domain name service system”) means one or more
`
`discrete computers or devices. To illustrate, column 40, lines 19-31, of the ‘211
`
`patent (Ex. 1001) describes a domain name service system including a modified
`
`DNS server 2602 and a gatekeeper server 2603. According to the ‘211 patent,
`
`“[g]atekeeper 2603 can be implemented on a separate computer (as shown in FIG.
`
`26) or as a function within modified DNS server 2602.” (‘211 patent (Ex. 1001) at
`
`column 40, lines 19-21.) Furthermore, according to the ‘211 patent, “although
`
`element 2602 is shown as combining the functions of two servers, the two servers
`
`can be made to operate independently.” (‘211 patent (Ex. 1001) at column 40,
`
`lines 29-31.)
`
`Also, in the ‘788 and ‘851 reexaminations, the Examiner agreed that the
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`broadest reasonable construction of a system in the context of the ‘504 patent
`
`(which shares its specification with the ‘211 patent) encompasses a single or
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`multiple devices. According to the Examiner, a “DNS system is reasonably
`
`interpreted as comprising a single device or multiple devices.” (Ex. 1003 at page
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`17, and Ex. 1004 at page 20.)
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`8
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`Accordingly, Petitioner submits that the claim term “domain name service
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`system” encompasses any system with the features of the claims, where the system
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`may include one or more computers or devices.
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`2. Meaning of Terms “Indicate”/“Indicating.”
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`
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`The Patent Owner has repeatedly asserted to the Board that no construction
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`of “indicate”/“indicating” is required. (Ex. 1006 at pages 39-41, and Ex. 1007 at
`
`pages 36-38.) Petitioner disagrees.
`
`Petitioner notes that column 48, lines 60-66, of the ‘211 patent (Ex. 1001)
`
`indicates that “[p]referably, a user enables a secure communication link using a
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`single click of a mouse, or a corresponding minimal input from another input
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`device, such as a keystroke entered on a keyboard or a click entered through a
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`trackball,” and “[a]lternatively, the secure link is automatically established as a
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`default setting at boot-up of the computer (i.e., no click).” Thus, in addition to
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`disclosing enabling a secure communication link via “a single click of a mouse,”
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`the ‘211 patent discloses that the secure communication link can be “automatically
`
`established as a default setting at boot-up of the computer.”
`
`From this disclosure, the Examiner in the ‘788 and ‘851 reexaminations, with
`
`respect to use of the claim term “indication” in the ‘504 patent, found that “[i]f the
`
`user attempts to establish a secure communication link using a DNS system after
`
`booting and is able to do so, then the user has been provided a broadly recited and
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`discernable ‘indication’ that the DNS in some manner supports establishing a
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`communication link.” (Ex. 1003 at page 20, and Ex. 1004 at page 23)
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`Furthermore, from this disclosure, the Examiner found that “it would be reasonable
`
`to interpret the ‘indication’ (that the DNS among other systems associated with the
`
`computer supports establishing a secure communication link) to read on the ability
`
`of the user to communicate using a secure link after boot-up.” (Ex. 1003 at page
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`20, and Ex. 1004 at page 23.)
`
`Given this disclosure of the ‘504 patent (which shares its specification with
`
`the ‘211 patent), the Examiner indicated that the claim term “indication” “may be
`
`construed broadly to mean a visible message or signal to a user that the DNS
`
`system supports establishing a secure communication link,” and indicated that
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`“[n]either the specification nor the claim language provides a basis for limiting
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`‘indicating’ to a visual indicator.” (Ex. 1003 at pages 19-20, and Ex. 1004 at pages
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`22-23.)
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`As such, Petitioner submits that the claim terms “indicate”/“indicating”
`
`encompass a visible or non-visible message or signal that the DNS system supports
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`establishing a secure communication link, including the establishment of the secure
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`communication link itself. This construction of the claim terms
`
`“indicate”/“indicating” is identical to the construction promulgated by the Petitioner
`
`of IPR2014-00615.
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`10
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`Petitioner acknowledges that the Board previously construed the claim terms
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`“indicate”/“indicating” in IPR2014-00615. In doing so, the Board, by citing to
`
`Webster’s Third New International Dictionary (1971), indicated that “[t]he term
`
`‘indication’ ordinarily means ‘the action of indicating’ or ‘something (as a signal,
`
`sign, suggestion) that serves to indicate.’” (Microsoft Institution Decision (Ex.
`
`1002) at page 12; Ex. 1008.) Furthermore, the Board indicated that the “[t]he term
`
`‘indicate’ ordinarily means ‘to point out or point to or toward with more or less
`
`exactness’ or ‘to show the probable presence or existence or nature or course of.’”
`
`(Microsoft Institution Decision (Ex. 1002) at page 12; Ex. 1008.) According to the
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`Board, “the Specification [of the ‘211 patent] is not inconsistent with the ordinary
`
`meaning or Petitioner’s construction” in IPR2014-00615. (Microsoft Institution
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`Decision (Ex. 1002) at page 12.)
`
`The Board then concluded that “for purposes of this Decision, the term
`
`‘indication’ broadly, but reasonably, means ‘something that shows the probable
`
`presence or existence or nature of,” and “[i]n accordance with this construction, in
`
`context of claim 1, an indication that a secure communication link is in operation
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`constitutes an indication that the system supports establishing a secure
`
`communication link.” (Microsoft Institution Decision (Ex. 1002) at page 12.)
`
`It is requested that the meaning ascribed by Petitioner to the claim terms
`
`“indicate”/“indicating” be adopted by the Board in the present Petition for Inter
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`11
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`Partes Review. Nevertheless, Petitioner submits that the claims are still
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`unpatentable, even if the Board adopts the meaning assigned to the claim terms
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`“indicate”/“indicating” in IPR2014-00615. That is, the claims are unpatentable
`
`under Petitioner’s ascribed meaning or the Board’s assigned meaning from
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`IPR2014-00615.
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`3. Meaning of Term “Secure Communication Link.”
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`
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`The Patent Owner has repeatedly asserted to the Board that the claim term
`
`“secure communication link” should mean a “direct communication link that
`
`provides data security through encryption.” (Ex. 1006 at pages 35-38, and Ex.
`
`1007 at pages 32-35.) Petitioner disagrees. The claim term “secure
`
`communication link” does not require a direct communication link or encryption.
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`Petitioner acknowledges that the Board previously construed the claim term
`
`“secure communication link” in IPR2014-00615. The Board in IPR2014-00615
`
`indicated that the claim term “secure communication link” means “a transmission
`
`path that restricts access to data, addresses, or other information on the path,
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`generally using obfuscation methods to hide information on the path, including, but
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`not limited to, one or more of authentication, encryption, or address hopping.”
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`(Microsoft Institution Decision (Ex. 1002) at page 11.) Petitioner agrees with the
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`meaning assigned to the claim term “secure communication link” in IPR2014-
`
`00615.
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`12
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`In assigning meaning to the claim term “secure communication link,” the
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`Board indicated that “the record does not support, and we decline to impart” an
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`implied requirement for a “direct” communication link. (Microsoft Institution
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`Decision (Ex. 1002) at pages 7-8.) Petitioner agrees – the ‘211 patent does support
`
`a requirement of a “direct” communication link in construing the claim term
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`“secure communication link.”
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`Furthermore, in assigning meaning to the claim term “secure communication
`
`link,” the Board indicated that the ‘211 patent does not support a requirement for
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`use of encryption in construing the claim term “secure communication link.”
`
`(Microsoft Institution Decision (Ex. 1002) at page 10.) Petitioner also agrees.
`
`The ‘211 patent indicates that “[d]ata security is usually tackled using some
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`form of data encryption.” (‘211 patent (Ex. 1001) at column 1, lines 51-52
`
`(emphasis added).) As such, the ‘211 patent implies that the “security” may
`
`include, but does not require, encryption. The ‘211 patent provides a specific
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`example that employs “unencrypted message packets,” while using “different levels
`
`of authentication,” and, under some circumstances, “a keyed hopping sequence.”
`
`(‘211 patent (Ex. 1001) at column 54, lines 30-56.) Furthermore, the ‘211 patent
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`also describes “various embodiments” that form “secure communication” by
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`“‘hopping’ different addresses using one or more algorithms and one or more
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`moving windows that track a range of valid addresses to validate received packets,”
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`and using this hopping technique on “[p]ackets transmitted according to one or
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`more of the inventive principles will be generally referred to as ‘secure’ packets or
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`‘secure communications.’” (‘211 patent (Ex. 1001) at column 21, lines 39-48.)
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`Because of this disclosure from the ‘211 patent, the Board indicated that
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`“given the different examples and general descriptions that encompass a wide
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`variety of techniques, the ‘211 [patent] describes different levels of security by
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`using different methods to obtain different security levels, rendering the term
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`‘secure’ relative.” (Microsoft Institution Decision (Ex. 1002) at page 10.) Thus,
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`the Board concluded that the claim term “secure communication link” does not
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`require encryption.
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`4. Meaning of Term “Transparently.”
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`The Patent Owner has repeatedly asserted to the Board that the claim term
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`“transparently” means that “the user need not be involved in creating the [secure
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`communication link]/[secure link].” Petitioner agrees. (Exhibit 1006 at pages 41-
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`42, and Ex. 1007 at pages 38-39.)
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`IV. SUMMARY OF THE ‘211 PATENT.
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`A. Disclosure of the ‘211 Patent.
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`Generally, the ‘211 patent discloses a domain name service system for
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`establishing a secure communication link. (Ex. 1001 at Abstract, and column 3,
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`line 10.) The domain name service system of the ‘211 patent described therein is
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`configured and arranged: (1) to be connected to a communication network, (2) to
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`store a plurality of domain names and corresponding network addresses, (3) to
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`receive a query for a network address, and (4) to indicate in response to the query
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`whether the domain name service system supports establishing a secure
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`communication link. (Ex. 1001 at column 55, lines 38-46.)
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`B.
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`Effective Filing Date of the ‘211 Patent.
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`U.S. Patent No. 7,921,211 issued April 5, 2011 based on U.S. Patent
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`Application No. 11/840,560 (“‘560 application”). The ’560 application was filed
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`on August 17, 2007 as a continuation of U.S. Patent Application No. 10/714,849
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`(“‘849 application”), now the ‘504 patent. The ‘849 application was filed on
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`November 18, 2003 as a continuation of U.S. Patent Application No. 09/558,210
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`(“’210 application”). The ‘210 application was filed on April 26, 2000 as a
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`continuation-in-part of U.S. Patent Application No. 09/504,783 (“’783
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`application”), now U.S. Patent No. 6,502,135. The ‘783 application was filed
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`February 15, 2000 as a continuation-in-part of U.S. Patent Application No.
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`09/429,643 (“’643 application”), now U.S. Patent No. 7,010,604. The ‘643
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`application was filed on October 29, 1999. Each of the ‘849, ‘210, ‘783, and ‘643
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`applications claim priority to Provisional Application Nos. 60/106,261 (filed
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`October 30, 1998) and 60/137,704 (filed June 7, 1999).
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`15
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`Therefore, the earliest potential priority date of the ‘211 patent is October
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`30, 1998. Kiuchi is prior art even with respect to the earliest potential priority date
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`of the ‘211 patent. Kiuchi is a printed publication under 35 U.S.C. § 102(b) with
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`respect to the earliest potential priority date of the ‘211 patent.
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`It is noted, however, that independent claims 1, 36, and 60 of the ‘211 patent
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`are not entitled to the earliest potential priority date. Independent claims 1 and 60
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`of the ’211 patent recite “a domain name service for establishing a secure
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`communication link.” Furthermore, independent claims 1, 36, and 60 recite “a
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`domain name service system.” None of the applications filed prior to the ’783
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`application mention the phrase “domain name service,” and these applications do
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`not provide corresponding written description therefor. Thus, the earliest effective
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`filing date of independent claims 1, 36, and 60 of the ’211 patent is the filing date
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`of the ‘783 application, i.e., February 15, 2000.
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`V. A REASONABLE LIKELIHOOD AT LEAST ONE CLAIM OF THE
`‘211 PATENT FOR WHICH INTER PARTES REVIEW IS
`REQUESTED IS UNPATENTABLE.
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`A. Anticipation of Claims 1, 2, 5, 6, 15, 16, 23, 27, 36, 37, 39, 40, 47,
`51, and 60 (including independent claims 1, 36, and 60) based on
`Kiuchi (Ground 1).
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`Kiuchi (Ex. 1005) is a printed publication under 35 U.S.C. § 102(b). Kiuchi
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`was presented at the 1996 Symposium on Network and Distributed System Security
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`(SNDSS) on February 22 & 23, 1996, and published by IEEE in the Proceedings of
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`SNDSS 1996. Kiuchi is therefore prior art to the ‘211 patent under § 102(b) based
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`on even the earliest potential priority date of the ‘211 patent, i.e., October 30,
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`1998.
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`According to MPEP § 706.02 Part V, “for anticipation under 35 U.S.C. 102,
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`the [prior art] reference must teach every aspect of the claimed invention either
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`explicitly or impliedly.” For the reasons discussed below, it is abundantly clear
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`that Kiuchi discloses each and every recitation of claims 1, 2, 5, 6, 15, 16, 23, 27,
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`36, 37, 39, 40, 47, 51, and 60. As such, the claims are clearly anticipated by
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`Kiuchi.
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`1.
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`Discussion of Kiuchi.
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`Kiuchi discloses a closed HTTP-based network (“C-HTTP”) for a closed
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`group of institutions, in which each member is protected by its own firewall.
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`(Kiuchi (Ex. 1005) at page 64, Abstract.) The system disclosed in Kiuchi includes
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`various security features to establish a C-HTTP connection (i.e., a secure
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`communication link) between at least a client-side proxy and a server-side proxy.
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`(Kiuchi (Ex. 1005) at page 64, Section 2.2.)
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`To illustrate, Kiuchi describes that for “hospitals and related institutions,” a
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`need exists for “[s]ecure transfer of patient information” between hospitals,
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`and that “medical information has to be shared among some hospitals, but it
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`should not be made available to other sites.” (Kiuchi (Ex. 1005) at page 64,
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`Section 1.) According to Kiuchi, the C-HTTP protocol allows members of the
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`closed group of institutions to communicate with one another via proxies. (Kiuchi
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`(Ex. 1005) at page 64, Abstract.) In particular, communication is made possible
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`with a client-side proxy (for one institution), a server-side proxy (for another
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`institution), and a C-HTTP name server. (Kiuchi (Ex. 1005) at page 64, Section
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`2.1.) In doing so, encryption is used to facilitate a secure connection, i.e., the C-
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`HTTP name server provides both client-side and server-side proxies with each
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`peer’s public key and Nonce values for both request and response. (Kiuchi (Ex.
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`1005) at pages 64 and 65, Section 2.2.)
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`Using the secure C-HTTP connection, an end user via a user agent
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`associated with the client-side proxy may request information stored on one
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`or more origin servers associated with the server-side proxy. (Kiuchi (Ex.
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`1005) at page 65, Section 2.3(1).) In doing so, an HTML document can be
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`displayed by the user agent, and a hyperlink URL in the HTML document can be
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`selected by the end user. (Kiuchi (Ex. 1005) at page 65, Section 2.3(1).) The
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`following is an example of the format of a selected hyperlink URL:
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`“http://server.in.current.connection/sample.html=@=6zdDfldfcZLj8V!i.”
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`In the selected hyperlink URL, the hostname is “server.in.current.connection,” the
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`resource being requested is “sample.html,” and the connection ID is
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`“6zdDfldfcZLj8V!i”. (Kiuchi (Ex. 1005) at page 65, Section 2.3(1).)
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`18
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`Generally, the system of Kiuchi initially performs (assuming no C-HTTP
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`connection yet exists) in the following manner: (a) the user agent sends a request
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`for a selected URL to the client-side proxy (Kiuchi (Ex. 1005) at page 65, Section
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`2.3(1)), (b) the client-side proxy asks and the C-HTTP name server determines
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`whether it can communicate with a host (and a server-side proxy associated
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`therewith) using the hostname specified in the selected URL (Kiuchi (Ex. 1005) at
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`page 65, Section 2.3(1)-(2)), and (c) if the C-HTTP determines that the query is
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`legitimate and the server-side proxy is registered, the C-HTTP server sends the IP
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`address and public key of the server-side proxy (as well as both request and
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`response Nonce values) to the client-side proxy, and, if the C-HTTP indicates that
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`connection is not permitted, the C-HTTP server sends error indication to the client-
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`side proxy, and the client-side proxy performs a DNS lookup by behaving like an
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`ordinary HTTP/1.0 proxy (Kiuchi (Ex. 1005) at page 65, Section 2.3(