IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Attorney Docket No. 213.7002-00000
`
`
`
`
`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
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,921,211
`
`
`
`
`
`Attorney Docket No. 213.7002-00000
`
`
`
`
`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
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 7,921,211
`
`
`
`
`
`I.
`
`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
`
`
`
`i
`
`
`
`Attorney Docket No. 213.7002-00000
`IPR of U.S. Patent No. 7,921,211
`
`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
`
`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
`
`10. Kiuchi Anticipates Claims 23 and 47. ......................................... 32
`
`11. Kiuchi Anticipates Claim 51 ........................................................ 32
`
`VI. CONCLUSION ............................................................................................ 33
`
`
`
`ii
`
`
`
`
`
`
`
`Attorney Docket No. 213.7002-00000
`IPR of U.S. Patent No. 7,921,211
`
`
`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
`
`
`
`
`
`
`
`Attorney Docket No. 213.7002-00000
`IPR of U.S. Patent No. 7,921,211
`
`
`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
`
`Exhibit 1008
`
`
`Exhibit 1009
`
`Exhibit 1010
`
`
`
`iv
`
`
`
`
`
`
`
`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.
`
`
`
`
`
`
`
`1
`
`
`
`
`
`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
`
`
`
`
`
`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
`
`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
`
`
`
`3
`
`
`
`
`
`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.
`
`
`
`4
`
`
`
`
`
`
`
`
`
`
`
`C.
`
`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
`
`tmartin@martinferraro.com and docketing@martinferraro.com.
`
`
`
`
`
`
`
`5
`
`
`
`
`
`II. FEE PAYMENT – 37 C.F.R. § 42.103.
`
`The USPTO is authorized to charge Deposit Account No. 50-1068 for the fee
`
`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
`
`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
`
`1, 2, 5, 6, 15, 16, 23,
`27, 36, 37, 39, 40, 47,
`51, and 60
`
`§ 102 rejection based on Kiuchi.
`
`
`
`
`
`6
`
`
`
`
`
`As discussed below, the effective filing date of claims 1, 2, 5, 6, 15, 16, 23,
`
`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
`
`Network and Distributed System Security (SNDSS) on February 22 & 23, 1996,
`
`and its publication by IEEE in the Proceedings of SNDSS 1996.
`
`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
`
`given its “broadest reasonable construction in light of the specification of the
`
`patent in which it appears.” As discussed below, Petitioner submits the following
`
`constructions for the following terms. Furthermore, Petitioner submits that the
`
`remaining terms should be given their plain meaning.
`
`1. Meaning of Term “Domain Name Service System.”
`
`
`
`The Patent Owner has repeatedly asserted to the Board that no construction
`
`of the claim term “domain name service system” is required. (Ex. 1006 at pages
`
`32-34, and Ex. 1007 at pages 29-31.) According to the Patent Owner, the claims
`
`themselves define the characteristics of the domain name service system. (Ex.
`
`1006 at pages 32-33, and Ex. 1007 at pages 29-30.) Thus, it is reasonable, in
`
`
`
`7
`
`
`
`
`
`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.
`
`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
`
`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
`
`multiple devices. According to the Examiner, a “DNS system is reasonably
`
`interpreted as comprising a single device or multiple devices.” (Ex. 1003 at page
`
`17, and Ex. 1004 at page 20.)
`
`
`
`8
`
`
`
`
`
`Accordingly, Petitioner submits that the claim term “domain name service
`
`system” encompasses any system with the features of the claims, where the system
`
`may include one or more computers or devices.
`
`2. Meaning of Terms “Indicate”/“Indicating.”
`
`
`
`The Patent Owner has repeatedly asserted to the Board that no construction
`
`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
`
`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,” and “[a]lternatively, the secure link is automatically established as a
`
`default setting at boot-up of the computer (i.e., no click).” Thus, in addition to
`
`disclosing enabling a secure communication link via “a single click of a mouse,”
`
`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
`
`
`
`9
`
`
`
`
`
`discernable ‘indication’ that the DNS in some manner supports establishing a
`
`communication link.” (Ex. 1003 at page 20, and Ex. 1004 at page 23)
`
`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
`
`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
`
`“[n]either the specification nor the claim language provides a basis for limiting
`
`‘indicating’ to a visual indicator.” (Ex. 1003 at pages 19-20, and Ex. 1004 at pages
`
`22-23.)
`
`As such, Petitioner submits that the claim terms “indicate”/“indicating”
`
`encompass a visible or non-visible message or signal that the DNS system supports
`
`establishing a secure communication link, including the establishment of the secure
`
`communication link itself. This construction of the claim terms
`
`“indicate”/“indicating” is identical to the construction promulgated by the Petitioner
`
`of IPR2014-00615.
`
`
`
`10
`
`
`
`
`
`Petitioner acknowledges that the Board previously construed the claim terms
`
`“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
`
`Board, “the Specification [of the ‘211 patent] is not inconsistent with the ordinary
`
`meaning or Petitioner’s construction” in IPR2014-00615. (Microsoft Institution
`
`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
`
`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
`
`
`
`11
`
`
`
`
`
`Partes Review. Nevertheless, Petitioner submits that the claims are still
`
`unpatentable, even if the Board adopts the meaning assigned to the claim terms
`
`“indicate”/“indicating” in IPR2014-00615. That is, the claims are unpatentable
`
`under Petitioner’s ascribed meaning or the Board’s assigned meaning from
`
`IPR2014-00615.
`
`3. Meaning of Term “Secure Communication Link.”
`
`
`
`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.
`
`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,
`
`generally using obfuscation methods to hide information on the path, including, but
`
`not limited to, one or more of authentication, encryption, or address hopping.”
`
`(Microsoft Institution Decision (Ex. 1002) at page 11.) Petitioner agrees with the
`
`meaning assigned to the claim term “secure communication link” in IPR2014-
`
`00615.
`
`
`
`12
`
`
`
`
`
`In assigning meaning to the claim term “secure communication link,” the
`
`Board indicated that “the record does not support, and we decline to impart” an
`
`implied requirement for a “direct” communication link. (Microsoft Institution
`
`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
`
`“secure communication link.”
`
`Furthermore, in assigning meaning to the claim term “secure communication
`
`link,” the Board indicated that the ‘211 patent does not support a requirement for
`
`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
`
`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
`
`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
`
`also describes “various embodiments” that form “secure communication” by
`
`“‘hopping’ different addresses using one or more algorithms and one or more
`
`moving windows that track a range of valid addresses to validate received packets,”
`
`
`
`13
`
`
`
`
`
`and using this hopping technique on “[p]ackets transmitted according to one or
`
`more of the inventive principles will be generally referred to as ‘secure’ packets or
`
`‘secure communications.’” (‘211 patent (Ex. 1001) at column 21, lines 39-48.)
`
`Because of this disclosure from the ‘211 patent, the Board indicated that
`
`“given the different examples and general descriptions that encompass a wide
`
`variety of techniques, the ‘211 [patent] describes different levels of security by
`
`using different methods to obtain different security levels, rendering the term
`
`‘secure’ relative.” (Microsoft Institution Decision (Ex. 1002) at page 10.) Thus,
`
`the Board concluded that the claim term “secure communication link” does not
`
`require encryption.
`
`4. Meaning of Term “Transparently.”
`
`The Patent Owner has repeatedly asserted to the Board that the claim term
`
`“transparently” means that “the user need not be involved in creating the [secure
`
`communication link]/[secure link].” Petitioner agrees. (Exhibit 1006 at pages 41-
`
`42, and Ex. 1007 at pages 38-39.)
`
`IV. SUMMARY OF THE ‘211 PATENT.
`
`A. Disclosure of the ‘211 Patent.
`
`Generally, the ‘211 patent discloses a domain name service system for
`
`establishing a secure communication link. (Ex. 1001 at Abstract, and column 3,
`
`line 10.) The domain name service system of the ‘211 patent described therein is
`
`
`
`14
`
`
`
`
`
`configured and arranged: (1) to be connected to a communication network, (2) to
`
`store a plurality of domain names and corresponding network addresses, (3) to
`
`receive a query for a network address, and (4) to indicate in response to the query
`
`whether the domain name service system supports establishing a secure
`
`communication link. (Ex. 1001 at column 55, lines 38-46.)
`
`B.
`
`Effective Filing Date of the ‘211 Patent.
`
`U.S. Patent No. 7,921,211 issued April 5, 2011 based on U.S. Patent
`
`Application No. 11/840,560 (“‘560 application”). The ’560 application was filed
`
`on August 17, 2007 as a continuation of U.S. Patent Application No. 10/714,849
`
`(“‘849 application”), now the ‘504 patent. The ‘849 application was filed on
`
`November 18, 2003 as a continuation of U.S. Patent Application No. 09/558,210
`
`(“’210 application”). The ‘210 application was filed on April 26, 2000 as a
`
`continuation-in-part of U.S. Patent Application No. 09/504,783 (“’783
`
`application”), now U.S. Patent No. 6,502,135. The ‘783 application was filed
`
`February 15, 2000 as a continuation-in-part of U.S. Patent Application No.
`
`09/429,643 (“’643 application”), now U.S. Patent No. 7,010,604. The ‘643
`
`application was filed on October 29, 1999. Each of the ‘849, ‘210, ‘783, and ‘643
`
`applications claim priority to Provisional Application Nos. 60/106,261 (filed
`
`October 30, 1998) and 60/137,704 (filed June 7, 1999).
`
`
`
`15
`
`
`
`
`
`Therefore, the earliest potential priority date of the ‘211 patent is October
`
`30, 1998. Kiuchi is prior art even with respect to the earliest potential priority date
`
`of the ‘211 patent. Kiuchi is a printed publication under 35 U.S.C. § 102(b) with
`
`respect to the earliest potential priority date of the ‘211 patent.
`
`It is noted, however, that independent claims 1, 36, and 60 of the ‘211 patent
`
`are not entitled to the earliest potential priority date. Independent claims 1 and 60
`
`of the ’211 patent recite “a domain name service for establishing a secure
`
`communication link.” Furthermore, independent claims 1, 36, and 60 recite “a
`
`domain name service system.” None of the applications filed prior to the ’783
`
`application mention the phrase “domain name service,” and these applications do
`
`not provide corresponding written description therefor. Thus, the earliest effective
`
`filing date of independent claims 1, 36, and 60 of the ’211 patent is the filing date
`
`of the ‘783 application, i.e., February 15, 2000.
`
`V. A REASONABLE LIKELIHOOD AT LEAST ONE CLAIM OF THE
`‘211 PATENT FOR WHICH INTER PARTES REVIEW IS
`REQUESTED IS UNPATENTABLE.
`
`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).
`
`Kiuchi (Ex. 1005) is a printed publication under 35 U.S.C. § 102(b). Kiuchi
`
`was presented at the 1996 Symposium on Network and Distributed System Security
`
`(SNDSS) on February 22 & 23, 1996, and published by IEEE in the Proceedings of
`
`
`
`16
`
`
`
`
`
`SNDSS 1996. Kiuchi is therefore prior art to the ‘211 patent under § 102(b) based
`
`on even the earliest potential priority date of the ‘211 patent, i.e., October 30,
`
`1998.
`
`According to MPEP § 706.02 Part V, “for anticipation under 35 U.S.C. 102,
`
`the [prior art] reference must teach every aspect of the claimed invention either
`
`explicitly or impliedly.” For the reasons discussed below, it is abundantly clear
`
`that Kiuchi discloses each and every recitation of claims 1, 2, 5, 6, 15, 16, 23, 27,
`
`36, 37, 39, 40, 47, 51, and 60. As such, the claims are clearly anticipated by
`
`Kiuchi.
`
`1.
`
`Discussion of Kiuchi.
`
`Kiuchi discloses a closed HTTP-based network (“C-HTTP”) for a closed
`
`group of institutions, in which each member is protected by its own firewall.
`
`(Kiuchi (Ex. 1005) at page 64, Abstract.) The system disclosed in Kiuchi includes
`
`various security features to establish a C-HTTP connection (i.e., a secure
`
`communication link) between at least a client-side proxy and a server-side proxy.
`
`(Kiuchi (Ex. 1005) at page 64, Section 2.2.)
`
`To illustrate, Kiuchi describes that for “hospitals and related institutions,” a
`
`need exists for “[s]ecure transfer of patient information” between hospitals,
`
`and that “medical information has to be shared among some hospitals, but it
`
`should not be made available to other sites.” (Kiuchi (Ex. 1005) at page 64,
`
`
`
`17
`
`
`
`
`
`Section 1.) According to Kiuchi, the C-HTTP protocol allows members of the
`
`closed group of institutions to communicate with one another via proxies. (Kiuchi
`
`(Ex. 1005) at page 64, Abstract.) In particular, communication is made possible
`
`with a client-side proxy (for one institution), a server-side proxy (for another
`
`institution), and a C-HTTP name server. (Kiuchi (Ex. 1005) at page 64, Section
`
`2.1.) In doing so, encryption is used to facilitate a secure connection, i.e., the C-
`
`HTTP name server provides both client-side and server-side proxies with each
`
`peer’s public key and Nonce values for both request and response. (Kiuchi (Ex.
`
`1005) at pages 64 and 65, Section 2.2.)
`
`Using the secure C-HTTP connection, an end user via a user agent
`
`associated with the client-side proxy may request information stored on one
`
`or more origin servers associated with the server-side proxy. (Kiuchi (Ex.
`
`1005) at page 65, Section 2.3(1).) In doing so, an HTML document can be
`
`displayed by the user agent, and a hyperlink URL in the HTML document can be
`
`selected by the end user. (Kiuchi (Ex. 1005) at page 65, Section 2.3(1).) The
`
`following is an example of the format of a selected hyperlink URL:
`
`“http://server.in.current.connection/sample.html=@=6zdDfldfcZLj8V!i.”
`
`In the selected hyperlink URL, the hostname is “server.in.current.connection,” the
`
`resource being requested is “sample.html,” and the connection ID is
`
`“6zdDfldfcZLj8V!i”. (Kiuchi (Ex. 1005) at page 65, Section 2.3(1).)
`
`
`
`18
`
`
`
`
`
`Generally, the system of Kiuchi initially performs (assuming no C-HTTP
`
`connection yet exists) in the following manner: (a) the user agent sends a request
`
`for a selected URL to the client-side proxy (Kiuchi (Ex. 1005) at page 65, Section
`
`2.3(1)), (b) the client-side proxy asks and the C-HTTP name server determines
`
`whether it can communicate with a host (and a server-side proxy associated
`
`therewith) using the hostname specified in the selected URL (Kiuchi (Ex. 1005) at
`
`page 65, Section 2.3(1)-(2)), and (c) if the C-HTTP determines that the query is
`
`legitimate and the server-side proxy is registered, the C-HTTP server sends the IP
`
`address and public key of the server-side proxy (as well as both request and
`
`response Nonce values) to the client-side proxy, and, if the C-HTTP indicates that
`
`connection is not permitted, the C-HTTP server sends error indication to the client-
`
`side proxy, and the client-side proxy performs a DNS lookup by behaving like an
`
`ordinary HTTP/1.0 proxy (Kiuchi (Ex. 1005) at page 65, Section 2.3(
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
