Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 1 of 36 PageID #: 5193
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`VIRNETX INC. AND
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`SCIENCE APPLICATIONS
`INTERNATIONAL CORPORATION,
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`Plaintiffs,
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`v.
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`APPLE INC.
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`Defendant.
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`Civil Action No. 6:12-cv-855
`LEAD CONSOLIDATED CASE
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`JURY TRIAL DEMANDED
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`APPLE’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`Page 1 of 36
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`VirnetX Exhibit 2018
`Black Swamp IP, LLC v. VirnetX Inc.
`IPR2016-00957
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`

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`Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 2 of 36 PageID #: 5194
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`TABLE OF CONTENTS
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`INTRODUCTION ...........................................................................................................................1
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`APPLICABLE LAW .......................................................................................................................2
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`ARGUMENT ...................................................................................................................................4
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`2.
`
`Previously Construed Claim Terms .....................................................................................4
`A.
`“Virtual Private Network” .......................................................................................4
`1.
`The Court Properly Construed “Virtual Private Network” to
`Require Both Data Security and Anonymity. ..............................................4
`No Basis Exists for the Court to Rule on the Alleged “Claim
`Scope” of Anonymity. .................................................................................6
`“Generating from the Client Computer . . .” ............................................................7
`“An Indication That the Domain Name Service System Supports
`Establishing a Secure Communication Link” / “Indicate in Response to the
`Query Whether the Domain Name Service System Supports Establishing a
`Secure Communication Link” ..................................................................................9
`1.
`This Court Should Bind VirnetX to Its “Clear and Unequivocal”
`Reexamination Disclaimers. ........................................................................9
`This Court Should Reject VirnetX’s “Alternate” Construction. ................12
`2.
`“Domain Name” and “Secure Communication Link” ...........................................13
`
`B.
`C.
`
`D.
`
`2.
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`Claim Terms Not Previously Construed ............................................................................14
`A.
`“Intercept” / “Intercepting” ....................................................................................14
`1.
`The Prosecution History Forbids VirnetX’s Attempts to Equate
`“Intercepting” with “Receiving.” ...............................................................15
`The Specification and Extrinsic Evidence Support Apple’s
`Proposed Construction. ..............................................................................15
`“Wherein the Secure Communication Service Uses the Secure
`Communication Link to Communicate at Least One of Video Data and
`Audio Data between the First Network Device and the Second Network
`Device” ..................................................................................................................19
`“Determine/Determining . . . Is Available for a Secure Communications
`Service” ..................................................................................................................19
`“Domain Name Lookup” .......................................................................................21
`“Securely Communicate” / “Sending a Message Securely” ..................................22
`“Non-Secure Communication Link” ......................................................................24
`“Requesting and Obtaining Registration of a Secure/Unsecured Name” ..............25
`
`B.
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`C.
`
`D.
`E.
`F.
`G.
`
`i
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`I.
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`II.
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`Page 2 of 36
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`Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 3 of 36 PageID #: 5195
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`H.
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`“Message” ..............................................................................................................25
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`III.
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`Terms Included in Apple’s Motion for Summary Judgment of Indefiniteness .................28
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`CONCLUSION ..............................................................................................................................30
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`
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`ii
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`Page 3 of 36
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`Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 4 of 36 PageID #: 5196
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`TABLE OF AUTHORITIES
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`Page
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`Cases
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`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) ..................................................................................................... 3
`Biogen Idec., Inc. v. GlaxoSmithKline LLC,
`713 F.3d 1090 (Fed. Cir. 2013) ........................................................................................... 11, 18
`C.R. Bard, Inc. v. U.S. Surgical Corp.,
`388 F.3d 858 (Fed. Cir. 2004) ..................................................................................................... 3
`Innova/Pure Water, Inc. v. Safari Water Filt. Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) ................................................................................................... 2
`Interactive Gift Express, Inc. v. Compuserve Inc.,
`256 F.3d 1323 (Fed. Cir. 2001) ................................................................................................... 3
`K2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) ................................................................................................. 13
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996) ....................................................... 2, 3
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ..................................................................................... 2, 3, 5, 25
`Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998) ................................................................................................... 3
`Skyhook Wireless, Inc. v. Google, Inc.,
`C.A. No. 10–11571–RWZ, 2014 WL 898595 (D. Mass. Mar. 6, 2014) ................................... 28
`SuperGuide Corp. v. DirecTV Enters., Inc.,
`358 F.3d 870 (Fed. Cir. 2004) ..................................................................................................... 7
`Tempo Lighting, Inc. v. Tivoli, LLC,
`742 F.3d 973 (Fed. Cir. 2014) ................................................................................................... 27
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ..................................................................................................... 3
`Statutes
`
`35 U.S.C § 112 .............................................................................................................................. 28
`
`
`
`
`iii
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`Page 4 of 36
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`Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 5 of 36 PageID #: 5197
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`INTRODUCTION
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`The six patents-in-suit—U.S. Patent Nos. 6,502,135 (“the ’135 patent”) (Ex. 1);
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`7,418,504 (“the ’504 patent”) (Ex. 2); 7,490,151 (“the ’151 patent”) (Ex. 3); 7,921,211 (“the
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`’211 patent”) (Ex. 4); 8,051,181 (“the ’181 patent”) (Ex. 5); and 8,504,697 (“the ’697 patent”)
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`(Ex. 6)—concern technology familiar to this Court. As VirnetX notes in its Opening Claim
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`Construction Brief, this Court has conducted three Markman proceedings involving several of
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`these patents, as well as other related patents.1 Only two patents—the ’181 and ’697 patents—
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`are patents that this Court has not previously addressed. Nevertheless, both of these “new”
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`patents stem from the same family to which the remaining patents-in-suit belong and are based
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`on similar disclosures.
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`Despite this Court’s three previous claim-construction orders, VirnetX urges the Court to
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`reconsider those previous rulings and issue new constructions for key claim terms. The Court
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`has consistently construed these terms—including the phrases “virtual private network” and
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`“generating from the client computer . . .” addressed in VirnetX’s brief—in several cases
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`involving the patents-in-suit. VirnetX does not—and cannot—point to any change in
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`circumstances or in law that justifies reconsideration of these constructions. And VirnetX’s
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`stated basis of alleged “misconduct” in the Cisco trial has already been rejected by the Court. On
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`multiple occasions, this Court has refused to issue VirnetX’s proposed constructions for these
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`terms, and it should refuse to do so once again.
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`In contrast to VirnetX’s approach, Apple largely focuses its proposed constructions on
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`the two patents new to the Court. Although related to the other patents-in-suit, the ’181 and ’697
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`1 See Ex. 7, VirnetX Inc. v. Microsoft Corp., Case No. 07-cv-80, Dkt. No. 246 (hereinafter,
`“Microsoft”); Ex. 8, VirnetX Inc. v. Cisco Sys. Inc., Case No. 10-cv-417, Dkt. No. 266
`(hereinafter, “Cisco”); Ex. 9, VirnetX Inc. v. Mitel Networks, Corp., Case No. 11-cv-18, Dkt.
`No. 307 (hereinafter, “Mitel”).
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`Page 5 of 36
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`Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 6 of 36 PageID #: 5198
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`patents are late entrants to this patent family and their claims differ in significant ways from
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`those of the earlier patents. To shoehorn the accused products into the scope of the asserted
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`claims, VirnetX attempts to use claim construction to impermissibly redraft and broaden those
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`claims. VirnetX’s proposed constructions, however, are contrary to both the intrinsic record and
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`the extrinsic evidence. In contrast, Apple proposes claim constructions that are grounded in the
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`intrinsic record of the patents-in-suit—including the claims, specification, and prosecution
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`history—and the ordinary and customary meaning of the claim terms to those skilled in the art at
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`the time of the invention. For the reasons set forth herein, Apple respectfully requests that the
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`Court adopt its claim constructions and reject VirnetX’s attempts to redraft the claims.
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`APPLICABLE LAW
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`It is the Court’s “power and obligation to construe as a matter of law the meaning of
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`language used in the patent claim.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 979
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`(Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996). As a starting point, a claim term is to be given the
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`“ordinary and customary” meaning it would have had to a person of ordinary skill at the time of
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`the invention.2 Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc).
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`“Because the meaning of a claim term as understood by persons of skill in the art is often
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`not immediately apparent, and because patentees frequently use terms idiosyncratically, the court
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`looks to ‘those sources available to the public that show what a person of skill in the art would
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`have understood disputed claim language to mean.’” Id. at 1314 (quoting Innova/Pure Water,
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`Inc. v. Safari Water Filt. Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). Those sources
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`include both intrinsic evidence (the claims, specification, and prosecution history) and extrinsic
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`evidence concerning relevant scientific principles, the meaning of technical terms, and the state
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`2 The parties agree that a person of ordinary skill in the art would have a Master’s degree in
`computer science or computer engineering as well as two years of experience in computer
`networking with some accompanying exposure to network security. See Kelly Decl. at ¶ 3.
`2
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`Page 6 of 36
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`Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 7 of 36 PageID #: 5199
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`of the art. Phillips, 415 F.3d at 1314; Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-
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`83 (Fed. Cir. 1996). Of those sources, the “intrinsic evidence is the most significant source of
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`the legally operative meaning of disputed claim language.” Vitronics, 90 F.3d at 1582. In that
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`regard, the claims do not stand alone, but “‘must be read in view of the specification, of which
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`they are a part.’” Phillips, 415 F.3d at 1315 (quoting Markman, 52 F.3d at 979). Accordingly,
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`“the interpretation to be given a term can only be determined and confirmed with a full
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`understanding of what the inventors actually invented and intended to envelop with the claim.
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`The construction that stays true to the claim language and most naturally aligns with the patent’s
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`description of the invention will be, in the end, the correct construction.” Id. at 1316 (quoting
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`Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
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`Extrinsic evidence may also be considered, which “can shed useful light on the relevant
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`art.” Phillips, 415 F.3d at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858,
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`862 (Fed. Cir. 2004)). Dictionaries and technical treatises are often consulted because they can
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`provide accepted meanings of terms not biased by litigation. See, e.g., id. at 1318; Vitronics, 90
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`F.3d at 1584 n.6.
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`In applying the above principles, however, “the analytical focus must begin and remain
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`centered on the language of the claims themselves, for it is that language that the patentee chose
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`to use to ‘particularly point[] out and distinctly claim[] the subject matter which the patentee
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`regards as his invention.’” Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323,
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`1331 (Fed. Cir. 2001) (alterations in original). And the purpose of claim construction is to
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`interpret the meaning of disputed claim terms, not to ignore claim limitations, which is improper.
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`See, e.g., Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950-51 (Fed. Cir. 2006).
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`3
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`Page 7 of 36
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`Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 8 of 36 PageID #: 5200
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`ARGUMENT
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`I.
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`Previously Construed Claim Terms
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`A.
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`“Virtual Private Network”
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`Apple’s Construction
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`VirnetX’s Construction
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`a network of computers which privately and
`directly communicate with each other by
`encrypting traffic on insecure paths between
`the computers where the communication is
`both secure and anonymous
`
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`a network of computers which privately and
`directly communicate with each other by
`encrypting traffic on insecure paths between
`the computers
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`Three times this Court has construed the term “virtual private network.” And three times
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`this Court has found that a “virtual private network” requires both security and anonymity.
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`Undeterred by this history, VirnetX once again urges this Court to strip the requirement of
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`anonymity from its construction of this term. But because the Court’s previous construction is
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`well grounded in the intrinsic record, the Court should reject that invitation.3
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`1.
`
`The Court Properly Construed “Virtual Private Network” to Require Both
`Data Security and Anonymity.
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`The Court previously found that the “‘private’ in ‘virtual private networks’ means both
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`data security and anonymity.” Microsoft, Dkt. No. 246 at 8. This finding is supported by the
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`specification. The Background of the Invention frames the patent as addressing “two security
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`issues . . . called data security and anonymity.” Ex. 1, ’135 Patent at 1:35-36 (emphasis added).
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`3 Notably, in arguing that anonymity should not be part of the construction for “virtual private
`network,” VirnetX states that it has “always opposed” a construction that includes this
`requirement. Op. Br. at 4. But this is not the case. While it has contested the “anonymity”
`requirement before this Court, VirnetX took a different tack at the Federal Circuit during oral
`argument of Apple’s appeal of the previous verdict. Attempting to distinguish a “virtual
`private network” from a “secure communication link,” VirnetX’s appellate counsel readily
`conceded that a “virtual private network” contained both encryption and anonymity. See,
`e.g., Oral Argument at 34:27, VirnetX Inc. v. Cisco Sys., Inc., Case No. 2013-1489, available
`at http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2013-1489.mp3 (“And there we’re
`back to the issue before, that a virtual private network is a type of secure communication
`path that has both encryption and anonymity. . . .”). VirnetX should not be permitted to
`argue one position to the Federal Circuit and adopt an entirely opposite position here.
`4
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`Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 9 of 36 PageID #: 5201
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`It also explains that anonymity involves “prevent[ing] an eavesdropper from discovering that
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`terminal 100 is in communication with terminal 110.” Id. at 1:26-27. And the specification
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`consistently equates the word “private” in “virtual private network” with “anonymity,”
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`explaining that “[a]nonymity would thus be an issue, for example, for companies that want to
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`keep their market research interests private.” Id. at 1:32-33 (emphasis added). The rest of the
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`specification describes ways to solve the twin security issues of data security and anonymity. Id.
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`at 2:66-3:17, 19:66-20:3, 23:11-36, 37:40-49, 37:63-38:6, 39:29-33. Indeed, as the Court found,
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`all embodiments of the invention achieve anonymity as well as data security. Microsoft, Dkt.
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`No. 246 at 9-10, n.4 (“Thus, the specification is consistent with construing a ‘virtual private
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`network’ as achieving both data security and anonymity.”).
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`Despite urging the Court to reconsider its construction, VirnetX does not—and cannot—
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`dispute these teachings of the intrinsic record. Instead, VirnetX argues that requiring anonymity
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`improperly restricts the invention to the “tunneling” embodiments described in the specification.
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`Op. Br. at 4-5. But in making this argument VirnetX conflates the issue of whether the term
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`“virtual private network” requires anonymity generally with the specific techniques that might be
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`used to achieve such anonymity (e.g., IP tunneling). These are two separate issues. As outlined
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`above, the specification reflects that a “virtual private network” as understood by those skilled in
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`the art requires anonymity. See Phillips, 415 F.3d at 1315 (“[C]laims ‘must be read in view of
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`the specification, of which they are a part.’”). Although VirnetX suggests otherwise, its
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`assertions on this point tellingly lack support in either the intrinsic or extrinsic record. See Op.
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`Br. at 4. Properly including anonymity in the construction of “virtual private network” does not
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`imply that any specific embodiment is necessary to achieve that anonymity. Indeed, this Court’s
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`Order in Microsoft expressly acknowledged that anonymity was not limited to IP tunneling, see
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`Microsoft at 9-10, and Apple does not contend otherwise.
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`5
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`Page 9 of 36
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`Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 10 of 36 PageID #: 5202
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`VirnetX also argues that the Court’s construction of “virtual private network” must be
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`changed because of alleged Cisco misconduct during its trial with VirnetX. VirnetX’s arguments
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`on this point mimic those presented in its motion for judgment as a matter of law or for a new
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`trial in the Cisco litigation. The Court, however, denied that motion. VirnetX, Inc. v. Cisco Sys.
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`Inc., Case No. 10-cv-417, Dkt. No. 851. As the Court noted, Cisco was entitled to argue that
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`other known VPNs did not meet the Court’s construction and thus that the claimed invention
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`differed from other known VPNs. Id. at 6. Similarly, the Court found, contrary to VirnetX’s
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`allegations, that Cisco did not improperly argue that the techniques used to establish anonymity
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`under the Court’s construction were limited to those described in the preferred embodiments. Id.
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`Thus, nothing that occurred in the Cisco trial—to which Apple was not even a party—presents
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`grounds to revise the Court’s previous construction. And the Court should not do so.
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`2.
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`No Basis Exists for the Court to Rule on the Alleged “Claim Scope” of
`Anonymity.
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`In the alternative, VirnetX argues that, if the Court holds as it has previously that
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`anonymity is required by the term “virtual private network,” the Court should determine, as a
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`matter of law, what degree of anonymity meets this limitation of the claims:
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`If the Court includes anonymity in the construction of “VPN,” VirnetX requests
`(and Apple opposes) a ruling (1) that anonymity is met by at least by tunneling
`and encryption, (2) that anonymity is not limited to the anonymity achieved by the
`IP-hopping embodiments of the patent, and (3) that anonymity is achieved by
`VPNs known to persons of ordinary skill at the time of the invention.
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`Op. Br. at 7 (numerical identifiers added). The Court should decline to do so. VirnetX’s
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`requests are issues inappropriate for claim construction and instead more properly addressed
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`during discovery and trial.
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` Whether any particular technique—here, “tunneling and
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`encryption”—falls within the scope of the claim limitations or whether “VPNs known to persons
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`of ordinary skill at the time of the invention” achieve “anonymity” are factual issues for the jury
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`to decide. VirnetX cannot dispute that several kinds of VPNs were in existence at the time the
`6
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`Page 10 of 36
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`Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 11 of 36 PageID #: 5203
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`patents-in-suit were filed. See Kelly Decl. at ¶ 12. Apple should be free to argue that the
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`claimed invention differs from other known VPNs that do not meet the Court’s construction.
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`Moreover, this Court has already stated that its construction is not limited to the IP-hopping
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`embodiments of the patent. At trial, VirnetX is free to object to arguments it believes contravene
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`this Court’s construction.
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`B.
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` “Generating from the Client Computer . . .”
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`Apple’s Construction
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`VirnetX’s Construction
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`generating and transmitting from the client
`computer a DNS request
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`Like “virtual private network,” VirnetX again seeks to deviate from an earlier adopted
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`[no construction necessary]
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`construction, but this time seeks to alter a construction to which it previously agreed. At the
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`Markman hearing in Cisco, the parties agreed that the claimed step of “generating from the client
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`computer a Domain Name Service (DNS) Request” should be construed as “generating and
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`transmitting from the client computer a DNS request.” Cisco at 27. VirnetX now asks to be
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`excused from this agreement, alleging that Apple reneged on a commitment to refrain from
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`arguing that the claims preclude a client computer from performing a separate “determining”
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`step. Op. Br. at 8. As an initial matter, Apple did not renege on any such commitment as
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`explained below. In any event, VirnetX presents no legitimate argument as to why the Court’s
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`previous construction was incorrect or should be changed. Its position should therefore be
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`rejected. See, e.g., SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 889 (Fed. Cir.
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`2004) (party waived claim construction argument on appeal where it agreed to construction
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`before the district court).
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`Even in the absence of the parties’ agreement in Cisco, Apple’s construction should be
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`adopted. The language at issue—“generating from the client computer a Domain Name Service
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`7
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`Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 12 of 36 PageID #: 5204
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`(DNS) request”—appears in step (1) of claim 1 of the ’135 patent. See Ex. 1, at cl. 1. Step (2) of
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`claim 1 of the ’135 patent requires “determining whether the DNS request transmitted in step
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`(1) is requesting access to a secure web site.” Id. (emphasis added). Thus, the claim language
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`itself definitively reveals that the “generation” required by step (1) includes a transmission
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`component. Accordingly, “generating from the client computer” in step (1) means that the DNS
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`request is generated and transmitted from the client computer. The Court’s existing construction
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`of this phrase is therefore correct.
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`VirnetX makes no substantive argument to the contrary. Instead, VirnetX asserts that
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`“Apple did not make good on [its] commitment” because Apple’s expert allegedly “argued that
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`Apple did not infringe because a client computer cannot examine a DNS request to perform the
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`‘determination’ step because the Court’s construction requires the DNS request to be transmitted
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`from the device.” Op. Br. at 8. Tellingly, however, VirnetX fails to include any citation to the
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`record of the previous case to substantiate this alleged Apple misconduct. Nor could it. The
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`issue was not raised at trial and although Apple’s expert Dr. Kelly did opine that Apple’s
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`products did not perform the “determining” step, the basis for this opinion was that the
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`functionality identified by VirnetX’s expert to meet this step was not a DNS request and did not
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`determine whether a web site was secure. Moreover, in any event, the functionality identified by
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`VirnetX’s expert was never transmitted from the client computer. For these reasons, Dr. Kelly
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`opined that the functionality identified by VirnetX’s expert could not meet the “generating,”
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`“transmitting,” or “determining” steps. These arguments were entirely proper and do not warrant
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`relieving VirnetX of its agreement to the Court’s existing construction.
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`8
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`Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 13 of 36 PageID #: 5205
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`C.
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`“An Indication That the Domain Name Service System Supports
`Establishing a Secure Communication Link” / “Indicate in Response to the
`Query Whether the Domain Name Service System Supports Establishing a
`Secure Communication Link”
`
`Apple’s Construction
`
`VirnetX’s Construction
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`an affirmative signal beyond the mere
`returning of an IP address, public key, digital
`signature, or certificate that the domain name
`service system supports establishing a secure
`communication link
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`[no construction necessary]
`alternatively: an indication that the domain
`name service system has authorized and
`supports establishing a secure communication
`link
`
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`In Cisco, the Court held that these “indicat[ing]” phrases did not require construction.
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`Cisco at 27-28. During reexamination proceedings following the issuance of the Court’s Cisco
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`Claim-Construction Order, however, VirnetX expressly relied on these “indicat[ing]” limitations
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`to disclaim the use of certain techniques. Apple’s proposed constructions here track those
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`disclaimers, disclaimers that VirnetX itself represented as “clear[] and unequivocal[].”
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`Importantly, Apple does not re-urge the constructions it advocated in the Cisco action.
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`VirnetX’s reexamination disclaimers—and the constructions necessitated by those disclaimers—
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`have not been previously considered by this Court.
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`1.
`
`This Court Should Bind VirnetX to Its “Clear and Unequivocal”
`Reexamination Disclaimers.
`
`The ’504 and ’211 patents require that the claimed system “indicate” or provide an
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`“indication” that the domain name service system supports establishing a secure communication
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`link. The patent specifications provide examples whereby a user is informed that a secure
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`communication link can be established by the presence of a hyperlink: “[p]referably, the ‘go
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`secure’ hyperlink is displayed as part of the web page downloaded from server computer 3304,
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`thereby indicating that the entity providing server 3304 also provides VPN capability.” See Ex.
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`2, ’504 patent at 49:42-45.
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`9
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`Page 13 of 36
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`

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`Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 14 of 36 PageID #: 5206
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`An inter partes reexamination of the ’504 patent was filed on October 18, 2011.4 In that
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`reexamination, the PTO rejected all claims in view of no fewer than ten different prior-art
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`references. In making this rejection, the PTO asserted that various prior-art features met the
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`claimed “indicate” and “indicating” limitations, including the return of digital certificates,
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`encryption keys, and addresses in response to secure DNS queries, as well as, regarding one
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`reference, the establishment of a secure communication link itself. See Ex. 12, ’504 Patent
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`Reexamination, Action Closing Prosecution at 7, 26-27, 42. In response, VirnetX disputed every
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`one of these prior-art features as meeting the claimed “indication” limitations. In doing so,
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`VirnetX argued that the ’504 patent “clearly and unequivocally disclaimed merely returning an
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`address or a public key” as satisfying the claimed “indication”:
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`The ’504 patent specification clearly and unequivocally disclaims merely
`returning an address or a public key by describing these actions as “conventional”
`in the prior art . . . The specification explains that DNS systems that perform no
`more than these conventional functions have many shortcomings, and further
`explains novel DNS-system embodiments that go beyond these conventional
`functions by supporting establishing secure communications. (Supp. Keromytis
`Decl. ¶ 12.)
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`Ex. 13, ’504 Patent Reexamination, Patent Owner’s Response at 6 (emphasis added). Indeed,
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`VirnetX represented that the ’504 patent “repeatedly, consistently, and exclusively” disparaged
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`such features:
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`Never does the specification equate the mere return of requested DNS records,
`such as an IP address or key certificate, with supporting secure
`communications. . . . Therefore, the Office’s unreasonably broad claim
`construction, improperly encompasses the very conventional and unremarkable
`features that the ’504 patent specification “repeatedly, consistently, and
`exclusively" distinguishes and disparages.
`
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`4 Similar statements were made during the course of the reexamination of both the ’504 and
`the ’211 patents. See, e.g., Ex. 14, ’211 Patent Reexamination, Patent Owner’s Response.
`For convenience, Apple will refer here to the ’504 patent as claim 1 of the ’504 patent is
`representative of the claims of the ’504 and ’211 patents.
`10
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`Page 14 of 36
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`

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`Case 6:12-cv-00855-RWS Document 150 Filed 04/21/14 Page 15 of 36 PageID #: 5207
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`Id. (emphasis added). In VirnetX’s express view, the features that the PTO cited as meeting the
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`claimed “indication” limitation were “features that neither indicate that the domain name service
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`system supports establishing a secure communication link nor are visible to any users, such as
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`merely returning an IP address, a public key, or a certificate demonstrating authenticity of the
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`source of the public key.” Id. at 5 (emphasis added). And VirnetX disputed that the
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`“establishment of the secure communication link itself” could serve as the claimed “indication,”
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`arguing that such establishment is “something separate from the act of indicating that the DNS
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`system supports establishing a secure communication link”:
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`Claim 1 makes clear that the “indication” and the “establishing” are two separate
`elements: “an indication that the domain name service system supports
`establishing a secure communication link” (emphases added). Accordingly, the
`act of establishing the secure communication link is something separate from
`the act of indicating that the DNS system supports establishing a secure
`communication link.
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`Id. at 27 (emphasis added).5
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`Apple’s proposed construction directly
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`tracks
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`the “clear[] and unequivocal[]
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`disclaim[er]” in VirnetX’s responses to the PTO’s rejections. VirnetX itself expressly argued
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`that the ’504 patent disclaimed the mere return of an IP address, public key, digital signature, or
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`certificate as meeting the claimed “indication” limitations and that an affirmative signal “beyond
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`the establishment of the secure communication link itself” is required to meet those limitations.
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`This Court should bind VirnetX to these disclaimers. Biogen Idec., Inc. v. GlaxoSmithKline
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`LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013) (“[W]hen the patentee unequivocally and
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`unambiguously disavows a certain meaning to obtain a patent, the doctrine of prosecution history
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`5 The PTO maintained its rejections of all the claims of the ’504 patent following VirnetX’s
`response, and VirnetX appealed. VirnetX’s appeal brief, filed on December 26, 2013,
`contains the same statements of disclaimer as its earlier response t