IPR2016-01585
`
`Declaration for IPR of U.S. Patent No. 8,904,516
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`Patent No. 8,904,516
`Issued: December 2, 2014
`Filed: June 6, 2013
`
`Inventors: Victor Larson, et al.
`Titles: SYSTEM AND METHOD EMPLOYING AN AGILE NETWORK
`PROTOCOL FOR SECURE COMMUNICATIONS USING SECURE DOMAIN
`NAMES
`
`Inter Partes Review No. 2016-001585
`
`
`
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF ROBERTO TAMASSIA REGARDING U.S. PATENT
`NO. 8,904,516
`
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, Cover
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`I.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................... 1
`A.
`Engagement ........................................................................................... 1
`B.
`Background and Qualifications ............................................................. 1
`C.
`Compensation and Prior Testimony ...................................................... 3
`D.
`Information Considered ......................................................................... 3
`LEGAL STANDARDS FOR PATENTABILITY ...................................... 4
`II.
`A. Anticipation ........................................................................................... 5
`B.
`Obviousness ........................................................................................... 7
`III. THE ’516 PATENT ..................................................................................... 12
`A.
`Effective Filing Date of the ’516 Patent ............................................. 12
`B.
`Overview of The ’516 Patent .............................................................. 15
`C.
`The Prosecution History of The ’516 Patent ....................................... 17
`D.
`Construction of Terms Used in the ’516 Patent Claims ...................... 18
`1. Background on the Broadest Reasonable Interpretation ............... 18
`2. Broadest Reasonable Interpretation of Terms of the ’516
`Patent ............................................................................................. 20
`a) “intercept[ing] . . . a request” ................................................. 20
`b) “encrypted communication link” ........................................... 21
`c) “secure communications service” .......................................... 23
`d) “server” ................................................................................... 24
`e) “domain name” ....................................................................... 26
`f) “modulation” .......................................................................... 27
`E.
`Level of Ordinary Skill in the Art ....................................................... 28
`IV. TECHNICAL BACKGROUND ................................................................. 29
`COMPUTER NETWORKS ................................................................ 29
`A.
`a) The OSI Model ....................................................................... 29
`b) The Internet ............................................................................ 30
`
`i
`
`Petitioner Apple Inc. - Exhibit 1003, p. i
`
`

`

`IPR2016-01585
`
`V.
`
`Declaration of Dr. Roberto Tamassia
`
`Internet Protocol Suite (TCP/IP) ......................................................... 32
`B.
`DOMAIN NAME SYSTEM (DNS) ................................................... 34
`C.
`D. NETWORK ENCRYPTION ............................................................... 37
`1. Symmetric Encryption – DES & AES .......................................... 38
`2. Asymmetric Key Encryption – Public/Private Keys .................... 38
`3. Key Exchange ............................................................................... 40
`IDENTIFICATION OF THE PRIOR ART ............................................. 43
`Exhibit 1007 – U.S. Patent 6,496,867 to Beser and Borella ............... 43
`A.
`Request for Comment (RFC) Publications ......................................... 43
`B.
`Exhibit 1008 – RFC 2401 .................................................................... 45
`C.
`VI. OVERVIEW OF THE PRIOR ART ......................................................... 46
`A. U.S. Patent No. 6,496,867 to Beser ..................................................... 46
`1. Overview of Beser ......................................................................... 46
`2. Basic Components ......................................................................... 50
`a) Originating and Terminating End Devices............................. 51
`b) First and Second Network Devices ........................................ 53
`c) Trusted-Third-Party Network Device .................................... 56
`3. IP Tunnel ....................................................................................... 59
`4. Establishing an IP Tunnel ............................................................. 61
`a) Request Containing A Unique Identifier ................................ 62
`b) Negotiation of Private IP Addresses ...................................... 68
`RFC 2401, the IPsec Protocol ............................................................. 72
`1. Overview of RFC 2401 ................................................................. 72
`2. Incorporating RFC 2401 into the Beser System ........................... 82
`
`B.
`
`ii
`
`Petitioner Apple Inc. - Exhibit 1003, p. ii
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`I.
`
`INTRODUCTION
`A. Engagement
`1.
`
`I have been retained by counsel for Apple Inc. as an expert witness in
`
`the above-captioned proceeding. I have been asked to provide an opinion
`
`regarding the state of the art of the technology described in U.S. Patent No.
`
`8,904,516 (“the ’516 Patent”) (Exhibit 1001). I have been asked to provide a
`
`description of various references that I understand are prior art to these patents and
`
`to provide a discussion of the meaning of certain words and phrases in the claims
`
`of these patents.
`
`B.
`2.
`
`Background and Qualifications
`
`I am the Plastech Professor of Computer Science at Brown University.
`
`My research interests include computer security, applied cryptography, analysis,
`
`design, and implementation of algorithms, graph drawing and computational
`
`geometry. I have published six textbooks and more than 240 peer-reviewed
`
`research articles in the above areas. I have given more than 70 invited lectures
`
`worldwide. I am a fellow of ACM, AAAS, and IEEE. I have received a Technical
`
`Achievement Award from the IEEE Computer. I am listed among the 360 most
`
`cited computer science authors worldwide by Thomson Scientific, Institute for
`
`Scientific Information (ISI). My research has been funded by ARO, DARPA,
`
`NATO, NSF, and several industrial sponsors (including Google, Microsoft,
`
`NetApp, and Sun Microsystems). I received my Ph.D. degree in electrical and
`
`1
`
`Petitioner Apple Inc. - Exhibit 1003, p. 1
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`computer engineering from the University of Illinois at Urbana-Champaign in
`
`1988.
`
`3.
`
`I have extensive research and educational experience in computer and
`
`network security. I have developed and taught graduate and undergraduate
`
`computer security courses at Brown. I have coauthored a widely adopted textbook
`
`on computer security that includes two chapters (over one hundred pages) on
`
`network security, covering topics such as network layers, TCP/IP, DNS, firewalls,
`
`tunneling, and IPsec, wireless networks, and virtual private networks.
`
`4. My research spans a broad range of topics in security and privacy,
`
`including cryptographic foundations, access control, authentication, data security
`
`and privacy, network security, email and web security, database security,
`
`application security, cloud computing security, and the visualization of security.
`
`Also, I have been an early developer of distributed systems that provide client-
`
`server applications over the internet.
`
`5.
`
`I am often invited by the National Science Foundation to evaluate
`
`grant proposals on computer and network security. I am also regularly asked by
`
`my university and by peer institutions to give an opinion on the research in
`
`computer and network security by faculty candidates considered for hiring, tenure
`
`and promotion. Finally, I am routinely serving in the program committees of
`
`highly selective international conferences in computer and network security.
`
`2
`
`Petitioner Apple Inc. - Exhibit 1003, p. 2
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`6.
`
`A copy of my CV has been filed as Exhibit 1004.
`
`C. Compensation and Prior Testimony
`7.
`
`I am being compensated at a rate of $500 per hour for my work in this
`
`matter. I am being reimbursed for reasonable and customary expenses associated
`
`with my work in this investigation. My compensation is not contingent on the
`
`outcome of this matter or the specifics of my testimony.
`
`8. Within the last five years, I have testified by deposition in the matter
`
`of Dustan et al. v. comScore, Inc., a software privacy case where I served as an
`
`expert witness for comScore. I have also testified by deposition in connection with
`
`IPR proceedings Nos. IPR2015-00810, -00811, -00812, -00866, -00868, -00870, -
`
`00871, -01009, and -01010 on behalf of Apple.
`
`D.
`Information Considered
`9. My opinions are based on my years of education, research, and
`
`experience, as well as my investigation and study of relevant materials. In forming
`
`my opinions, I have considered the materials I identify in this report and those
`
`listed in the Exhibit List included with the petition.
`
`10.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by the Patent Owner. I may also consider additional
`
`documents and information in forming any necessary opinions — including
`
`documents that may not yet have been provided to me.
`
`3
`
`Petitioner Apple Inc. - Exhibit 1003, p. 3
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`11. My analysis of the materials produced in this investigation is ongoing,
`
`and I will continue to review any new material as it is provided. This report
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information
`
`and on my continuing analysis of the materials already provided.
`
`II. LEGAL STANDARDS FOR PATENTABILITY
`12. Certain basic legal principles have been explained to me by counsel
`
`for Apple. Below, I have recorded these legal standards as they were explained to
`
`me.
`
`13. First, I understand that for an invention claimed in a patent to be
`
`found patentable, it must be, among other things, new and not obvious from what
`
`was known before the invention was made.
`
`14.
`
`I understand the information that is used to evaluate whether an
`
`invention is new and not obvious is generally referred to as “prior art” and
`
`generally includes patents and printed publications (e.g., books, journal
`
`publications, articles on websites, product manuals, etc.).
`
`15.
`
`I understand that in this proceeding Apple has the burden of proving
`
`that the claims of the ’516 Patent are anticipated by or obvious from the prior art
`
`by a preponderance of the evidence. I understand that “a preponderance of the
`
`evidence” is evidence sufficient to show that a fact is more likely true than it is not.
`
`4
`
`Petitioner Apple Inc. - Exhibit 1003, p. 4
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`16. As I discuss further in the claim construction section below, I
`
`understand that the claims of the ’516 Patent must be given their broadest
`
`reasonable construction consistent with the patent specification. However, I also
`
`understand that it is possible that a patent will expire before the Board in these
`
`proceedings issues a final decision, in which case I understand that it is possible
`
`the Board may apply the Phillips standard of claim construction in that final
`
`decision. For this reason, I provide my understanding of that claim construction
`
`standard below. I understand that the claims, after being construed, are then to be
`
`compared to the information in the prior art.
`
`17.
`
`I understand that in this proceeding, the information that may be
`
`evaluated is limited to patents and printed publications.
`
`18.
`
`I understand that there are two ways in which prior art may render a
`
`patent claim unpatentable. First, the prior art can be shown to “anticipate” the
`
`claim. Second, the prior art can be shown to have made the claim “obvious” to a
`
`person of ordinary skill in the art. My understanding of the two legal standards is
`
`set forth below.
`
`A. Anticipation
`19.
`
`I understand that the following standards govern the determination of
`
`whether a patent claim is “anticipated” by the prior art.
`
`5
`
`Petitioner Apple Inc. - Exhibit 1003, p. 5
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`20.
`
`I understand that the “prior art” includes patents and printed
`
`publications that existed before the earliest filing date (the “effective filing date”)
`
`of the claim in the patent. I also understand that a patent will be prior art if it was
`
`filed before the effective filing date of the claimed invention, while a printed
`
`publication will be prior art if it was publicly available before that date.
`
`21.
`
`I understand that, for a patent claim to be “anticipated” by the prior
`
`art, each and every requirement of the claim must be found, expressly or
`
`inherently, in a single prior art reference as recited in the claim. I understand that
`
`claim limitations that are not expressly described in a prior art reference may still
`
`be there if they are “inherent” to the thing or process being described in the prior
`
`art. For example, an indication in a prior art reference that a particular process
`
`complies with a published standard would indicate that the process must inherently
`
`perform certain steps or use certain data structures that are necessary to comply
`
`with the published standard.
`
`22.
`
`I understand that if a reference incorporates other documents by
`
`reference, the incorporating reference and the incorporated reference(s) should be
`
`treated as a single prior art reference for purposes of analyzing anticipation.
`
`23.
`
`I understand that it is acceptable to consider evidence other than the
`
`information in a particular prior art document to determine if a feature is
`
`necessarily present in or inherently described by that reference.
`
`6
`
`Petitioner Apple Inc. - Exhibit 1003, p. 6
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`B. Obviousness
`24.
`
`I understand that a claimed invention is not patentable if it would have
`
`been obvious to a person of ordinary skill in the field of the invention at the time
`
`the invention was made.
`
`25.
`
`I understand that the obviousness standard is defined in the patent
`
`statute (35 U.S.C. § 103(a)) as follows:
`
`26. A patent may not be obtained though the invention is not identically
`
`disclosed or described as set forth in section 102 of this title, if the differences
`
`between the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which said subject matter
`
`pertains. Patentability shall not be negatived by the manner in which the invention
`
`was made.
`
`27.
`
`I understand that the following standards govern the determination of
`
`whether a claim in a patent is obvious.
`
`28.
`
`I understand that to find a claim in a patent obvious, one must make
`
`certain findings regarding the claimed invention and the prior art. Specifically, I
`
`understand that the obviousness question requires consideration of four factors
`
`(although not necessarily in the following order):
`
` The scope and content of the prior art;
`
`7
`
`Petitioner Apple Inc. - Exhibit 1003, p. 7
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
` The differences between the prior art and the claims at issue;
` The knowledge of a person of ordinary skill in the pertinent art; and
` Whatever objective factors indicating obviousness or non-obviousness
`may be present in any particular case.
`In addition, I understand that the obviousness inquiry should not be
`
`29.
`
`done in hindsight, but must be done using the perspective of a person of ordinary
`
`skill in the relevant art as of the effective filing date of the patent claim.
`
`30.
`
`I understand the objective factors indicating obviousness or non-
`
`obviousness may include: commercial success of products covered by the patent
`
`claims; a long-felt need for the invention; failed attempts by others to make the
`
`invention; copying of the invention by others in the field; unexpected results
`
`achieved by the invention; praise of the invention by those in the field; the taking
`
`of licenses under the patent by others; expressions of surprise by experts and those
`
`skilled in the art at the making of the invention; and the patentee proceeded
`
`contrary to the accepted wisdom of the prior art. I also understand that any of this
`
`evidence must be specifically connected to the invention rather than being
`
`associated with the prior art or with marketing or other efforts to promote an
`
`invention. I am not presently aware of any evidence of “objective factors”
`
`suggesting the claimed methods are not obvious, and reserve my right to address
`
`any such evidence if it is identified in the future.
`
`8
`
`Petitioner Apple Inc. - Exhibit 1003, p. 8
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`31.
`
`I understand the combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable results.
`
`I also understand that an example of a solution in one field of endeavor may make
`
`that solution obvious in another related field. I also understand that market
`
`demands or design considerations may prompt variations of a prior art system or
`
`process, either in the same field or a different one, and that these variations will
`
`ordinarily be considered obvious variations of what has been described in the prior
`
`art.
`
`32.
`
`I also understand that if a person of ordinary skill can implement a
`
`predictable variation, that variation would have been considered obvious. I
`
`understand that for similar reasons, if a technique has been used to improve one
`
`device, and a person of ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way, using that technique to improve the other
`
`device would have been obvious unless its actual application yielded unexpected
`
`results or challenges in implementation.
`
`33.
`
`I understand that the obviousness analysis need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, but
`
`instead can take account of the “ordinary innovation” and experimentation that
`
`does no more than yield predictable results, which are inferences and creative steps
`
`that a person of ordinary skill in the art would employ.
`
`9
`
`Petitioner Apple Inc. - Exhibit 1003, p. 9
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`34.
`
`I understand that sometimes it will be necessary to look to interrelated
`
`teachings of multiple patents; the effects of demands known to the design
`
`community or present in the marketplace; and the background knowledge
`
`possessed by a person having ordinary skill in the art. I understand that all these
`
`issues may be considered to determine whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue.
`
`35.
`
`I understand that the obviousness analysis cannot be confined by a
`
`formalistic conception of the words “teaching, suggestion, and motivation.” I
`
`understand that in 2007, the Supreme Court issued its decision in KSR Int'l Co. v.
`
`Teleflex, Inc., 550 U.S. 398 (2007), where the Court rejected the previous
`
`requirement of a “teaching, suggestion, or motivation to combine” known elements
`
`of prior art for purposes of an obviousness analysis as a precondition for finding
`
`obviousness. It is my understanding that KSR confirms that any motivation that
`
`would have been known to a person of skill in the art, including common sense, or
`
`derived from the nature of the problem to be solved, is sufficient to explain why
`
`references would have been combined.
`
`36.
`
`I understand that a person of ordinary skill attempting to solve a
`
`problem will not be led only to those elements of prior art designed to solve the
`
`same problem. I understand that under the KSR standard, steps suggested by
`
`common sense are important and should be considered. Common sense teaches
`
`10
`
`Petitioner Apple Inc. - Exhibit 1003, p. 10
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`that familiar items may have obvious uses beyond the particular application being
`
`described in a reference, that if something can be done once it is obvious to do it
`
`multiple times, and in many cases a person of ordinary skill will be able to fit the
`
`teachings of multiple patents together like pieces of a puzzle. As such, the prior art
`
`considered can be directed to any need or problem known in the field of endeavor
`
`as of the effective filing date and can provide a reason for combining the elements
`
`of the prior art in the manner claimed. In other words, the prior art does not need
`
`to be directed towards solving the same problem that is addressed in the patent.
`
`Further, the individual prior art references themselves need not all be directed
`
`towards solving the same problem.
`
`37.
`
`I understand that an invention that might be considered an obvious
`
`variation or modification of the prior art may be considered non-obvious if one or
`
`more prior art references discourages or leads away from the line of inquiry
`
`disclosed in the reference(s). A reference does not “teach away” from an invention
`
`simply because the reference suggests that another embodiment of the invention is
`
`better or preferred. My understanding of the doctrine of teaching away requires a
`
`clear indication that the combination should not be attempted (e.g., because it
`
`would not work or explicit statements saying the combination should not be made).
`
`38.
`
`I understand that a person of ordinary skill is also a person of ordinary
`
`creativity.
`
`11
`
`Petitioner Apple Inc. - Exhibit 1003, p. 11
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`39.
`
`I further understand that in many fields, it may be that there is little
`
`discussion of obvious techniques or combinations, and it often may be the case that
`
`market demand, rather than scientific literature or knowledge, will drive design
`
`trends. When there is such a design need or market pressure to solve a problem
`
`and there are a finite number of identified, predictable solutions, a person of
`
`ordinary skill has good reason to pursue the known options within their technical
`
`grasp. If this leads to the anticipated success, it is likely the product not of
`
`innovation but of ordinary skill and common sense. In that instance the fact that a
`
`combination was obvious to try might show that it was obvious. The fact that a
`
`particular combination of prior art elements was “obvious to try” may indicate that
`
`the combination was obvious even if no one attempted the combination. If the
`
`combination was obvious to try (regardless of whether it was actually tried) or
`
`leads to anticipated success, then it is likely the result of ordinary skill and
`
`common sense rather than innovation.
`
`III. THE ’516 PATENT
`A. Effective Filing Date of the ’516 Patent
`40.
`
`I have been informed that the ’516 patent issued from Application No.
`
`13/911,813 filed on June 6, 2013. I have further been informed that the ’813
`
`application is a continuation of Application No. 13/903,788, which is a
`
`continuation of Application No. 13/336,790 (issued as U.S. Patent No. 8,458,341),
`
`12
`
`Petitioner Apple Inc. - Exhibit 1003, p. 12
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`which is a continuation of Application No. 13/049,552 (issued as U.S. Patent No.
`
`8,572,247), which is a continuation of Application No. 11/840,560 (issued as U.S.
`
`Patent No. 7,921,211), which is a continuation of Application No. 10/714,849
`
`(issued as Patent No. 7,418,504), which is a continuation of Application No.
`
`09/558,210, filed April 26, 2000, and now abandoned, which is a continuation-in-
`
`part of Application No. of 09/504,783, filed on February 15, 2000 (issued as U.S.
`
`Patent No. 6,502,135), which is a continuation-in-part of Application No.
`
`09/429,643, filed on October 29, 1999 (issued as U.S. Patent No. 7,010,604). The
`
`’210, ’783 and ’643 applications also claim priority to 60/106,261, filed October
`
`30, 1998 and 60/137,704, filed June 7, 1998.
`
`41. Based on my review of these applications, I believe that the two
`
`independent claims of the ’516 patent (claims 1 and 15) rely on information that
`
`was first included in the ’783 application. I therefore understand that the priority
`
`date for these claims is the date that application was filed: February 15, 2000.
`
`Because all of the other claims in the patent are dependent claims that rely on
`
`claims 1 and 15, and because I have been informed that a patent claim cannot
`
`claim an earlier priority date than a claim from which that claim “depends,” it is
`
`my understanding that the priority date for all claims of the ’516 patent is February
`
`15, 2000.
`
`13
`
`Petitioner Apple Inc. - Exhibit 1003, p. 13
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`42. For example, I note that claim 1 of the ’516 patent requires
`
`intercepting “a request to look up an internet protocol (IP) address of [a] second
`
`network device based on an identifier associated with the second network device,”
`
`while claim 15 requires intercepting “a request to look up an internet protocol (IP)
`
`address of [a] second network device based on an identifier associated with the
`
`second network device.” Based on my review of the documents, no application
`
`filed prior to the ’783 application discloses intercepting “a request to look up an
`
`internet protocol (IP) address . . . based on an identifier” as claimed, or otherwise
`
`provides a description of the techniques that appear in the ’0705 patent claims.
`
`43. Furthermore, I have also been informed (and reviewed documents that
`
`show) that in proceedings involving the related ’135, ’504, ’151, ’211, ’274 and
`
`’697 patents, there has been no dispute that claims specifying looking up an IP
`
`address based on an identifier associated with a network device have an effective
`
`filing date of at least February 15, 2000. See, e.g., Patent Owner Preliminary
`
`Oppositions in IPR2013-00348, -00349, -00354, -00375 to -00378, -00393, -
`
`00394, -00397, and -00398, as well as IPR2014-00237, -00238, -00403, -00404,
`
`and -00610; see also Inter Partes Reexamination Nos. 95/001,682, 95/001,679,
`
`95/001,697, 95/001,714, 95/001,788, and 95/001,789.
`
`44. Accordingly, it is my understanding that the effective filing date of the
`
`’516 patent claims is no earlier than February 15, 2000.
`
`14
`
`Petitioner Apple Inc. - Exhibit 1003, p. 14
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`B. Overview of The ’516 Patent
`45. The ’516 patent is generally focused on something called “Tunneled
`
`Agile Routing Protocol” (TARP), which the patent describes as a mechanism for
`
`secure network communication. Ex. 1001 at 3:20-23. As it is described in the
`
`patent, TARP provides secure and anonymous communications through several
`
`different mechanism: 1) tunneling; 2) an IP address hopping scheme where the IP
`
`addresses for computers and routers using the this scheme may change over time;
`
`3) and other security techniques (such as using decoy data, fixed packet sizes, and
`
`session key encryption). Ex. 1001 at 1:38-40, 3:20-6:13.
`
`46. There are two short sections of the patent (roughly corresponding to
`
`columns 39-42 and 49-53) that were added in a continuation-in-part application
`
`that was filed in February 2000. I will refer to these sections as the “DNS
`
`sections” of the patent. The DNS sections refer to a technique for setting up secure
`
`communications in response to a DNS request specifying a secure destination. See
`
`Ex. 1001 at 39:28-42:22, 49:29-53:38.
`
`47.
`
`I have been informed that, in proceedings involving related patents,
`
`Patent Owner has asserted that the DNS sections provide written description
`
`support for claim terms involving domain names, DNS requests, requests to look
`
`up network addresses, and DNS servers. These are concepts that are addressed by
`
`the claims of the ’516 patent.
`
`15
`
`Petitioner Apple Inc. - Exhibit 1003, p. 15
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`48. The DNS sections describe modifying a “conventional DNS server” to
`
`allow that server to create virtual private networks. See Ex. 1001 at 40:24-52.
`
`According to these sections, the “modified DNS server” (Ex. 1001 at 40:28-29)
`
`will intercept a DNS request to look up a network address associated with a
`
`domain name. See Ex. 1001 at 39:28-33, 40: 6-23, 40:34-52. The modified DNS
`
`server will then determine whether a secure site has been requested by, for
`
`example, checking an “internal table of such sites.” See Ex. 1001 at 40:34-52.
`
`One of ordinary skill in the art would have understood that when the specification
`
`references an “internal table,” it is referencing any one of a number ways to
`
`represent structured data, such as an actual table, a database, a flat file, a map, etc.
`
`If it is determined that the DNS request corresponds to a secure site (e.g., because
`
`the name in the DNS request matches an entry in the table or database), the
`
`modified DNS server will then perform additional steps to establish a “virtual
`
`private network” with the specified secure site. See Ex. 1001 at 41:26-43, 51:62-
`
`52:1.
`
`49. The DNS sections indicate that the process of establishing a virtual
`
`private network can include conventional devices such as personal computers
`
`running web browsers, proxy servers, intermediate routers, and web servers. Ex.
`
`1001 at 40:24-33, 49:43-53, 52:55-59.
`
`16
`
`Petitioner Apple Inc. - Exhibit 1003, p. 16
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`50. The ’516 patent also describes several optional features of the secure
`
`communication technique described in the DNS sections, such as using “IP
`
`hopblocks” to create a VPN, or incorporating user authentication. Ex. 1001 at
`
`40:24-33, 49:43-53, 52:55-59. The patent also describes several optional
`
`configurations of the “modified DNS system,” such as a standalone DNS server
`
`and a system that incorporates a DNS server, a DNS proxy server and a
`
`gatekeeper. Ex. 1001 at 40:24-33.
`
`C. The Prosecution History of The ’516 Patent
`51.
`
`I understand that during prosecution of the ’813 application (which
`
`later issued as the ’516 patent), (1) certain claims were rejected under 35 U.S.C.
`
`§ 112 (pre America Invents Act (AIA)) as being indefinite, (2) every claim was
`
`rejected under § 101 as claiming non-statutory subject matter, (3) certain claims
`
`were rejected under the doctrine of obviousness-type double patenting, and (4)
`
`every claim was either rejected under § 102 as anticipated by U.S. Patent
`
`5,898,830 to Wesinger (Ex. 1044) or as obvious under § 103 over Wesinger in
`
`view of U.S. Patent 6,011,579 to Newlin. Ex. 1002 (516 Patent File History) at
`
`236-246. In response, Patent Owner amended the claims purportedly to resolve the
`
`§§ 112 and 101 rejections, including adding the language “the one or more servers
`
`includes one or more processors” and “the method performed by one or more
`
`processors.” Ex. 1002 at 315-322. Patent Owner asked that the double patenting
`
`17
`
`Petitioner Apple Inc. - Exhibit 1003, p. 17
`
`

`

`IPR2016-01585
`
`Declaration of Dr. Roberto Tamassia
`
`rejections be held in abeyance, and argued that Wesinger did not disclose a request
`
`to look up an IP address, or the claimed determining step. Ex. 1002 at 323-327. I
`
`understand that the Office then issued a final rejection that withdrew eve