INC.
`VIRNETX
`APPLICATIONS
`CORPORATION,
`
`
`
`vs.
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`APPLE, INC.,
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`
`
`
`Plaintiffs,
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`Defendant.
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`§
`§
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`§
`§
`
`
`§
`§ CASE NO. 6:12-CV-855
`§
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`§
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`§
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`§
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`§
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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 1 of 27 PageID #: 7334
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
`
`SCIENCE
`and
`INTERNATIONAL
`
`MEMORANDUM OPINION AND ORDER
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`This Memorandum Opinion construes the disputed claim terms in U.S. Patent Nos.
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`6,502,135 (“the ’135 Patent”), 7,418,504 (“the ’504 Patent”), 7,490,151 (“the ’151 Patent”),
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`7,921,211 (“the ’211 Patent”), 8,051,181 (“the ’181 Patent”), and 8,504,697 (“the ’697 Patent”)
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`(collectively, “the patents-in-suit”). Also before the Court is Defendant Apple, Inc.’s (“Apple”)
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`Motion for Summary Judgment of Indefiniteness (Docket No. 148). On May 20, 2014, the
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`parties presented arguments on the disputed claim terms at a Markman hearing. For the reasons
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`stated herein, the Court adopts the constructions set forth below and DENIES the Motion for
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`Summary Judgment.
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`BACKGROUND
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`VirnetX, Inc. (“VirnetX”) and Science Applications International Corporation (“SAIC”)
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`assert six patents against Apple. The ’135 Patent discloses a method of transparently creating a
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`virtual private network (“VPN”) between a client computer and a target computer. The ’504 and
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`’211 Patents disclose a secure domain name service. The ’151 Patent discloses a domain name
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`service capable of handling both standard and non-standard domain name service queries. The
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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 2 of 27 PageID #: 7335
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`’181 Patent discloses a method of establishing a secure communication link. The ’697 Patent
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`discloses a method of communicating between network devices.
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`The patents-in-suit are all related; Application No. 09/504,783 (“the ’783 Application”) is
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`an ancestor application for every patent-in-suit. The ’135 Patent issued on December 31, 2002,
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`from the ’783 Application. The ’151 Patent issued from a divisional of the ’783 Application.
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`The ’181 Patent issued from a divisional of a continuation-in-part of the ’783 Application. The
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`’504 Patent issued from a continuation of a continuation-in-part of the ’783 Application. The
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`’211 Patent issued from a continuation of the application that resulted in the ’504 patent. The
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`’697 Patent issued from a continuation of a continuation of the application that resulted in the
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`’211 Patent. The ’135 and ’151 Patents share a common specification, as do the ’504, ’211, and
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`’697 Patents.
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`The Court has already construed some of the terms at issue. See VirnetX, Inc. v.
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`Microsoft Corp., No. 6:07-cv-80, Docket No. 246 (E.D. Tex. July 30, 2009) (“Microsoft”);
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`VirnetX, Inc. v. Cisco Systems, Inc., et al., No. 6:10-cv-417, Docket No. 266 (E.D. Tex. Apr. 25,
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`2012) (“Cisco”); VirnetX, Inc. v. Mitel Networks Corporation, et al., No. 6:11-cv-18, Docket No.
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`307 (E.D. Tex. Aug. 1, 2012) (“Mitel”). The Microsoft case involved the ’135 Patent; the Cisco
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`case involved the ’135, ’504, ’151, and ’211 Patents; and the Mitel case involved the ’135, ’504,
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`and ’211 Patents.
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`APPLICABLE LAW
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
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`to which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303,
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`1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys.,
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`Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In claim construction, courts examine the patent’s
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`intrinsic evidence to define the patented invention’s scope. See id.; C.R. Bard, Inc. v. U.S.
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`2
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`

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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 3 of 27 PageID #: 7336
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`Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad
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`Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). This intrinsic evidence includes
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`the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at
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`1314; C.R. Bard, Inc., 388 F.3d at 861. Courts give claim terms their ordinary and accustomed
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`meaning as understood by one of ordinary skill in the art at the time of the invention in the
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`context of the entire patent. Phillips, 415 F.3d at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n,
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`342 F.3d 1361, 1368 (Fed. Cir. 2003).
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`The claims themselves provide substantial guidance in determining the meaning of
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`particular claim terms. Phillips, 415 F.3d at 1314. First, a term’s context in the asserted claim
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`can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the
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`claim’s meaning because claim terms are typically used consistently throughout the patent. Id.
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`Differences among the claim terms can also assist in understanding a term’s meaning. Id. For
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`example, when a dependent claim adds a limitation to an independent claim, it is presumed that
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`the independent claim does not include the limitation. Id. at 1314–15.
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`“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id.
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`(quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
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`“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is
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`dispositive; it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics
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`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); see also Teleflex, Inc. v.
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`Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may
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`define his own terms, give a claim term a different meaning than the term would otherwise
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`possess, or disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations,
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`the inventor’s lexicography governs. Id. Also, the specification may resolve ambiguous claim
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`3
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`

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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 4 of 27 PageID #: 7337
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`terms “where the ordinary and accustomed meaning of the words used in the claims lack
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`sufficient clarity to permit the scope of the claim to be ascertained from the words alone.”
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`Teleflex, Inc., 299 F.3d at 1325. But, “‘[a]lthough the specification may aid the court in
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`interpreting the meaning of disputed claim language, particular embodiments and examples
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`appearing in the specification will not generally be read into the claims.’” Comark Commc’ns,
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`Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced
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`Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323.
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`The prosecution history is another tool to supply the proper context for claim construction
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`because a patent applicant may also define a term in prosecuting the patent. Home Diagnostics,
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`Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) (“As in the case of the specification,
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`a patent applicant may define a term in prosecuting a patent.”).
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`Although extrinsic evidence can be useful, it is “‘less significant than the intrinsic record
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`in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
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`(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
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`understand the underlying technology and the manner in which one skilled in the art might use
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`claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
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`may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert
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`testimony may aid a court in understanding the underlying technology and determining the
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`particular meaning of a term in the pertinent field, but an expert’s conclusory, unsupported
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`assertions as to a term’s definition is entirely unhelpful to a court. Id. Generally, extrinsic
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`evidence is “less reliable than the patent and its prosecution history in determining how to read
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`claim terms.” Id.
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`4
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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 5 of 27 PageID #: 7338
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`Apple also contends that some claims at issue are invalid for indefiniteness. A claim is
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`invalid under 35 U.S.C. § 112 ¶ 2 if it fails to particularly point out and distinctly claim the
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`subject matter that the applicant regards as the invention. The party seeking to invalidate a claim
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`under 35 U.S.C. § 112 ¶ 2 as indefinite must show by clear and convincing evidence that the
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`claim, viewed in light of the specification and prosecution history, does not “inform those skilled
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`in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig
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`Instruments, Inc., 134 S. Ct. 2120, 2129, 2130 n.10 (2014); see Intellectual Prop. Dev., Inc. v.
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`UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1319 (Fed. Cir. 2003).
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`LEVEL OF ORDINARY SKILL IN THE ART
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`The parties agree that a person of ordinary skill in the art would have a master’s degree in
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`computer science or computer engineering as well as two years of experience in computer
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`networking and computer network security.
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`AGREED CLAIM TERMS
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`In the Joint Claim Construction Chart (Docket No. 113-1, Ex. A) the parties agreed to the
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`construction of the following terms:
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`Claim Term
`secure target web site
`automatically initiating the VPN
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`DNS proxy server
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`automatically initiating an encrypted
`channel
`automatically creating a secure
`channel
`automatically creating an encrypted channel
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`secure server
`
`Agreed Construction
`a secure web site on the target computer
`initiating the VPN without involvement of a
`user
`a computer or program that responds to a
`domain name inquiry in place of a DNS
`initiating
`the encrypted channel without
`involvement of a user
`creating
`the
`secure
`involvement of a user
`creating
`the encrypted channel without
`involvement of a user
`a server that requires authorization for access
`and that can communicate in an encrypted
`channel
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`channel without
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`5
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`

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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 6 of 27 PageID #: 7339
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`DISPUTED CLAIM TERMS
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`virtual private network (VPN)
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`Claims 1, 4–7, and 9–13 of the ’135 Patent contain the term “virtual private network” or
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`“VPN.” VirnetX proposes “a network of computers which privately and directly communicate
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`with each other by encrypting traffic on insecure communication paths between the computers.”
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`Apple proposes “a network of computers which privately and directly communicate with each
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`other by encrypting traffic on insecure paths between the computers where the communication is
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`both secure and anonymous.” The Court previously construed this term in Microsoft, Cisco, and
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`Mitel.
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`The parties dispute whether the Court’s construction should require the VPN to be both
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`secure and anonymous. Particularly, the parties dispute the anonymity requirement. Apple
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`asserts that a VPN requires anonymity1 and proposes the construction this Court adopted in
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`Cisco and Mitel, which included an anonymity requirement.2 VirnetX argues that anonymity is
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`not required and proposes the construction this Court adopted in Microsoft, which did not
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`include an anonymity requirement.3 However, the Court’s claim construction order in Microsoft
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`made clear that this term requires anonymity, even though the Court did not include the
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`anonymity requirement in its construction. See Microsoft, Docket No. 246 at 9 (“[T]he Court
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`construes ‘virtual private network’ as requiring both data security and anonymity.”). For clarity,
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`1 At the hearing, VirnetX asked Apple to clarify its position regarding anonymity. Apple explained that it contends
`anonymity is within the ordinary meaning of VPN, not that the inventors redefined VPN to add an anonymity
`requirement. Docket No. 174 at 30:5–14. Apple further clarified that it does not assert the inventors disavowed the
`full scope of VPN as known to persons of ordinary skill in the art. Id. at 33:3–5. Finally, Apple stated its position is
`that an IPSec VPN achieves anonymity. Id. at 38:8–13.
`2 In Cisco and Mitel, the Court construed “virtual private network” as “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.” Cisco, Docket No. 266 at 5–8; Mitel, Docket No. 307 at 4–6.
`3 In Microsoft, the Court construed “virtual private network” as “a network of computers which privately
`communicate with each other by encrypting traffic on insecure communication paths between the computers.”
`Microsoft, Docket No. 246 at 4–10.
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`6
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`

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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 7 of 27 PageID #: 7340
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`the Court explicitly added the anonymity requirement to its later constructions of this term in
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`Cisco and Mitel. See, e.g., Cisco, Docket No. 266 at 5. The Court hereby incorporates by
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`reference its reasoning in Microsoft. For the reasons stated in Microsoft and adopted in Cisco
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`and Mitel, the Court finds that a virtual private network requires anonymity. See Microsoft,
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`Docket No. 246 at 8–9. For clarity, this requirement is explicitly included in the Court’s
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`construction in this case. See Cisco, Docket No. 266 at 5.
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`If the Court rejects its position, VirnetX requests the Court to clarify the scope of the
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`anonymity required by the Court’s construction. First, it asks the Court to clarify that anonymity
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`is broader than that achieved by the IP-hopping embodiments of the ’135 Patent, and is achieved
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`by a tunneled, encrypted VPN. At the hearing, Apple agreed that anonymity is not limited to that
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`achieved by the IP-hopping embodiments of the patent. Docket No. 174 at 42:12–15. It also
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`stated that a tunneled, encrypted VPN can—but does not necessarily—achieve anonymity. Id. at
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`41:25–42:4; see id. at 38:21–39:7 (providing an example in which a tunneled, encrypted VPN
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`would not be anonymous). Accordingly, the Court clarifies that anonymity is not limited to that
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`achieved by the IP-hopping embodiments of the ’135 Patent, and can be achieved by a tunneled,
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`encrypted VPN.
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`Second, VirnetX requests the Court to clarify that anonymity is achieved by VPNs known
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`to persons of ordinary skill at the time of the invention. According to VirnetX, since Apple
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`claims anonymity is part of the ordinary meaning of VPN, by definition VPNs must achieve
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`anonymity. However, the Court’s conclusion that virtual private networks require anonymity is
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`based on intrinsic evidence in the specification. See Microsoft, Docket No. 246 at 8–9.
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`Accordingly, whether a certain VPN achieves anonymity as defined in the patent is a question of
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`infringement for the finder of fact.
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`7
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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 8 of 27 PageID #: 7341
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`For the reasons stated in Microsoft and Cisco and subject to the above clarifications, the
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`Court construes “virtual private network” as “a network of computers which privately and
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`directly communicate with each other by encrypting traffic on insecure paths between the
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`computers where the communication is both secure and anonymous.”
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`generating from the client computer a Domain Name Service (DNS) request
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`Claim 1 of the ’135 Patent contains the term “generating from the client computer a
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`Domain Name Service (DNS) request.” VirnetX argues that no construction is necessary. Apple
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`proposes “generating and transmitting from the client computer a DNS request.” The Court
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`previously construed this term in Cisco as “generating and transmitting from the client computer
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`a DNS request.” Cisco, Docket No. 266 at 27.
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`This term appears in the first step of the method recited in claim 1 of the ’135 Patent. In
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`that first step, a domain name service (“DNS”) request is generated from the client computer.
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`The second step determines whether the DNS request seeks access to a secure web site. VirnetX
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`expressed concern that Apple would use its proposed construction of this term to argue that the
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`second step cannot be performed by the client computer, but only by a separate device. At the
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`hearing, Apple stated it will not make that argument. VirnetX then agreed to Apple’s proposed
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`construction. The Court adopts the parties’ agreed construction and construes “generating from
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`the client computer a Domain Name Service (DNS) request” as “generating and transmitting
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`from the client computer a DNS request.”
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`an indication that the domain name service system supports establishing a secure
`communication link
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`Claims 1, 17, 24, 36, 48, and 60 of the ’504 Patent contain the term “an indication that
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`the domain name service system supports establishing a secure communication link.” VirnetX
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`argues that no construction is necessary, but alternatively proposes “an indication that the
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`8
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`

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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 9 of 27 PageID #: 7342
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`domain name service system has authorized and supports establishing a secure communication
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`link.” Apple proposes “an affirmative signal beyond the mere returning of an IP address, public
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`key, digital signature, or certificate that the domain name service system supports establishing a
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`secure communication link.” The parties dispute the meaning of an “indication.” In Mitel, the
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`Court determined that this term did not require construction. Mitel, Docket No. 307 at 10.
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`VirnetX argues that if the Court construes this term, it should clarify that an “indication”
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`means that authorization is being given to establish a secure communication link. Docket No.
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`136 at 9. VirnetX points to a description in the specification allowing only authorized users to
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`access a VPN. Id. at 9–10. It also argues that the specification disparages conventional domain
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`name services (“DNS”) for not differentiating between authorized and unauthorized users. Id. at
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`10. However, the specification’s preferred embodiments and characterizations of the prior art do
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`not impose an authorization limitation into the claims. Such an authorization requirement is
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`absent from the claims as drafted. Thus, the inclusion of an authorization requirement is
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`improper.
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`Apple’s proposed construction tracks disclaimers that it alleges occurred during
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`reexamination of the ’504 Patent, which occurred after the Court issued its claim construction
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`order in Mitel. Apple states that during the reexamination, the PTO rejected the relevant claims
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`because the claimed “indicate” and “indicating” limitations were met in the prior art through the
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`return of digital certificates, encryption keys, and addresses in response to a request for a secure
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`DNS. Docket No. 150 at 10. Apple explains that in response to this rejection, the patentees
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`disputed that any of those prior art features met the claimed “indication” limitations, thereby
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`disclaiming those items from the scope of the term “indication.” Id. VirnetX replies that Apple
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`9
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`

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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 10 of 27 PageID #: 7343
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`misreads reexamination remarks made to distinguish conventional DNS servers, and argues there
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`were no disclaimers. Docket No. 136 at 10–11.
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`In response to the rejection during reexamination, the patentees argued:
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`the [rejection] applies a much broader construction of ‘indication’
`that encompasses features that neither indicate that the domain
`name service system supports establishing a secure communication
`link nor are visible to any users, such as merely returning an IP
`address, a public key, or a certificate demonstrating authenticity of
`the source of the public key.
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`Docket No. 150-14, Ex. 13 at 5. The patentees continued, “[t]he ’504 patent specification clearly
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`and unequivocally disclaims merely returning an address or a public key by describing these
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`actions as ‘conventional’ in the prior art . . . .” Id., Ex. 13 at 6. They further stated, “[n]ever
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`does the specification equate the mere return of requested DNS records, such as an IP address or
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`key certificate, with supporting secure communications.” Id., Ex. 13 at 6.
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`In this response, the patentees clearly distinguished the mere return of requested DNS
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`records, such as an IP address or key certificate, the claimed “indication” terms. Thus, the
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`reexamination response constitutes an unequivocal disclaimer of DNS servers that only return
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`requested DNS records, such as an IP address or key certificate. Accordingly, the Court
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`construes “an indication that the domain name service system supports establishing a secure
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`communication link” as “an indication other than merely returning of requested DNS records,
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`such as an IP address or key certificate, that the domain name service system supports
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`establishing a secure communication link.”
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`indicate in response to the query whether the domain name service system supports
`establishing a secure communication link
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`Claim 1 of the ’211 Patent contains the term “indicate in response to the query whether
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`the domain name service system supports establishing a secure communications link.” VirnetX
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`argues that no construction is necessary, but alternatively proposes “indicate in response to the
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`10
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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 11 of 27 PageID #: 7344
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`query whether the domain name service system has authorized and supports establishing a secure
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`communication link.” Apple proposes “in response to the query for a network address,
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`affirmatively signaling beyond the mere returning of an IP address, public key, digital signature,
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`or certificate that the domain name service system supports establishing a secure communication
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`link.” In Mitel, the Court determined that this term did not require construction. Mitel, Docket
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`No. 307 at 11.
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`The issue and arguments regarding this term are identical to those raised for the previous
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`term. Namely, VirnetX’s response to a rejection during reexamination of the ’211 Patent, which
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`contains this term, is identical in relevant respects to the response to a rejection of the ’504
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`Patent quoted above. See Docket No. 150-15, Ex. 14 at 5–6. Further, the parties briefed this
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`term together with the previous term. For the same reasons stated regarding the previous term,
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`the Court construes “an indication that the domain name service system supports establishing a
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`secure communication link” as “indicate in response to the query, other than the mere returning
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`of requested DNS records, such as an IP address or key certificate, that the domain name service
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`system supports establishing a secure communication link.”
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`intercept / intercepting
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`Claims 1, 10, 15, 16, 29, and 30 of the ’697 Patent contain the term “intercept” or
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`“intercepting.” VirnetX argues no construction is necessary. Apple proposes “access/accessing
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`a communication addressed to another.” At the hearing, the parties agreed that this term does not
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`require construction, with the understanding that “intercepting” must mean more than simply
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`“receiving.” The Court adopts the parties’ agreement and clarifies that “intercepting” means
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`more than simply “receiving.” Given that clarification, the Court finds that “intercept /
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`intercepting” does not require construction.
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`11
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`

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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 12 of 27 PageID #: 7345
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`[intercept / intercepting] . . . a request to look up an internet protocol (IP) address
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`Claims 1 and 16 of the ’697 Patent contain the term “[intercept / intercepting] . . . a
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`request to look up an internet protocol (IP) address.” VirnetX argues no construction is
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`necessary, but alternatively proposes “receiving a request to look up an IP address and
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`performing some evaluation on the request that is not merely resolving the request.” Apple
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`argues no construction is necessary beyond the construction of “intercept” and “intercepting.”
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`The issue and arguments regarding this term are identical to those raised for the previous
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`term. Further, the parties briefed this term together with the previous term. For the same reasons
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`stated regarding the previous term, the Court clarifies that “intercepting” means more than
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`simply “receiving.” Given that clarification, the Court finds that “[intercept / intercepting] . . . a
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`request to look up an internet protocol (IP) address” does not require construction.
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`[determine/determining] . . . is available for a secure communications service
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`Claims 1, 14, and 16 of the ’697 Patent contain the term “[determine/determining] . . . is
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`available for a secure communications service.” VirnetX argues no construction is necessary.
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`Apple proposes “determine/determining whether a device is available to establish a secure
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`communication link.”
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`VirnetX complains that Apple’s proposed construction impermissibly changes the claim
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`language from “available for a secure communications service” to “available to establish a
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`secure communication link.” Docket No. 136 at 15. Apple defends its construction, claiming
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`that the secure communication link is used only after the second device is “available for a secure
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`communication service.” Docket No. 150 at 19–20. It asserts that, therefore, determining that a
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`device is “available for a secure communications service” requires a determination that the
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`device is “available to establish a secure communications link.” Id. Apple also cites the
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`12
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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 13 of 27 PageID #: 7346
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`specification in support of its construction, claiming that it equates the “secure communications
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`service” to the establishment and use of a “secure communication link.” Id. at 20.
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`The term “secure communications service” is found in the abstract, the summary of the
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`invention, and the claims. In each instance, its availability is the basis for initiating a secure
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`communication link. See ’697 Patent, abstract (explaining that the invention is configured to
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`“initiate a secure communication link between the first network device and the second network
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`device based on a determination that the second network device is available for the secure
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`communications service”); accord id. at cols. 8:16–20, 8:33–36; id., claims 1, 16. Thus, the
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`patent describes that to be “available for a secure communications service” is to be available “to
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`establish a secure communication link.”
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`The Court construes “[determine/determining]
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`.
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`.
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`.
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`is available for a secure
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`communications service” as “determine/determining whether a device is available to establish a
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`secure communication link.”
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`domain name lookup
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`Claims 14 and 28 of the ’697 Patent contain the term “domain name lookup.” VirnetX
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`argues no construction is necessary. Apple proposes “a lookup service that returns an IP address
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`for a requested domain name to the requester.” The parties dispute whether “domain name
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`lookup” requires the return of an IP address.
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`VirnetX contends that the claims only require looking up a domain name—not also
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`returning an IP address. Docket No. 136 at 16; Docket No. 152 at 8. It argues that requiring the
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`return of an IP address would exclude a preferred embodiment that does not return the true IP
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`address, but sets up a VPN instead. Docket No. 136 at 16. Apple disputes that contention,
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`arguing that an IP address is returned even when a VPN is established. Docket No. 150 at 22.
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`13
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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 14 of 27 PageID #: 7347
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`A “domain name lookup” performs the second step in claimed methods of connecting
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`network devices. ’697 Patent, claims 1, 14, 16, 28. The specification discloses the return of an
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`IP address after the first step—intercepting a request to look up the second device’s IP address—
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`but before the third step—initiating a secure communication link between the two devices. See
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`id. at cols. 39:32–38, 40:31–49. Thus, an IP address must be returned during the second step,
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`which is performed by a “domain name lookup.” While VirnetX contends an IP address need
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`not be returned, in the example actually cited by VirnetX, a DNS Proxy returns an IP address to
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`the requestor. Cisco, Docket No. 266 at 15. Thus, adopting Apple’s construction would not
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`exclude a preferred embodiment.
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`Accordingly, the Court construes “domain name lookup” as “a lookup service that returns
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`an IP address for a requested domain name to the requester.”
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`secure name service
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`Claims 2, 22, and 28 of the ’181 Patent contain the term “secure name service.” VirnetX
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`proposes “a lookup service that returns a network address for a requested secure name and
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`facilitates establishing a secure communication link based on a secure name.” Apple proposes
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`that the term is indefinite.
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`Apple argues that the intrinsic record lacks guidance as to how one of ordinary skill
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`would construe “secure name service,” which was coined by the patentees. Docket No. 148 at 9.
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`It states that the term was added to the claims to replace the term “name service,” which had
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`been rejected as indefinite by the PTO. Id. at 14. Apple contends that “secure name service” is
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`indefinite because the patentees’ definition of the term during reexamination relied on another
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`term that Apple asserts is indefinite, “secure name.” Id.
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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 15 of 27 PageID #: 7348
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`As explained below, Apple has not met its burden to show that the term “secure name” is
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`indefinite. See infra pp. 16–17. Thus, Apple’s argument that “secure name service” is indefinite
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`because it depends on the definition of “secure name” fails.
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`Regarding construction, VirnetX argues that a secure domain name service described in
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`the specification is the preferred embodiment of a “secure name service.” Docket No. 136 at 16.
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`First, it asserts that, like the embodiment, the claimed “secure name service” returns a network
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`address. Id. However, it contends that the embodiment is not limiting. Thus, it contends that,
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`unlike the embodiment, the network address returned is not required to be secure. Id. at 17.
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`Second, VirnetX maintains that, like the embodiment, the claimed “secure name service” must
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`facilitate establishing a secure communication link. Id.
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`Contrary to VirnetX’s argument, the specification’s disclosure of a secure domain name
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`service is not merely a preferred, non-limiting embodiment—it is the only embodiment. It
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`presents the only objective measure to determine the scope of the claims using “secure name
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`service.” Consistent with the Court’s previous construction of “secure domain name service,”
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`the returned network address must be secure. See Microsoft, Docket No. 246 at 31–32; Cisco,
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`Docket No. 266 at 17–19. Further, VirnetX’s proposal requiring the “secure name service” to
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`facilitate establishing a secure communication link adds a functional limitation that does not help
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`define the term. It is thus rejected.
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`The Court construes “secure name service” as “a lookup service that returns a secure
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`network address for a requested secure name.” Apple’s Motion for summary judgment that this
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`term is indefinite is DENIED.
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`15
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`Case 6:12-cv-00855-RWS Document 180 Filed 08/08/14 Page 16 of 27 PageID #: 7349
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`secure name
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`Claims 1, 2, 3, 5, 8, 10, 11, 22, 23, and 24–29 of the ’181 Patent contain the term “secure
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`name.” VirnetX proposes “an authenticated name that can be resolved by a secure name service
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`and can be used for establishing a secure communication link.” Apple proposes that the term is
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`indefinite.
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`Like the previous term, Apple argues that the intrinsic record lacks guidance as to how
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`one of ordinary skill would construe “secure name,” which was coined by the patentees. Docket
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`No. 148 at 9. It states that in response to an indefiniteness rejection regarding “secure name”
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`during prosecution, the patentees only provided non-limiting examples to define the term. Id. at
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`9–10. Apple further notes that dependent claim 3 of the ’181 Patent specifies that the “secure
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`name” in claim 2 be a “secure domain name.” Id. at 11. Thus, it argues, “secure name” must
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`encompass something more than a “secure domain name,” which is disclosed in the specification
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`and has been construed by the Court. Id.
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`VirnetX states that in response