Trials@uspto.gov
`571-272-7822
`
`Paper No. 44
`
` Entered: August 30, 2016
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00810
`Patent 8,868,705 B2
`____________
`
`
`
`Before KARL D. EASTHOM, JENNIFER S. BISK, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`

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`IPR2015-00810
`Patent 8,868,705 B2
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`
`I. INTRODUCTION
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`Apple Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) pursuant to
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`35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1–34 of
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`U.S. Patent No. 8,868,705 B2 (Ex. 1001, “the ’705 patent”). VirnetX Inc.
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`(“Patent Owner”)1 filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
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`We have jurisdiction under 35 U.S.C. § 314. On September 11, 2015, we
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`granted the Petition and instituted trial on claims 1–34 of the ’705 patent.
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`Paper 8 (“Institution Decision” or “Dec. Inst.”)
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`After institution of trial, Patent Owner filed a Patent Owner Response
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`(Paper 25, “PO Resp.”), and Petitioner filed a Reply (Paper 29, “Reply”). In
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`addition, Petitioner proffered the Declaration of Dr. Roberto Tamassia
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`(“Tamassia Declaration,” Ex. 1005). The deposition of Dr. Tamassia was
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`taken by Patent Owner and filed by both parties. (“Tamassia Deposition,”
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`Ex. 1068).2 Patent Owner proffered the Declaration of Dr. Fabian Monrose.
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`(“Monrose Declaration,” Ex. 2016).3 The deposition of Dr. Monrose was
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`taken in this proceeding4 and in the ’237 IPR. (“Monrose Deposition,” Ex.
`
`1066).
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`An oral hearing was held on June 8, 2016. The transcript of the
`
`hearing has been entered into the record. Paper 43 (“Tr.”).
`
`
`1 The Petition also names Science Application International Corporation as
`Patent Owner. However, the Patent Owner Response names only VirnetX.
`2 Patent Owner filed the Tamassia Deposition as Exhibit 2015. We refer
`only to Ex. 1068 unless otherwise noted.
`3 Patent Owner also filed a Declaration of Dr. Monrose (Ex. 2001) from
`Apple Inc. v. VirnetX Inc., IPR2014-00237 (“’237 IPR”). Patent Owner does
`not cite to Exhibit 2001.
`4 The deposition of Dr. Monrose (Ex. 1067) from the ’237 IPR was also filed
`here by Patent Owner. Patent Owner does not cite to Exhibit 1067.
`
`
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`2
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`IPR2015-00810
`Patent 8,868,705 B2
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`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a). We conclude, for the
`
`reasons that follow, that Petitioner has shown by a preponderance of the
`
`evidence that claims 1–34 of the ʼ705 patent are unpatentable.
`
`A. The ’705 Patent
`
`The ’705 patent describes a system and method for transparently
`
`creating an encrypted communications channel between a client device and a
`
`target device. Ex. 1001, Abstract, Figs. 26, 27 (elements 2601, 2604).
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`Secure communication is based on a protocol called the “Tunneled Agile
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`Routing Protocol” or “TARP.” Id. at 3:16–19. Once the encrypted
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`communications channel is created, the devices are configured to allow
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`encrypted communications between themselves over the encrypted
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`communications channel. Id. at 40:66–41:9. Figure 26 of the ’705 patent is
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`reproduced below.
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`3
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`IPR2015-00810
`Patent 8,868,705 B2
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`
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`Referring to Figure 26, user’s computer 2601 is a conventional client, e.g., a
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`web browser. Ex. 1001, 39:58–60. Gatekeeper server 2603 is interposed
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`between modified Domain Name Server (“DNS”) 2602 and secure target
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`site 2604. Id. at 39:62–66. The DNS includes both conventional DNS
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`server function 2609 and DNS proxy 2610. Id. Conventional IP protocols
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`allow access to unsecure target site 2611. Id. at 39:66–67.
`
`In one described embodiment, establishing the encrypted
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`communications channel includes intercepting from the client device a
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`request to look up an Internet Protocol (IP) address corresponding to a
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`domain name associated with the target device. Ex. 1001, 40:1–19. It
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`further includes determining whether the request to look up the IP address
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`corresponds to a device that accepts an encrypted channel connection with
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`the client device. Id. at 40:1–29. Gatekeeper 2603 facilitates and allocates
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`the exchange of information for secure communication, such as using
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`“hopped” IP addresses. Id. at 40:32–35.
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`The DNS proxy server handles requests for DNS look-up for secure
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`hosts. Ex. 1001, 40:43–45. If the host is secure, then it is determined
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`whether the user is authorized to connect with the host. Id. at 40:51–53. If
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`the user is authorized to connect, a secure Virtual Private Network (VPN) is
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`established between the user’s computer and the secure target site. Id. at
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`40:66–41:2.
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`B. Illustrative Claim
`
`Petitioner challenges claims 1–34 of the ’705 patent. Claim 1 is an
`
`independent method claim and claim 21 is an independent system claim. All
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`4
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`IPR2015-00810
`Patent 8,868,705 B2
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`remaining claims depend directly or indirectly from claim 1 or 21. Claim 1
`
`is reproduced below.
`
`1.
`transparently creating an encrypted
`A method of
`communications channel between a client device and a target
`device, each device being configured to allow secure data
`communications between the client device and the target device
`over the encrypted communications channel once the encrypted
`communications channel is created, the method comprising:
`
`(1) intercepting from the client device a request to look up an
`Internet Protocol (IP) address corresponding to a domain name
`associated with the target device;
`
`(2) determining whether the request to look up the IP address
`transmitted5 in step (1) corresponds to a device that accepts an
`encrypted channel connection with the client device; and
`
`
`(3) in response to determining, in step (2), that the request to
`look up the IP address in step (2) corresponds to a device that
`accepts an encrypted communications channel connection with
`the client device, providing provisioning information required
`to initiate the creation of the encrypted communications channel
`between the client device and the target device such that the
`encrypted communications channel supports secure data
`communications transmitted between the two devices, the client
`device being a device at which a user accesses the encrypted
`communications channel.
`
`Ex. 1001, 55:43–67.
`
`
`5 Patent Owner asserts “transmitted” was printed in error and that the claim
`was amended to include “intercepted” instead of “transmitted.” See Prelim.
`Resp. 29, n.3 (citing Ex. 1002, 638–639, 641, 655–656). In our Order dated
`December 9, 2015, (Paper 24) we authorized Patent Owner to file a request
`for a certificate of correction changing the word “transmitted” in claims 1
`and 21 to “intercepted.” Paper 24, 3. In addition, as stipulated by the
`parties, we ordered that the change of wording does not affect the patentable
`significance of claims 1 and 21. Id.
`
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`5
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`IPR2015-00810
`Patent 8,868,705 B2
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`C. Instituted Grounds of Unpatentability
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`We instituted on the following grounds asserted by Petitioner under
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`35 U.S.C. § 103: (1) claims 1–4, 6–10, 12–26, and 28–34 as unpatentable
`
`over Beser6 and RFC 2401;7 (2) claims 5, 11, and 27 as unpatentable over
`
`Beser, RFC 2401, and Brand.8 Dec. Inst. 23.
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`A. Claim Construction
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`II. ANALYSIS
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`In an inter partes review, the Board construes claim terms in an
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`unexpired patent under their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming
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`the Patent Office’s authority to issue regulations establishing and governing
`
`inter partes review under 35 U.S.C. § 316(a)(4)). Under this standard,
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`absent any special definitions, claim terms or phrases are given their
`
`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art, in the context of the entire disclosure. In re Translogic Tech.,
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The Board construed claim
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`terms in a related patent in the Final Written Decision for the ’237 IPR. See
`
`’237 IPR, (PTAB May 11, 2015) (Paper No. 41) ( “’237 FWD”) (on appeal
`
`at the Federal Circuit). See also VirnetX, Inc. v. Cisco Systems, Inc., 767
`
`
`6 US 6,496,867 B1, issued Dec. 17, 2002, to Nurettin B. Beser and Michael
`Borella (“Beser,” Ex. 1007).
`7 S. Kent and R. Atkinson, Security Architecture for the Internet Protocol,
`Request for Comments: 2401, BBN Corp., November 1998 (“RFC 2401,”
`Ex. 1008).
`8 US 5,237,566, issued Aug. 17, 1993, to Robert C. Brand and Stanford L.
`Mantiply (“Brand,” Ex. 1012).
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`6
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`Patent 8,868,705 B2
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`F.3d 1308, 1317–19 (Fed. Cir. 2014) (addressing ancestor VirnetX patents
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`having similar claim terms).
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`Petitioner and Patent Owner each proffer proposed constructions of
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`several claim terms. See Pet. 9–15; PO Resp. 1–17. Regardless of the
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`preceding, Petitioner contends that the only terms Patent Owner argues are
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`not disclosed by Beser and RFC 2401 are “secure domain name” and
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`“intercepting.” Pet. Reply 1–2. Patent Owner disagrees with Petitioner and
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`with the Institution Decision’s determination that no term requires
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`construction. PO Resp. 1–2 (citing Dec. Inst. 8). Patent Owner identifies
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`seven terms for construction. Id. at 3–17.
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`We have compared Patent Owner’s arguments in its Response to the
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`terms it identifies for construction. Specifically, Patent Owner argues
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`Besser and RFC 2401 do not disclose: (1) “intercepting from the client
`
`device a request to look up an Internet Protocol (IP) address;”9 and (2)
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`“secure domain name.”10 No other argument in the Response is based on a
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`term Patent Owner proposes for construction. We, therefore, agree with
`
`Petitioner that the only terms that may require construction are “intercepting
`
`from the client device a request to look up an Internet Protocol (IP) address”
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`and “secure domain name.” See Pet. Reply 1–2. With respect to all other
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`claim terms Patent Owner identifies for construction, our analysis is based
`
`on plain and ordinary meaning as understood by the person of ordinary skill
`
`in the art.
`
`
`9 PO Resp. 21–27.
`10 PO Resp. 33–34.
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`7
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`

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`IPR2015-00810
`Patent 8,868,705 B2
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`1. “intercepting from the client device a request to look up an Internet
`Protocol (IP) address” (claims 1 and 21)
`
`Independent method claim 1 recites “intercepting from the client
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`device a request to look up an Internet Protocol (IP) address corresponding
`
`to a domain name associated with the target device” (the “intercepting
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`limitation”). Independent system claim 21 recites similarly “intercept from
`
`the client device a request to look up an Internet Protocol (IP) address.”
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`Petitioner proposes a construction from the institution decision in the ’237
`
`IPR, “receiving a request pertaining to a first entity at another entity.” Pet.
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`10–11. This construction was adopted in the Final Written Decision in the
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`’237 IPR. ’237 FWD 10–12.
`
`Quoting Patent Owner in the ’237 IPR, we noted that Patent Owner
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`“disagrees with this construction” (’237 PO Resp. 23), but “believes that no
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`construction is necessary” (id. at 26), because “it does not appear that the
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`construction of ‘intercepting’ will bear on the outcome of the issues in this
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`inter partes review” (id. at 23). ’237 FWD 11. The ’237 IPR and this
`
`proceeding involve the same issue with respect to this term and the asserted
`
`prior art. Patent Owner does not dispute the relevance of the ’237 IPR,
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`including the construction of the intercepting limitation. See PO Resp. 24,
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`n5 (referencing our construction of the intercepting limitation in the ’237
`
`IPR). Patent Owner states in the instant proceeding that “no construction is
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`necessary.” PO Resp. 11. Nevertheless, Patent Owner urges that if we
`
`construe the term, then we should adopt Patent Owner’s construction:
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`“receiving a request to look up an internet protocol address and, apart from
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`resolving it into an address, preforming an evaluation on it related to
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`establishing a secure communication channel.” Id.
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`8
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`IPR2015-00810
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`To support its proposed alternative construction in this proceeding,
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`Patent Owner argues its alternative construction “appropriately captures the
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`notion of performing an additional evaluation on a request to look up an IP
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`address related to establishing an encrypted communications channel,
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`beyond conventionally resolving it and returning the address.” PO Resp. 12
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`(citing Prelim. Resp. 29–32;11 Ex. 2016 ¶ 24). Patent Owner’s arguments
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`and the record show that Patent Owner’s proposed construction adds
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`unnecessary functionality to “intercepting a request” and violates the plain
`
`language of the claim. According to Patent Owner’s arguments, another
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`recited phrase in claim 1 (and a similar phrase in claim 21), captures the
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`functionality, in particular, the “determination” clause of claim 1. Id. More
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`specifically, Patent Owner argues in the determination clause of claims 1
`
`and 21 “a determination is made whether the request to look up the IP
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`address corresponds to a device that accepts an encrypted channel
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`connection with the client device, and that ‘in response to’ this
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`determination, provisioning information required to initiate the encrypted
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`communications channel is provided.” Id. We are not persuaded that
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`functionality in another step of claim 1 supports Patent Owner’s proposal.
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`Indeed, that the additional functionality Patent Owner proposes is covered
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`elsewhere in the same claim would make Patent Owner’s proposed
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`construction of the intercepting limitation duplicative and/or confusing.
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`The parties agree that the intercepting limitation (at least) involves
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`receiving a request at some intermediate device. PO Resp. 11; Pet. 10–11.
`
`
`11 To the extent it attempts to do so, it is improper for Patent Owner to
`incorporate the Preliminary Response in its Response by reference. 37
`C.F.R. § 42.6(a)(3). To the extent the arguments are repeated in the
`Response, they are proper and will be considered.
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`9
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`Patent Owner’s proposed construction does not create any distinction
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`between receiving and intercepting. According to Petitioner’s proposed
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`construction, an “interception” by (intermediate) proxy DNS includes
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`“receiving” a request to look up an address for another (downstream) entity
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`(i.e., the request pertains to that downstream entity). Pet. 10 (citing Ex.
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`1001, 39:1–3, 40:1–7, Figs. 26, 27). Furthermore, as quoted above, Patent
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`Owner agreed in the ’237 IPR that Petitioner’s construction captured “the
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`disclosed embodiments.” ’237 PO Resp. 26. In essence, Petitioner’s
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`construction captures the notion of interception as disclosed in the ’705
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`patent, by requiring receiving to “pertain” to another entity.
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`Patent Owner alleges that Petitioner adopted an “intent” requirement
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`in the “interception” clause. PO Resp. 23–24, n.5. Patent Owner points to a
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`discussion by the Board in the ’237 IPR institution decision that Dr.
`
`Tamassia discusses. Id. at 24 (citing Ex. 2015, 80:3–13; Ex. 2016 ¶ 36); see
`
`also id. at 24, n.5 (citing ’237 IPR, Paper 15, 12). Petitioner disagrees with
`
`any intent requirement and contends that Patent Owner mischaracterizes Dr.
`
`Tamassia’s testimony. Pet. Reply 14–15.
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`Patent Owner only addresses this “intent” requirement in an attempt to
`
`distinguish its claims over the prior art and does not propose it as part of its
`
`claim construction. See id. at 23–24. Furthermore, any alleged prior
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`requirement of “intent” did not survive to the ’237 FWD. Compare ’237
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`IPR, Paper 15 (institution decision), 13, with ’237 FWD 10–12. More
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`importantly, Patent Owner does not allege or attempt to show that the ’705
`
`patent supports or requires such “intent” as part of the broadest reasonable
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`10
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`Patent 8,868,705 B2
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`construction of the intercepting limitation. The record fails to show support
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`for it.12
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`Based on the foregoing discussion, the record shows that the
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`additional functionality urged by Patent Owner should not be imported into
`
`the intercepting limitation, and Petitioner’s construction tracks the claim and
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`Specification. Accordingly, as set forth in the ’237 FWD, the broadest
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`reasonable construction of the intercepting limitation is “receiving a request
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`pertaining to a first entity at another entity.”
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`2. “secure domain name” (claims 3, 10, and 25)
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`Dependent claims 3 and 10 depend respectively from claims 1 and 8,
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`which depends from claim 1. Claim 25 depends from claim 21. Claims 3,
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`10, and 25 each recite “wherein the domain name is a secure domain name.”
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`Relying, in part, on a related inter partes proceeding, Petitioner argues
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`“secure domain name” is “a name that corresponds to a secure computer
`
`network address.” Pet. 11–12 (citing IPR2015-00481).13 Petitioner
`
`contends its proposed construction is consistent with the Specification. Id. at
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`12 (citing Ex. 1001, 51:6–42 (“a ‘secure domain name’ [is] a domain name
`
`that corresponds to the secure network address of a secure server 3320”).
`
`
`12 Although not part of the claim construction, a requestor may “intend” for
`the entered domain name in a request to reach the target device, but the DNS
`intercepts it to perform the look up. See, e.g., Ex. 1001, 39:41–46 (“DNS
`server traps DNS requests”), id. at 39:64–66 (“A gatekeeper server 2603 is
`interposed between the modified DNS server and a secure target site
`2701.”).
`13 The full citation is Apple Inc. v. Virnetx, Inc., IPR2014-00481 (“’481
`IPR”), slip. op. at 8 (PTAB Sept. 3, 2014) (Paper 11); see also ’481 IPR,
`Final Written Decision, at 13–14 (Paper 35) (declining to modify
`construction).
`
`
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`11
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`Petitioner notes additional disclosure from the Specification in support of its
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`construction. Id. (citing Ex. 1001, 40:1–7, 7:39–42). Finally, Petitioner
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`refers to testimony from the Tamassia Declaration, which relies on the same
`
`portions of the Specification to conclude that the term has “a more general
`
`meaning of being a name that corresponds to a particular device on a secure
`
`computer network (i.e., one that would have an address on that secure
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`computer network).” Id. (citing Ex. 1005 ¶ 73).
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`Patent Owner acknowledges Petitioner’s proposed construction was
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`adopted in the ’237 IPR. PO Resp. 4. 14 However, Patent Owner argues
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`“secure domain name” means “a non-standard domain name that
`
`corresponds to a secure computer network address and cannot be resolved by
`
`a conventional domain name service (DNS).” Id. at 3 (Table). Patent
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`Owner argues its proposed construction was an agreed construction from the
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`related district court litigation. Id. at 4 (citing Virnetx Inc. v. Apple Inc.,
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`Case 6:10-cv-00417-LED (E.D. Tex., Dec. 21, 2011), Joint Claim
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`Construction Chart, 19–20, Ex. 2002). PO Resp. 4. Patent Owner cites to
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`the Specification as also supporting its proposal, specifically including that
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`the “secure domain name” is a “nonstandard domain name.” Id. (citing Ex.
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`1001, 7:29–31, 7:39–42, 50:22–31, 51:6–10, Figs. 33–34). Testimony from
`
`the Monrose Declaration ’810 is also cited as support that “SDNS 3313
`
`contains a cross-reference database of secure domain names and
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`corresponding secure network addresses.” Id. (citing Ex. 2016 ¶¶ 15–16).15
`
`
`14 The ’237 IPR construction of “secure domain name” is the same as the
`construction in the ’481 IPR cited above by Petitioner.
`15 The cited portion of the Monrose Declaration includes quotes from the
`’705 Patent. The Monrose Declaration does conclude, based on the
`Specification, that “[o]ne of ordinary skill in the art would understand based
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`12
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`Patent Owner further contends it disclaimed Petitioner’s proposed
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`construction in a now completed inter partes reexamination of a related
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`patent. PO Resp. 5 (citing Control No. 95/001,270, Response to Office
`
`Action, 5 (Apr. 19, 2010), Ex. 2008; Control No. 95/001,270, Right of
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`Appeal Notice, 4 (Dec. 3, 2010), Ex. 2006). Patent Owner acknowledges
`
`this is a prosecution history estoppel argument which “generally binds only
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`the patent owner.” Id. at 6–7 (citing Tempo Lighting, Inc. v. Tivoli, LLC,
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`742 F.3d 973, 978 (Fed. Cir. 2014). Patent Owner urges the prosecution
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`history should be consulted in subsequent reviews of the patent in
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`determining the broadest reasonable interpretation. Id. at 7 (citing Microsoft
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`Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015); Straight
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`Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362 (Fed. Cir.
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`2015)).
`
`We start with the language of claims 3, 10, and 25. These dependent
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`claims recite that the domain name is a “secure domain name.” The plain
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`meaning of those words is found in Petitioner’s proposed construction, “a
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`name that corresponds to a secure computer network address.” The
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`language is clear and straightforward and any construction under the
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`broadest reasonable interpretation standard should not lead us away from
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`that clarity. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005)
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`(en banc) (“In some cases, the ordinary meaning of claim language as
`
`understood by a person of skill in the art may be readily apparent even to lay
`
`judges, and claim construction in such cases involves little more than the
`
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`on the disclosure of the ’705 patent that to obtain the URL for a ‘secure
`domain name,’ ‘a secure domain name service (SDNS)’ must be queried.”
`Ex. 2016 ¶ 17. This opinion is not supportive of the proposed construction.
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`13
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`application of the widely accepted meaning of commonly understood
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`words.”).
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`We turn now to the Specification. The patent may set out a particular
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`meaning of a claim term that diverges from its plain meaning so long as it
`
`does so “with reasonable clarity, deliberateness, and precision.” In re
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`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). “Without an express intent to
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`impart a novel meaning to claim terms, an inventor’s claim terms take on
`
`their ordinary meaning.” York Prods., Inc. v. Central Tractor Farm &
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`Family Ctr., 99 F.3d 1568, 1572 (Fed. Cir. 1996).
`
`The ’705 patent states that “[a]lternatively, software module 3409 can
`
`replace the top-level domain name of server 3304 with any other
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`non-standard top-level domain name.” Ex. 1001, 50:29–31. The column 50
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`quote follows a description of standard domain names like .com, including
`
`adding “s” for secure. Id. In addition to the preceding, the Specification
`
`discloses an example of “replac[ing] the top-level domain name . . . with a
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`secure top-level domain name.” Ex. 1001, 50:22–25, see also id. at 51:6–42
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`(a “secure domain name” is a domain name that corresponds to the secure
`
`network address of a secure server 3320), id. at 40:1–7 (evaluating domain
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`names in DNS requests to determine whether access to a secure site has been
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`requested), id. at 7:39–42 (“Each secure computer network address is based
`
`on a non-standard top-level domain name, such as .scom,.sorg, .snet, .sedu,
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`.smil and .sint.”). Thus, the Specification does not expressly state that the
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`“secure domain name” must be “non-standard,” only that it is secure, which
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`is encompassed in Petitioner’s proposed construction.
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`Next we address Patent Owner’s prosecution history estoppel
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`argument. There is nothing in the Federal Circuit case law which dictates
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`14
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`that prosecution history is anything more than something to be consulted in
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`claim interpretation. Philips, 415 F.3d at 1317 (“[T]he prosecution history
`
`provides evidence of how the PTO and the inventor understood the patent.
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`. . . Yet because the prosecution history represents an ongoing negotiation
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`between the PTO and the applicant, rather than the final product of that
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`negotiation, it often lacks the clarity of the specification and thus is less
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`useful for claim construction purposes.”); Tempo Lighting, Inc. v. Tivoli,
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`LLC, 742 F.3d 973, 978 (Fed. Cir. 2014) (The “court also observes that the
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`PTO is under no obligation to accept a claim construction proffered as a
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`prosecution history disclaimer, which generally only binds the patent
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`owner.”).
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`The Specification and claims record do not support the prosecution
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`history arguments. The plain language of the claims outweighs the
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`arguments made. For example, Patent Owner contends that Patentee
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`disclaimed “a domain name that just happens to be associated with a secure
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`computer or just happens to be associated win an address requiring
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`authorization” during an inter partes reexamination of a related patent, and
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`that the Specification supports its construction. See PO Resp. 5 (citing
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`Response to Office Action in control No. 95/001,270 (Apr. 19, 2010), 5 (Ex.
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`2008)). It is not clear how this argument creates a distinction, or what “just
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`happens to be associated with a secure computer” means, but Patent Owner
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`appears to contend it means “a secure domain name cannot be resolved by a
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`conventional domain name service.”16 See PO Resp. 5; Ex. 2008, 6 (arguing
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`16 The Examiner’s citations and reasoning in the 95/001,270 reexamination
`proceeding involving the ’180 patent track Patent Owner’s arguments and do
`not support the specific disclaimer argued. The Examiner states that “[f]or
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`“a secure domain name cannot be resolved by a conventional domain name
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`service, for example, but relying on “the inventors . . . acting as their own
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`lexicographers” and citing disclosed examples in the ’180 patent of non-
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`standard top-level domain names).
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`Nothing in the ’705 (or ’180) patent requires a conventional DNS not
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`to return an address for all of the disclosed secure domain names, for
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`example, if the name happens to be listed in that DNS and also another
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`DNS, such as a secure DNS. A conventional DNS function involves
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`resolving names into addresses. See Ex. 1005 ¶¶ 126–27 (“much like a file
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`system”), 304–08 (citing Ex. 1001, 39:1–3 (describing Conventional DNS
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`functionality)). The ’705 patent contemplates returning different addresses
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`for the same domain name based on a user’s security levels, identity, and/or
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`subscription level, , and combining conventional DNS and proxy functions.
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`Ex. 1001, 40:20–29, 38–40, 51–57, 51:6–27. Furthermore, rather than not
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`returning a secure domain name from a conventional DNS based on the type
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`of name itself, the Specification states that a “DNS proxy” returns a “host-
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`unknown” “if the user had requested lookup of a secure web site but lacked
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`credentials to create such a connection.” Id. at 40:24–27 (emphases added).
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`example, the ’180 patent explains that a secure domain name service can
`resolve addresses for a secure domain name whereas a conventional domain
`name service cannot resolve addresses for a secure domain name.” Ex.
`2006, 6 (citing ’180 patent, 51:25–53). Citing the same passage, the
`Examiner also states that “querying a convention[al] domain name server
`using a secure domain name will result in a return message indicating that
`the URL is unknown.” Id. The cited examples do not support a clear
`disclaimer that distinguishes a “secure domain name” from a secure domain
`name that happens to correspond to a secure computer. See id. These
`passages describe examples that correspond to a non-standard top-level
`domain name. See ’180 patent, 51:25–53.
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`Patentee’s attempt during prosecution of the ’180 patent to act as its
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`“own lexicographer[]” by relying on examples in the ’180 patent that relate
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`to non-standard top-level domain names indicates (Ex. 2008, 6) that the
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`disclaimer argument does not pass muster. Patent Owner does not argue
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`here that the ’705 patent supports a lexicographic definition for all its
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`disclosed secure domain names based on unclaimed examples related to top-
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`level secure domain names.
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`Furthermore, Petitioner contends that Patent Owner argued during
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`prosecution of a related patent that the term “secure name” encompassed a
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`“secure non-standard domain name” such as “a secure nonstandard top-level
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`domain name (e.g., .scom) or a telephone number.” Pet. Reply 16 (citing
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`Ex. 1069, 9). The cited prosecution history by Petitioner shows that
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`Patentee urged a construction that more closely tracks Petitioner’s
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`construction here and does not require a conventional DNS not to recognize
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`a secure name:
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`Applicant submits that a “secure name” is a name associated
`with a network address of a first device. The name can be
`registered such that a second device can obtain the network
`address associated with the first device from a secure name
`registry and send a message to the first device. The first device
`can then send a secure message to the second device. The
`claimed “secure name” includes, but is not limited to, a secure
`domain name. For example, a “secure name” can be a secure
`non-standard domain name, such as a secure non-standard top-
`level domain name (e.g., .scom) or a telephone number.
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`Ex. 1069, 9 (emphasis added).
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`Patent Owner does not demonstrate that the Specification requires a
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`secure domain name to be “top-level” or “non-standard.” And more
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`importantly, setting aside the top-level domain names, which are mere
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`examples that Patent Owner does not rely on as part of its proposed claim
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`construction, Patent Owner fails to explain clearly what the term “non-
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`standard” means or how a “non-standard” domain name differs from a
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`“secure computer network address.” As discussed below, even if we
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`adopted Patent Owner’s narrower claim construction, as supported by the
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`prosecution history, our obviousness analysis would remain unchanged.
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`We determine that the prosecution history argument is not supported by the
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`Specification and is outweighed by the plain language of the claim.
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`Similarly, in addition to the just-described prosecution history, in the
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`final written decision in the ’481 IPR, the Board found that “Patent Owner . .
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`. made the opposite argument to a district court that it is making here, and
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`argued that the ‘non-standard’ distinction ‘is not supported by the
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`specification or the prosecution history.’” IPR2014-00481, Paper 35, 13
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`(quoting ’481 IPR Ex. 1018, 18 (district court findings and rationale)).17
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`The record here supports the argument made by Patent Owner in the district
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`court––the Specification and prosecution history do not support the non-
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`standard distinction.
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`Neither are we persuaded that what the parties agreed to in the district
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`court binds us. First, Petitioner does not agree to that construction in this
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`proceeding. We are unaware of any precedent preventing Petitioner from
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`taking inconsistent positions in different forums and Patent Owner does not
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`cite any either. Further, as has now been confirmed in Cuozzo, we apply the
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`broadest reasonable interpretation standard and not the litigation standard in
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`17 The district court case cited in the ’481 IPR involved a finding of a
`disclaimer of a different but related term: “secure domain name service.”
`See ’481 IPR, Ex. 1018, 17–18; ’481 IPR, Ex. 2003, 91.
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