Trials@uspto.gov
`571-272-7822
`
` Paper No. 44
`Entered: September 8, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00811
`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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`IPR2015-00811
`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
`
`35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1–34 of
`
`U.S. Patent No. 8,868,705 B2 (Ex. 1001, “the ’705 patent”). VirnetX Inc.
`
`(“Patent Owner”)1 filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`
`On September 11, 2015, we granted the Petition and instituted trial on
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`claims 1–34 of the ’705 patent. Paper 8 (“Institution Decision” or “Inst.
`
`Dec.”)
`
`After institution of trial, Patent Owner filed a Patent Owner Response
`
`(Paper 25, “PO Resp.”), and Petitioner filed a Reply (Paper 29, “Pet.
`
`Reply”). In addition, Petitioner proffered the Declaration of Dr. Roberto
`
`Tamassia (“Tamassia Declaration,” Ex. 1005). The deposition of Dr.
`
`Tamassia was taken by Patent Owner and the deposition transcript was filed
`
`by both parties. (“Tamassia Deposition,” Ex. 1068).2 Patent Owner
`
`proffered the Declaration of Dr. Fabian Monrose. (“Monrose Declaration,”
`
`Ex. 2016).3 The deposition of Dr. Monrose was taken in this proceeding
`
`(“Monrose Deposition,” Ex. 1066).
`
`An oral hearing was held on June 8, 2016. The transcript of the
`
`hearing has been entered into the record. Paper 43 (“Tr.”).
`
`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
`
`
`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 transcript as Exhibit 2015.
`We refer only to Ex. 1068 unless otherwise noted.
`3 Patent Owner also filed a Declaration of Dr. Monrose from Apple Inc. v.
`VirnetX Inc., IPR2014-00237 (“’237 IPR”) (“Monrose Declaration ’237,”
`Ex. 2001). Patent Owner does not cite to Exhibit 2001.
`
`
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`2
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`IPR2015-00811
`Patent 8,868,705 B2
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`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).
`
`Secure communication is based on a protocol called the “Tunneled Agile
`
`Routing Protocol” or “TARP.” Id. at 3:16–19. Once the encrypted
`
`communications channel is created, the devices are configured to allow
`
`encrypted communications between themselves over the encrypted
`
`communications channel. Id. at 40:66–41:9. Figure 26 of the ’705 patent is
`
`reproduced below.
`
`Referring to Figure 26, user’s computer 2601 is a conventional client, e.g., a
`
`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
`
`allow access to unsecure target site 2611. Id. at 39:66–67.
`
`In one described embodiment, establishing the encrypted
`
`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
`
`domain name associated with the target device. Ex. 1001, 40:1–19. It
`
`further includes determining whether the request to look up the IP address
`
`corresponds to a device that accepts an encrypted channel connection with
`
`the client device. Id. at 40:1–29. Gatekeeper 2603 facilitates and allocates
`
`the exchange of information for secure communication, such as using
`
`“hopped” IP addresses. Id. at 40:32–35.
`
`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
`
`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.
`
`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
`
`remaining claims depend directly or indirectly from claim 1 or 21. Claim 1
`
`is reproduced below.
`
`1. A method of
`transparently creating an encrypted
`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
`
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`
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`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
`transmitted4 in step (1) corresponds to a device that accepts
`an encrypted channel connection with the client device; and
`
`
`(3) in response to deterring 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.
`
`C. Instituted Grounds of Unpatentability
`
`We instituted on the following grounds asserted by Petitioner under
`
`35 U.S.C. § 103: (1) claims 1–3, 6, 14, 16–25, 28, 31, 33, and 34 as obvious
`
`
`4 Patent Owner asserts “transmitted” was printed in error and that the
`limitation was amended to include “intercepted” instead of “transmitted.”
`Prelim. Resp. 30 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, we observed that
`the parties stipulated that the change of wording was not of patentable
`significance. Id. Patent Owner filed a Certificate of Correction. Ex. 2017.
`
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`5
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`IPR2015-00811
`Patent 8,868,705 B2
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`under 35 U.S.C. § 103 over Aventail5 and RFC 24016; (2) claims 8–10, 12,
`
`15, 30, and 32 as obvious under 35 U.S.C. § 103 over Aventail, RFC 2401,
`
`and RFC 25437; (3) claims 4, 5, 7, 26, 27, and 29 as obvious under 35
`
`U.S.C. § 103 over Aventail, RFC 2401, and Brand8; and (4) claims 11 and
`
`13 as obvious under 35 U.S.C. § 103 over Aventail, RFC 2401, RFC 2543,
`
`and Brand. Inst. Dec. 24.
`
`A. Claim Construction
`
`II. ANALYSIS
`
`In an inter partes review, the Board construes claim terms in an
`
`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);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming
`
`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,
`
`absent any special definitions, claim terms or phrases are given their
`
`
`5 Exhibits 1009–1011 are manuals documenting software created by
`Aventail Corporation. Both parties use “Aventail” in citing to the
`documentation for the client software, Exhibit 1009. Exhibit 1009 is the
`primary exhibit cited. We will use “Aventail” or “Aventail Connect” when
`referring to Exhibit 1009. See Aventail Connect v3.01/v2.51
`Administrator’s Guide (Ex. 1009), Aventail Connect v3.01/v2.51 User’s
`Guide (1996-1999) (Exhibit 1010), and Aventail ExtraNet Center v3.0
`Administrator’s Guide (NT and UNIX) (Exhibit 1011).
`6 S. Kent and R. Atkinson, Security Architecture for the Internet Protocol,
`Request for Comments: 2401, BBN Corp., November 1998 (“RFC 2401,”
`Ex. 1008).
`7 Handley, M., et al., SIP: Session Initiation Protocol, published March 1999
`(“RFC 2453,” Ex. 1013).
`8 US 5,237,566, issued Aug. 17, 1993, to Robert C. Brand and Stanford L.
`Mantiply (“Brand,” Ex. 1012).
`
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`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 similar
`
`claim terms in the Final Written Decision for the ’237 IPR. See ’237 IPR,
`
`slip op. 5–15 (PTAB May 11, 2015) (Paper No. 41) (“’237 FWD”). See also
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`VirnetX, Inc. v. Cisco Systems, Inc., 767 F.3d 1308, 1317–19 (Fed. Cir.
`
`2014) (addressing ancestor VirnetX patents having similar claim terms).
`
`Petitioner and Patent Owner each proffer proposed constructions of
`
`several claim terms. See Pet. 8–14, PO Resp. 2–15. Both parties argue for
`
`the construction of four terms: “secure domain name” (PO Resp. 4–8, Pet.
`
`Reply 2–3); “encrypted communications channel” (PO Resp. 8–10, Pet.
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`Reply 3); “provisioning information” (PO Resp. 10–13, Pet. Reply 4); and
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`“intercept[ing] . . . a request to look up an Internet Protocol (IP) address”
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`(PO Resp. 13–15, Pet. Reply 4). Our review of Patent Owner’s arguments
`
`confirms these four terms form the basis for Patent Owner’s patentability
`
`arguments. See PO Resp. 23, 25, 26, 28.
`
`The additional terms proposed initially for construction in the Petition
`
`are: “domain name;” “modulated/unmodulated transmission;” and “phone.”
`
`See Pet. 10, 13–14. As of now, these terms are not in dispute and
`
`construction is not required to resolve the issues before us. We do not
`
`identify any additional terms for construction.
`
`1. “secure domain name” (claims 3, 10, 25)
`
`Dependent claims 3 and 10 depend respectively from claims 1 and 8,
`
`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.”
`
`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 (citing IPR2015-00481, “’481 IPR”).9 Petitioner
`
`contends its proposed construction is consistent with the Specification. Id.
`
`(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”).
`
`Petitioner notes additional disclosures from the Specification in support of
`
`its construction. Id. (citing Ex. 1001, 40:1–7, 7:39–42). Finally, Petitioner
`
`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
`
`computer network).” Id. (citing Ex. 1005 ¶ 73).
`
`Patent Owner acknowledges Petitioner’s proposed construction was
`
`adopted in the ’237 IPR. PO Resp. 4. 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. (Table). Patent Owner’s
`
`proposed construction was an agreed construction from the related district
`
`court litigation. Id. (citing VirnetX Inc. v. Apple Inc., Case 6:10-cv-00417-
`
`LED (E.D. Tex. Dec. 21, 2011), Joint Claim Construction Chart, 19–20, Ex.
`
`2002). Patent Owner cites to the Specification as also supporting its
`
`proposal, specifically including that the “secure domain name” is a
`
`
`9 The full citation is Apple Inc. v. VirnetX, Inc., IPR2014-00481 (“’481
`IPR”), Institution Decision, slip. op. at 8 (PTAB Sept. 3, 2014) (Paper 11);
`see also ’481 IPR, Final Written Decision, slip op. at 13–14 (Aug. 24, 2015)
`(Paper 35) (declining to modify construction).
`
`
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`8
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`“nonstandard domain name.” Id. (citing Ex. 1001, 7:29–31, 7:39–42, 50:22–
`
`31, 51:6–10, Figs. 33, 34). Testimony from the Monrose Declaration is also
`
`cited as support that “SDNS 3313 contains a cross-reference database of
`
`secure domain names and corresponding secure network addresses.” Id. at 5
`
`(citing Ex. 2016 ¶¶ 15–16).10
`
`Patent Owner further contends it disclaimed Petitioner’s proposed
`
`construction in a now completed inter partes reexamination of a related
`
`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
`
`Appeal Notice, 4 (Dec. 3, 2010), Ex. 2006). Patent Owner acknowledges
`
`this is a prosecution history disclaimer argument which “generally only
`
`binds the patent owner.” Id. at 6–7 (citing Tempo Lighting, Inc. v. Tivoli,
`
`LLC, 742 F.3d 973, 978 (Fed. Cir. 2014)). Patent Owner urges the
`
`prosecution history should be consulted in subsequent reviews of the patent
`
`in determining the broadest reasonable interpretation. Id. at 7 (citing
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015);
`
`Straight Path IP Grp., Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1362 (Fed.
`
`Cir. 2015)). We start with the language of claims 3, 10, and 25. These
`
`dependent claims recite that the domain name is a “secure domain name.”
`
`The plain meaning of those words is found in Petitioner’s proposed
`
`construction, “a name that corresponds to a secure computer network
`
`address.” The language is clear and straightforward and any construction
`
`
`10 The Monrose Declaration ’810 has one opinion based on the Specification,
`that “[o]ne of ordinary skill in the art would understand based 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.
`
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`under the broadest reasonable interpretation standard should not lead us
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`away from that clarity. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.
`
`Cir. 2005) (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 application of the widely accepted meaning of commonly
`
`understood words.”).
`
`We turn now to the Specification. The patent may set out a particular
`
`meaning of a claim term so long as it does so “with reasonable clarity,
`
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994). “Without an express intent to impart a novel meaning to claim terms,
`
`an inventor's claim terms take on their ordinary meaning.” York Prods., Inc.
`
`v. Central Tractor Farm & 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 non-
`
`standard top-level domain name.” Ex. 1001, 50:22–31 (emphasis added).
`
`The column 50 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 secure top-level domain name.” Ex. 1001, 50:22–25; see
`
`also id. at 51:6–42 (a “secure domain name” is a domain name that
`
`corresponds to the secure network address of a secure server 3320), 40:1–7
`
`(evaluating domain names in DNS requests to determine whether access to a
`
`secure site has been requested), 7:39–42 (“[e]ach secure computer network
`
`address is based on a non-standard top-level domain name, such as .scom,
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`
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`10
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`.sorg, .snet, .sedu, .smil and .sint”). Thus, the Specification does not
`
`expressly state that the “secure domain name” must be “non-standard,” only
`
`that it is secure, which is encompassed in Petitioner’s proposed construction.
`
`Further, a conventional DNS function involves resolving names into
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`addresses. See Ex. 1005 ¶¶ 126–27 (“much like a file system”), 304–306
`
`(citing Ex. 1001, 39:1–3 (describing Conventional DNS functionality)). The
`
`Specification includes additional discussion of conventional DNS. For
`
`example, the ’705 patent contemplates returning different addresses for the
`
`same domain name based on a user’s security levels, identity, and/or
`
`subscription level, and combining conventional DNS and proxy functions.
`
`Ex. 1001, 40:20–29, 38–40, 51–57, 51:6–27. Rather than not returning a
`
`secure domain name from a conventional DNS based on the type of name
`
`itself, the Specification states that a “DNS proxy” returns a “host-unknown”
`
`“if the user had requested lookup of a secure web site but lacked credentials
`
`to create such a connection.” Id. at 40:24–27 (emphases added). Thus, we
`
`are not persuaded to depart from the plain and ordinary meaning of the term
`
`previously discussed.
`
`Next we address Patent Owner’s prosecution history disclaimer
`
`argument. We consider the prosecution history, if raised, in construing
`
`claim terms. Philips, 415 F.3d at 1317 (“[T]he prosecution history provides
`
`evidence of how the PTO and the inventor understood the patent. . . . Yet
`
`because the prosecution history represents an ongoing negotiation between
`
`the PTO and the applicant, rather than the final product of that negotiation, it
`
`often lacks the clarity of the specification and thus is less useful for claim
`
`construction purposes.”); Tempo Lighting, 742 F.3d at 978 (The “court also
`
`observes that the PTO is under no obligation to accept a claim construction
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`proffered as a prosecution history disclaimer, which generally only binds the
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`patent owner.”).
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`The Specification and claims record do not support the prosecution
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`history arguments discussed above. The plain language of the claims
`
`outweighs the arguments made. For example, Patent Owner contends that
`
`Patentee disclaimed “a domain name that just happens to be associated with
`
`a secure computer or just happens to be associated with an address requiring
`
`authorization” during an inter partes reexamination of a related patent, and
`
`that the Specification supports its construction. See PO Resp. 5 (citing
`
`Response to Office Action in Control No. 95/001,270 (Apr. 19, 2010), 5
`
`(Ex. 2008)). It is not clear how this argument creates a distinction, or what
`
`“just happens to be associated with a secure computer” means, but Patent
`
`Owner appears to contend it means “a secure domain name cannot be
`
`resolved by a conventional domain name service.” See PO Resp. 5; Ex.
`
`2008, 6 (arguing “a secure domain name cannot be resolved by a
`
`conventional domain name service, for example, but relying on “the
`
`inventors . . . acting as their own lexicographers” and citing disclosed
`
`examples in the ’180 patent of non-standard top-level domain names)
`
`(emphasis added).
`
`This argument obscures the meaning of the challenged claims when
`
`viewed in light of the Specification’s disclosure of secure domain names.
`
`Contrary to its prosecution history arguments, nothing in the ’705 (or ’180)
`
`patent requires a conventional DNS not to return an address for all of the
`
`disclosed secure domain names, let alone, sets forth a lexicographic
`
`definition for such a preclusion. Rather, as discussed above, the ’705 patent
`
`discloses using conventional DNS look up functionality (e.g., using internal
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`tables) to determine whether access to a secure website has been requested,
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`adding other layers of functionality, including employing user priority
`
`levels, and/or credentials, etc. See, e.g., Ex. 1050, 40:1–6 (“proxy . . .
`
`intercepts all DNS look up functions” and determines access “by reference
`
`to an internal table”), 38–42 (combining proxy and conventional “functions .
`
`. . into a single server”), 51–58 (“using an internally stored list of authorized
`
`IP addresses”), 51:10–28 (users can “automatically obtain the secure
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`network address” by “register[ing] a secure domain name” with possible
`
`additional use of “the user’s identity and the user’s subscription level.”)11
`
`Patentee’s attempt during prosecution of the ’180 patent to act as its “own
`
`lexicographer[]” by relying on examples in the ’180 patent that relate to non-
`
`standard top-level domain names indicates (Ex. 2008, 6) that the disclaimer
`
`argument does not pass muster.
`
`Patent Owner does not argue here that the ’705 patent supports a
`
`lexicographic definition for all its disclosed secure domain names based on
`
`unclaimed examples related to top-level secure domain names. Contrary to
`
`
`11 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
`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 assertion of a lexicographic definition during prosecution, no
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`reasonably clear and precise disclaimer appears in the Specification with
`
`respect to secure domain names. See, e.g., Paulsen, 30 F.3d at 1480
`
`(disclaimer requires “reasonable clarity, deliberateness, and precision”).
`
`Patentee did not disclaim conventional look up functionality when employed
`
`to look up secure domain names. The arguments obscure what a “non-
`
`standard” name means and what “conventional” means in terms of the look
`
`up function that rises in context to the arguments.
`
`Patent Owner does not demonstrate that the Specification requires a
`
`secure domain name to be “top-level” or “non-standard.” And more
`
`importantly, setting aside the top-level domain names, which are mere
`
`examples that Patent Owner does not rely on as part of its proposed claim
`
`construction, Patent Owner fails to explain clearly what the term “non-
`
`standard” means or how a “non-standard” domain name differs from a
`
`“secure computer network address.”
`
`Therefore, Patent Owner’s construction and its prosecution history
`
`arguments obscure the clear meaning of the claim terms––because they
`
`attempt to preclude the ability of “conventional” DNS from resolving a
`
`“non-standard” name. As the record shows, the conventional DNS
`
`functionality at issue simply involves looking up names (using for an
`
`example an internal table). Therefore, if a DNS resolves a non-standard
`
`name (whatever that means if not limited to a top-level domain name), the
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`resolution itself would be “conventional,” whereas Patent Owner’s
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`construction implies that any DNS that resolves a “non-standard” name
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`cannot be “conventional.”
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`14
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`Accordingly, we determine that the prosecution history argument is
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`not clear and precise, nor is it supported by the Specification, and it is
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`outweighed by the plain language of the claim. As discussed below, even if
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`we 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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`Similarly, in addition to the just-described prosecution history, in the final
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`written decision in the ’481 IPR, the Board found that “Patent
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`Owner . . . made the opposite argument to a district court that it is making
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`here, and 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)).12
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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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`district court. On the other hand, the construction Petitioner now proposes is
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`taken directly from other inter partes reviews. These circumstances are
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`
`12 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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`adequate justification for a differing construction from that of the district
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`court.
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`In addition to the preceding reasons, we agree with the analysis made
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`in the construction of “secure domain name” in a prior inter partes review
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`proceeding. See ’481 IPR, Paper 35, 13–14. Thus, we construe “secure
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`domain name” as “a name that corresponds to a secure computer network
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`address.”
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`2. “encrypted communications channel” (claims, 1–2, 4–7, 9, 11–13,
`18, 21–22, 26–29)
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`The Petition did not propose a construction for “encrypted
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`communications channel.” Patent Owner proposes that an “encrypted
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`communications channel” should be construed to mean “a direct
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`communications channel that is encrypted.” PO Resp. 8–10. Petitioner
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`argues the inclusion of “direct” adds an additional limitation we have
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`previously rejected in the related ’481 IPR. Pet. Reply 3 (citing ’481, Paper
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`35, 10). In the ’481 IPR we concluded the addition of direct was
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`unnecessary to resolve the dispute. ’481 IPR, Paper 34, 4.
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`Patent Owner argues one embodiment in the Specification describing
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`TARP (“Tunneled Agile Routing Protocol,” Ex. 1001, 3:14–17) terminals
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`supports its construction by describing that encrypted communications
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`between a client device and target device are “direct.” PO Resp. 9 (citing
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`Ex. 1001, 9:41–50, 33:43–51, 38:6–9 (describing Figure 24 as first and
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`second computers directly connected), Fig. 2). Other embodiments
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`described in the Specification are also argued as supporting the addition of
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`“direct” to the construction of “encrypted communications channel.” Id.
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`(citing Ex. 1001, 40:7–10, 40:66–41:2, 42:6–10, 42:66–43:3, Figs. 24, 26,
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`28, 29, 33; Ex. 2016 ¶ 19). The citations to the Specification are examples
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`of different embodiments and do not persuade us that the addition of “direct”
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`is warranted. In the absence of such a special definition or other
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`consideration, “limitations are not to be read into the claims from the
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`specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
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`Patent Owner next argues that in district court litigation Petitioner
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`argued that traversing a network, including being passed or routed through
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`various networks, is “direct.” PO Resp. 10 (citing Markman Hearing
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`Transcript, 42:16–21, 44:13–45:12,13 44:13–45:12 (Ex. 2003). This
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`argument is not persuasive. First, the record does not show and Patent
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`Owner does not explain the context in which the statements were made or
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`what construction issue was being argued. Second, the attorney argument is
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`by an attorney representing another party and not Petitioner. See Ex. 2003,
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`90:2–3 (representing Cisco). Patent Owner has not presented any reason to
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`accept statements from a co-defendant in the district court as binding on
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`another co-defendant. None of Patent Owner’s arguments are persuasive,
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`and we decline to require that “direct” should be included in the
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`construction.
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`However, the Federal Circuit on appeal “construed the related terms
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`‘secure communication link’ and ‘virtual private network’ to include ‘direct’
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`communication.” PO Resp. 10 (citing VirnetX Inc. v. Cisco Sys. Inc., 767
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`F.3d 1308, 1317 n.1, 1319 (Fed. Cir. 2014) (“Cisco”)). Specifically, the
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`Federal Circuit construed “secure communication link” to mean “a direct
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`communication link that provides data security and anonymity.” Cisco, 767
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`F.3d at 1319 (emphasis omitted). Our determination not to limit the claims
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`13 Patent Owner cites to pages 2 and 4, which it appears was not intended.
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`to “direct communication” is not inconsistent with the construction in Cisco.
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`In contrast to the broadest reasonable interpretation standard employed by
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`the Board for an unexpired patent, the Federal Circuit employs a narrower
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`claim construction standard when reviewing the construction of a claim
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`applied by the district court. See In re Rambus, Inc., 694 F.3d 42, 46 (Fed.
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`Cir. 2012) (contrasting the Board’s review of expired patents, which is
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`“similar to that of a district court’s review,” with the Board’s review of
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`unexpired patents, which involves the broadest reasonable interpretation
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`standard); Cuozzo, 136 S. Ct. at 2142. As discussed above the addition of
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`“direct” to the construction is narrower and does not comport with the
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`broadest reasonable interpretation. In addition, a reading of Cisco indicates
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`that the parties did not dispute the “direct” requirement in Cisco. As
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`indicated above, the ’705 patent Specification does not require a channel to
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`be direct. Furthermore, although Patent Owner lists examples that
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`encompass a direct link, Patent Owner fails to explain clearly on this record
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`what “direct” means. See PO Resp. 10 (“the ’705 patent specification
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`discloses that the communication traverses a network (or networks) through
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`which it is simply passed or routed via network devices such as Internet
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`Service Providers, firewalls, and routers”).
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`The patents at issue in Cisco have common descriptions to the ’705
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`patent. The ’705 patent is a continuation of U.S. Patent No. 7,921,211
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`(“’211 patent”), which is a continuation of U.S. Patent No. 7,418,504 (“’504
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`patent”). Ex. 1001 (63). Cisco was an appeal relating to the ’504 and ’211
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`patents, among others. Cisco, 767 F.3d at 1313.14 In Cisco, the court found
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`that “[b]oth the claims and the specification of the ’151 patent make clear
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`that encryption is a narrower, more specific requirement than security.” Id.
`