Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`v.
`VIRNETX, INC. AND SCIENCE APPLICATION INTERNATIONAL
`CORPORATION,
`Patent Owner.
`
`Patent No. 8,458,341
`Issued: June 4, 2013
`Filed: December 23, 2011
`
`Patent No. 8,516,131
`Issued: August 20, 2013
`Filed: December 23, 2011
`
`Patent No. 8,560,705
`Issued: October 15, 2013
`Filed: January 3, 2012
`
`Inventors: Victor Larson, et al.
`Titles: SYSTEM AND METHOD EMPLOYING AN AGILE NETWORK
`PROTOCOL FOR SECURE COMMUNICATIONS USING SECURE DOMAIN
`NAMES
`
`Inter Partes Review No. 2015-00866, -00867, -00868, -00869, -00870, -00871
`
`
`
`
`
`
`
`DECLARATION OF ROBERTO TAMASSIA REGARDING U.S. PATENT
`NOS. 8,458,341, 8,516,131, AND 8,560,705
`
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`I.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................... 1
`A.
`Engagement ........................................................................................... 1
`B.
`Background and Qualifications ............................................................. 1
`C.
`Compensation and Prior Testimony ...................................................... 3
`D.
`Information Considered ......................................................................... 3
`LEGAL STANDARDS FOR PATENTABILITY ...................................... 4
`II.
`A. Anticipation ........................................................................................... 6
`B.
`Obviousness ........................................................................................... 7
`III. THE ‘341, ‘131, and ‘0705 PATENTS ....................................................... 12
`A.
`Effective Filing Dates .......................................................................... 13
`1. Effective Filing Date of the ’341 Patent ....................................... 13
`2. Effective Filing Date of the ’131 Patent ....................................... 15
`3. Effective Filing Date of the ’0705 Patent ..................................... 17
`B.
`Overview of The ’341, ’131, and ’0705 Patents ................................. 19
`The Prosecution History of The ’341, ’131, and ’0705 Patents .......... 21
`C.
`1. The ’341 Patent ............................................................................. 21
`2. The ‘131 Patent ............................................................................. 23
`3. The ’0705 Patent ........................................................................... 24
`D.
`Claims .................................................................................................. 25
`1. Background on the Broadest Reasonable Interpretation ............... 25
`2. Broadest Reasonable Interpretation of Terms of the ’341
`Patent ............................................................................................. 27
`a) “interception of the request”................................................... 27
`b) “provisioning information” .................................................... 29
`c) “secure communications service” .......................................... 30
`d) “indication” ............................................................................. 32
`
`Construction of Terms Used in the ’341, ’131, and ’0705 Patent
`
`i
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`e) “virtual private network communication link” ...................... 33
`f) “domain name” ....................................................................... 35
`g) “modulation” .......................................................................... 35
`3. Broadest Reasonable Interpretation of Terms of the ’131
`Patent ............................................................................................. 37
`a) “interception of the request”................................................... 37
`b) “provisioning information” .................................................... 39
`c) “secure communications service” .......................................... 40
`d) “secure communication link” ................................................. 41
`e) “indication” ............................................................................. 43
`f) “virtual private network link”................................................. 44
`g) “domain name” ....................................................................... 46
`h) “modulation” .......................................................................... 46
`4. Broadest Reasonable Interpretation of Terms of the ’0705
`Patent ............................................................................................. 47
`a) “interception of a request” ...................................................... 47
`b) “domain name” ....................................................................... 49
`c) “secure communication link” ................................................. 49
`d) “phone” ................................................................................... 51
`e) “secure communications service” .......................................... 51
`f) “virtual private network link”................................................. 53
`g) “secure domain name” ............................................................ 54
`h) “modulated transmission link” / “unmodulated transmission
`link” ........................................................................................ 56
`E.
`Level of Ordinary Skill in the Art ....................................................... 58
`IV. TECHNICAL BACKGROUND ................................................................. 58
`COMPUTER NETWORKS ................................................................ 58
`A.
`i) The OSI Model ....................................................................... 58
`j) The Internet ............................................................................ 61
`B.
`Internet Protocol Suite (TCP/IP) ......................................................... 62
`
`ii
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`V.
`
`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`DOMAIN NAME SYSTEM (DNS) ................................................... 65
`C.
`D. NETWORK ENCRYPTION ............................................................... 67
`1. Symmetric Encryption – DES & AES .......................................... 68
`2. Asymmetric Key Encryption – Public/Private Keys .................... 69
`3. Key Exchange ............................................................................... 70
`IDENTIFICATION OF THE PRIOR ART ............................................. 73
`Exhibits 1009-1011 – The Aventail References ................................. 73
`A.
`Exhibit 1007 – U.S. Patent 6,496,867 to Beser and Borella ............... 75
`B.
`Request for Comment (RFC) Publications ......................................... 75
`C.
`D.
`Exhibit 1008 – RFC 2401 .................................................................... 77
`E.
`Exhibit 1013 – RFC 2543 .................................................................... 78
`VI. OVERVIEW OF THE PRIOR ART ......................................................... 78
`A. Aventail ............................................................................................... 78
`1. Overview of Aventail Extranet Center ......................................... 80
`2. Aventail Connect ........................................................................... 83
`3. Aventail Extranet Server ............................................................... 84
`4. Aventail Extranet VPN ................................................................. 88
`5. Types of Communication Supported by Aventail ........................ 93
`6. Physical Implementation of the Networks Used by Aventail ....... 94
`7. Security and Encryption in Aventail ............................................. 95
`a) SOCKS v5 .............................................................................. 96
`b) Authentication Modules ......................................................... 98
`8. Aventail Extranet Center – Operation .........................................101
`a) Step 1 – DNS Query Interception ........................................107
`b) Step 2 – Connection Interception and Setup ........................115
`c) Step 3 – Encrypted Channel Communications .....................123
`9. MultiProxy ..................................................................................124
`10. Secure Extranet Explorer ............................................................128
`
`iii
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`B.
`
`11. Domains Names of Hosts on the Private Networks
`Protected by an Aventail Extranet Server ...................................131
`U.S. Patent No. 6,496,867 to Beser ................................................... 132
`1. Overview of Beser .......................................................................132
`2. Basic Components .......................................................................136
`d) Originating and Terminating End Devices...........................137
`e) First and Second Network Devices ......................................140
`f) Trusted-Third-Party Network Device ..................................142
`3. IP Tunnel .....................................................................................145
`4. Establishing an IP Tunnel ...........................................................147
`g) Request Containing A Unique Identifier ..............................148
`h) Negotiation of Private IP Addresses ....................................155
`RFC 2401, the IPsec Protocol ........................................................... 159
`C.
`1. Overview of RFC 2401 ...............................................................159
`2. Implementing Aventail Using the RFC 2401 Protocol ...............169
`3. Incorporating RFC 2401 into the Beser System .........................176
`D. U.S. Patent No. 5,237,566 to Brand (Ex. 1012) ................................ 183
`1. Overview of Brand ......................................................................183
`2. Combination of Aventail and Brand ...........................................184
`3. Combination of Beser and Brand ................................................186
`E.
`RFC 2543, the Session Initiation Protocol ........................................ 187
`1. Overview of RFC 2543 ...............................................................187
`2. Combining Aventail with RFC 2543 ..........................................188
`Additional Prior Art Combinations ................................................... 189
`F.
`1. Incorporating Beser with RFC 2401 with Brand ........................189
`2. Combining Aventail, RFC 2401, and RFC 2543 ........................190
`3. Combining Aventail, RFC 2401, and Brand ...............................191
`
`
`
`iv
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`I.
`
`INTRODUCTION
`A. Engagement
`1.
`
`I have been retained by counsel for Apple Inc. as an expert witness in
`
`the above-captioned proceeding. I have been asked to provide an opinion
`
`regarding the state of the art of the technology described in U.S. Patent Nos.
`
`8,458,341 (“the ‘341 Patent”) (Exhibit 1001), 8,516,131 (“the ‘131 Patent”)
`
`(Exhibit 1003), and 8,560,705 (“the ‘0705 Patent”) (Exhibit 1050). I have been
`
`asked to provide a description of various references that I understand are prior art
`
`to these patents and to provide a discussion of the meaning of certain words and
`
`phrases in the claims of these patents.
`
`B.
`2.
`
`Background and Qualifications
`
`I am the Plastech Professor of Computer Science at Brown University.
`
`My research interests include computer security, applied cryptography, analysis,
`
`design, and implementation of algorithms, graph drawing and computational
`
`geometry. I have published six textbooks and more than 240 peer-reviewed
`
`research articles in the above areas. I have given more than 70 invited lectures
`
`worldwide. I am a fellow of ACM, AAAS, and IEEE. I have received a Technical
`
`Achievement Award from the IEEE Computer. I am listed among the 360 most
`
`cited computer science authors worldwide by Thomson Scientific, Institute for
`
`Scientific Information (ISI). My research has been funded by ARO, DARPA,
`
`1
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`NATO, NSF, and several industrial sponsors (including Google, Microsoft,
`
`NetApp, and Sun Microsystems). I received my Ph.D. degree in electrical and
`
`computer engineering from the University of Illinois at Urbana-Champaign in
`
`1988.
`
`3.
`
`I have extensive research and educational experience in computer and
`
`network security. I have developed and taught graduate and undergraduate
`
`computer security courses at Brown. I have coauthored a widely adopted textbook
`
`on computer security that includes two chapters (over one hundred pages) on
`
`network security, covering topics such as network layers, TCP/IP, DNS, firewalls,
`
`tunneling, and IPsec, wireless networks, and virtual private networks.
`
`4. My research spans a broad range of topics in security and privacy,
`
`including cryptographic foundations, access control, authentication, data security
`
`and privacy, network security, email and web security, database security,
`
`application security, cloud computing security, and the visualization of security.
`
`Also, I have been an early developer of distributed systems that provide client-
`
`server applications over the internet.
`
`5.
`
`I am often invited by the National Science Foundation to evaluate
`
`grant proposals on computer and network security. I am also regularly asked by my
`
`university and by peer institutions to give an opinion on the research in computer
`
`and network security by faculty candidates considered for hiring, tenure and
`
`2
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`promotion. Finally, I am routinely serving in the program committees of highly
`
`selective international conferences in computer and network security.
`
`6. My CV is included as an appendix to this report.
`
`C. Compensation and Prior Testimony
`7.
`
`I am being compensated at a rate of $500 per hour for my work in this
`
`matter. I am being reimbursed for reasonable and customary expenses associated
`
`with my work in this investigation. My compensation is not contingent on the
`
`outcome of this matter or the specifics of my testimony.
`
`8. Within the last five years, I have testified by deposition in the matter
`
`of Dustan et al. v. comScore, Inc., a software privacy case where I served as an
`
`expert witness for comScore.
`
`D.
`Information Considered
`9. My opinions are based on my years of education, research, and
`
`experience, as well as my investigation and study of relevant materials. In forming
`
`my opinions, I have considered the materials I identify in this report and those
`
`listed in Appendix A.
`
`10.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by the Patent Owner. I may also consider additional
`
`documents and information in forming any necessary opinions — including
`
`documents that may not yet have been provided to me.
`
`3
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`11. My analysis of the materials produced in this investigation is ongoing,
`
`and I will continue to review any new material as it is provided. This report
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information
`
`and on my continuing analysis of the materials already provided.
`
`II. LEGAL STANDARDS FOR PATENTABILITY
`12. Certain basic legal principles have been explained to me by counsel
`
`for Apple. Below, I have recorded these legal standards as they were explained to
`
`me.
`
`13. First, I understand that for an invention claimed in a patent to be
`
`found patentable, it must be, among other things, new and not obvious from what
`
`was known before the invention was made.
`
`14.
`
`I understand the information that is used to evaluate whether an
`
`invention is new and not obvious is generally referred to as “prior art” and
`
`generally includes patents and printed publications (e.g., books, journal
`
`publications, articles on websites, product manuals, etc.).
`
`15.
`
`I understand that in this proceeding Apple has the burden of proving
`
`that the claims of the ‘341, ‘131, and ‘0705 Patents are anticipated by or obvious
`
`from the prior art by a preponderance of the evidence. I understand that “a
`
`4
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`preponderance of the evidence” is evidence sufficient to show that a fact is more
`
`likely true than it is not.
`
`16. As I discuss further in the claim construction section below, I
`
`understand that the claims of the ‘341, ‘131, and ‘0705 Patents must be given their
`
`broadest reasonable construction consistent with the patent specification.
`
`However, I also understand that it is possible that a patent will expire before the
`
`Board in these proceedings issues a final decision, in which case I understand that
`
`it is possible the Board may apply the Phillips standard of claim construction in
`
`that final decision. For this reason, I provide my understanding of that claim
`
`construction standard below. I understand that the claims, after being construed,
`
`are then to be compared to the information in the prior art.
`
`17.
`
`I understand that in this proceeding, the information that may be
`
`evaluated is limited to patents and printed publications.
`
`18.
`
`I understand that there are two ways in which prior art may render a
`
`patent claim unpatentable. First, the prior art can be shown to “anticipate” the
`
`claim. Second, the prior art can be shown to have made the claim “obvious” to a
`
`person of ordinary skill in the art. My understanding of the two legal standards is
`
`set forth below.
`
`5
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`A. Anticipation
`19.
`
`I understand that the following standards govern the determination of
`
`whether a patent claim is “anticipated” by the prior art.
`
`20.
`
`I understand that the “prior art” includes patents and printed
`
`publications that existed before the earliest filing date (the “effective filing date”)
`
`of the claim in the patent. I also understand that a patent will be prior art if it was
`
`filed before the effective filing date of the claimed invention, while a printed
`
`publication will be prior art if it was publicly available before that date.
`
`21.
`
`I understand that, for a patent claim to be “anticipated” by the prior
`
`art, each and every requirement of the claim must be found, expressly or
`
`inherently, in a single prior art reference as recited in the claim. I understand that
`
`claim limitations that are not expressly described in a prior art reference may still
`
`be there if they are “inherent” to the thing or process being described in the prior
`
`art. For example, an indication in a prior art reference that a particular process
`
`complies with a published standard would indicate that the process must inherently
`
`perform certain steps or use certain data structures that are necessary to comply
`
`with the published standard.
`
`22.
`
`I understand that if a reference incorporates other documents by
`
`reference, the incorporating reference and the incorporated reference(s) should be
`
`treated as a single prior art reference for purposes of analyzing anticipation.
`
`6
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`23.
`
`I understand that it is acceptable to consider evidence other than the
`
`information in a particular prior art document to determine if a feature is
`
`necessarily present in or inherently described by that reference.
`
`B. Obviousness
`24.
`
`I understand that a claimed invention is not patentable if it would have
`
`been obvious to a person of ordinary skill in the field of the invention at the time
`
`the invention was made.
`
`25.
`
`I understand that the obviousness standard is defined in the patent
`
`statute (35 U.S.C. § 103(a)) as follows:
`
`26. A patent may not be obtained though the invention is not identically
`
`disclosed or described as set forth in section 102 of this title, if the differences
`
`between the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art to which said subject matter
`
`pertains. Patentability shall not be negatived by the manner in which the invention
`
`was made.
`
`27.
`
`I understand that the following standards govern the determination of
`
`whether a claim in a patent is obvious.
`
`28.
`
`I understand that to find a claim in a patent obvious, one must make
`
`certain findings regarding the claimed invention and the prior art. Specifically, I
`
`7
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`understand that the obviousness question requires consideration of four factors
`
`(although not necessarily in the following order):
` The scope and content of the prior art;
` The differences between the prior art and the claims at issue;
` The knowledge of a person of ordinary skill in the pertinent art; and
` Whatever objective factors indicating obviousness or non-obviousness
`may be present in any particular case.
`
`29.
`
`In addition, I understand that the obviousness inquiry should not be
`
`done in hindsight, but must be done using the perspective of a person of ordinary
`
`skill in the relevant art as of the effective filing date of the patent claim.
`
`30.
`
`I understand the objective factors indicating obviousness or non-
`
`obviousness may include: commercial success of products covered by the patent
`
`claims; a long-felt need for the invention; failed attempts by others to make the
`
`invention; copying of the invention by others in the field; unexpected results
`
`achieved by the invention; praise of the invention by those in the field; the taking
`
`of licenses under the patent by others; expressions of surprise by experts and those
`
`skilled in the art at the making of the invention; and the patentee proceeded
`
`contrary to the accepted wisdom of the prior art. I also understand that any of this
`
`evidence must be specifically connected to the invention rather than being
`
`associated with the prior art or with marketing or other efforts to promote an
`
`invention. I am not presently aware of any evidence of “objective factors”
`
`8
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`suggesting the claimed methods are not obvious, and reserve my right to address
`
`any such evidence if it is identified in the future.
`
`31.
`
`I understand the combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable results.
`
`I also understand that an example of a solution in one field of endeavor may make
`
`that solution obvious in another related field. I also understand that market
`
`demands or design considerations may prompt variations of a prior art system or
`
`process, either in the same field or a different one, and that these variations will
`
`ordinarily be considered obvious variations of what has been described in the prior
`
`art.
`
`32.
`
`I also understand that if a person of ordinary skill can implement a
`
`predictable variation, that variation would have been considered obvious. I
`
`understand that for similar reasons, if a technique has been used to improve one
`
`device, and a person of ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way, using that technique to improve the other
`
`device would have been obvious unless its actual application yielded unexpected
`
`results or challenges in implementation.
`
`33.
`
`I understand that the obviousness analysis need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, but
`
`instead can take account of the “ordinary innovation” and experimentation that
`
`9
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`does no more than yield predictable results, which are inferences and creative steps
`
`that a person of ordinary skill in the art would employ.
`
`34.
`
`I understand that sometimes it will be necessary to look to interrelated
`
`teachings of multiple patents; the effects of demands known to the design
`
`community or present in the marketplace; and the background knowledge
`
`possessed by a person having ordinary skill in the art. I understand that all these
`
`issues may be considered to determine whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue.
`
`35.
`
`I understand that the obviousness analysis cannot be confined by a
`
`formalistic conception of the words “teaching, suggestion, and motivation.” I
`
`understand that in 2007, the Supreme Court issued its decision in KSR Int'l Co. v.
`
`Teleflex, Inc., 550 U.S. 398 (2007), where the Court rejected the previous
`
`requirement of a “teaching, suggestion, or motivation to combine” known elements
`
`of prior art for purposes of an obviousness analysis as a precondition for finding
`
`obviousness. It is my understanding that KSR confirms that any motivation that
`
`would have been known to a person of skill in the art, including common sense, or
`
`derived from the nature of the problem to be solved, is sufficient to explain why
`
`references would have been combined.
`
`36.
`
`I understand that a person of ordinary skill attempting to solve a
`
`problem will not be led only to those elements of prior art designed to solve the
`
`10
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`same problem. I understand that under the KSR standard, steps suggested by
`
`common sense are important and should be considered. Common sense teaches
`
`that familiar items may have obvious uses beyond the particular application being
`
`described in a reference, that if something can be done once it is obvious to do it
`
`multiple times, and in many cases a person of ordinary skill will be able to fit the
`
`teachings of multiple patents together like pieces of a puzzle. As such, the prior art
`
`considered can be directed to any need or problem known in the field of endeavor
`
`as of the effective filing date and can provide a reason for combining the elements
`
`of the prior art in the manner claimed. In other words, the prior art does not need
`
`to be directed towards solving the same problem that is addressed in the patent.
`
`Further, the individual prior art references themselves need not all be directed
`
`towards solving the same problem.
`
`37.
`
`I understand that an invention that might be considered an obvious
`
`variation or modification of the prior art may be considered non-obvious if one or
`
`more prior art references discourages or leads away from the line of inquiry
`
`disclosed in the reference(s). A reference does not “teach away” from an invention
`
`simply because the reference suggests that another embodiment of the invention is
`
`better or preferred. My understanding of the doctrine of teaching away requires a
`
`clear indication that the combination should not be attempted (e.g., because it
`
`would not work or explicit statements saying the combination should not be made).
`
`11
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`38.
`
`I understand that a person of ordinary skill is also a person of ordinary
`
`creativity.
`
`39.
`
`I further understand that in many fields, it may be that there is little
`
`discussion of obvious techniques or combinations, and it often may be the case that
`
`market demand, rather than scientific literature or knowledge, will drive design
`
`trends. When there is such a design need or market pressure to solve a problem
`
`and there are a finite number of identified, predictable solutions, a person of
`
`ordinary skill has good reason to pursue the known options within their technical
`
`grasp. If this leads to the anticipated success, it is likely the product not of
`
`innovation but of ordinary skill and common sense. In that instance the fact that a
`
`combination was obvious to try might show that it was obvious. The fact that a
`
`particular combination of prior art elements was “obvious to try” may indicate that
`
`the combination was obvious even if no one attempted the combination. If the
`
`combination was obvious to try (regardless of whether it was actually tried) or
`
`leads to anticipated success, then it is likely the result of ordinary skill and
`
`common sense rather than innovation.
`
`III. THE ‘341, ‘131, and ‘0705 PATENTS
`
`12
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`A. Effective Filing Dates
`
`1.
`
`Effective Filing Date of the ’341 Patent
`
`40.
`
`I have been informed that the ’341 Patent issued from U.S.
`
`Application No. 13/336,790, which was filed on December 23, 2011. I have
`
`further been informed that the ’790 application is a continuation of Application No.
`
`13/049,552 (issued as U.S. Patent No. 8,572,247), which is a continuation of
`
`Application No. 11/840,560 (issued as U.S. Patent No. 7,921,211), which is a
`
`continuation of Application No. 10/714,849 (issued as U.S. Patent No. 7,418,504),
`
`which is a continuation of Application No. 09/558,210, filed April 26, 2000, and
`
`now abandoned, which is a continuation-in-part of Application No. of 09/504,783,
`
`filed on February 15, 2000 (issued as U.S. Patent No. 6,502,135), which is a
`
`continuation-in-part of Application No. 09/429,643, filed on October 29, 1999
`
`(issued as U.S. Patent No. 7,010,604). The ’210, ’783 and ’643 applications also
`
`claim priority to 60/106,261, filed October 30, 1998 and 60/137,704, filed June 7,
`
`1998.
`
`41. Based on my review of these applications, I believe the two
`
`independent claims of the ‘341 patent (claims 1 and 15) rely on information that
`
`was first included in the ’783 application. I therefore understand that the priority
`
`date for these claims is the date that application was filed, namely: February 15,
`
`2000. Because all of the other claims in the patent are dependent claims that rely
`
`13
`
`Petitioner Apple Inc. - Exhibit 1005
`
`

`

`Petition for IPR of U.S. Patent Nos. 8,458,341, 8,516,131 and 8,560,705
`
`on claims 1 and 15, and because I have been informed that a patent claim cannot
`
`claim an earlier priority date than a claim from which that claim “depends,” it is
`
`my understanding that the priority date for all of the claims of the ‘341 patent is
`
`February 15, 2000.
`
`42. For example, I note that claim 1 of the ’341 patent requires sending “a
`
`request to look up an internet protocol (IP) address … based on a domain name,”
`
`while claim 15 specifies “sending a request to look up an internet protocol (IP)
`
`address … based on a domain name … .” Based on my review of the documents,
`
`no application filed prior to the ’783 application mentions the term “domain name”
`
`or otherwise provides a description of the techniques that appear in the ’341 patent
`
`claims.
`
`43.
`
`I also have been informed (and reviewed documents that show that) in
`
`proceedings involving related patents (the ’135, ’504, ’151, ’211, ’274 and ’697
`
`patents), the Patent Owner has not disputed that claims including the words
`
`“domain name” have an effective filing date of at leas