`Filed on behalf of: VirnetX Inc.
`By:
`Joseph E. Palys
`
`Naveen Modi
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
`Telephone: 571-203-2700
`Facsimile: 202-408-4400
`E-mail: joseph.palys@finnegan.com
`
` naveen.modi@finnegan.com
`
`
`
`
`
`
`Paper No.
`Filed: March 6, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2014-00237
`Patent 8,504,697
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 8,504,697
`
`
`
`Petitioner Apple Inc. - Ex. 1017, Cover
`
`
`
`Table of Contents
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review ......................................................................................... 2
`
`A.
`
`B.
`
`The Petition Fails to Comply with 35 U.S.C. § 312(a)(3) and
`37 C.F.R. § 42.104(b)(4) ....................................................................... 3
`
`The Board Should Not Institute Based on the Petition’s
`Redundant Grounds ............................................................................... 7
`
`III. The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected .........................................................................................................12
`
`A. Overview of the ’697 Patent ................................................................13
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Level of Ordinary Skill in the Art .......................................................15
`
`“Domain Name” (Claims 1, 14, 16, and 28) .......................................16
`
`“Secure Communication Link” (Claims 1-3, 11-13, 16-17, and
`24-27) ..................................................................................................17
`
`“Secure Communications Service” (Claims 1, 4-5, 10, 13-14,
`16, 18-19, and 28-29) ..........................................................................23
`
`“Intercept[ing] . . . a request to look up an internet protocol (IP)
`address” (Claims 1 and 16) .................................................................24
`
`G.
`
`“Modulation” (Claims 6, 7, 20, and 21) ..............................................28
`
`IV.
`
`If Trial Is Instituted, VirnetX Requests an 18-Month Schedule ...................29
`
`V.
`
`Conclusion .....................................................................................................29
`
`
`
`
`
`Petitioner Apple Inc. - Ex. 1017, p. i
`
`
`
`Table of Authorities
`
`
`FEDERAL CASES
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 19
`
`Page(s)
`
`EMC Corp. v. Personal Web Techs.,
`IPR2013-00087 (June 5, 2013) Paper No. 25 ....................................................... 8
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001 (Jan. 9, 2013) Paper No. 15 ................................................ 13, 19
`
`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027 (June 11, 2013) Paper No. 26 ..................................................... 8
`
`InterDigital Comms., LLC v. Int’l Trade Comm’n,
`690 F.3d 1318 (Fed. Cir. 2012) .......................................................................... 22
`
`LaRose Indus., LLC v. Capriola Corp.,
`IPR2013-00120 (July 22, 2013) Paper No. 20 ............................................... 7, 12
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003 (Oct. 25, 2012) Paper No. 7 ........................................... 7, 9, 12
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093 (Apr. 29, 2013) Paper No. 28 ............................................. 13, 19
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 13
`
`Tasco, Inc. v. Pagnani,
`IPR2013-00103 (May 23, 2013) Paper No. 6 ....................................................... 3
`
`ScentAir Techs., Inc. v. Prolitec, Inc.,
`IPR2013-00180 (Aug. 26, 2013) Paper No. 18 .................................................... 8
`
`Wenger Mfg., Inc. v. Coating Mach. Sys., Inc.,
`239 F.3d 1225 (Fed. Cir. 2001) .................................................................... 21, 22
`
`Wowza Media Sys., LLC et al. v. Adobe Sys., Inc.,
`IPR2013-00054 (July 13, 2013) Paper No. 16 ..................................................... 3
`
`Petitioner Apple Inc. - Ex. 1017, p. ii
`
`
`
`Xilinx, Inc. v. Intellectual Ventures I LLC,
`IPR2013-00112 (June 27, 2013) Paper No. 14 ................................................... 19
`
`ZTE Corp. & ZTE (USA) Inc. v. ContentGuard Holdings, Inc.,
`IPR2013-00134 (June 19, 2013) Paper No. 12 ................................................... 19
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) ............................................................................ 12
`
`
`FEDERAL STATUTES
`
`35 U.S.C. § 312 .............................................................................................. 1, 2, 3, 7
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`
`FEDERAL REGULATIONS
`
`37 C.F.R. § 42.100(b) .............................................................................................. 12
`
`37 C.F.R. § 42.100(c) ............................................................................................... 29
`
`37 C.F.R. § 42.104(b)(4) ................................................................................... 2, 3, 7
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`
`
`Petitioner Apple Inc. - Ex. 1017, p. iii
`
`
`
`I.
`
`Introduction
`
`Patent Owner VirnetX Inc. respectfully submits this Preliminary Response
`
`in accordance with 35 U.S.C. § 313 and 37 C.F.R. § 42.107, responding to the
`
`Petition for Inter Partes Review of VirnetX’s U.S. Patent No. 8,504,697 (“the ’697
`
`patent”) filed by Apple Inc. VirnetX requests that the Board not institute inter
`
`partes review for several reasons.
`
`First, the Petition proposes rejections that the Examiner considered during
`
`prosecution of the ’697 patent and over which the Examiner allowed the claims.
`
`For example, the Petition proposes rejections based on U.S. Patent No. 6,496,867
`
`to Beser and RFC 2543 by Handley et al. (See Pet. at i-iii.) During prosecution of
`
`the ’697 patent, however, VirnetX submitted these references through an
`
`Information Disclosure Statement and the Examiner considered them. (See Ex.
`
`1001 at 2, 5.) The Examiner also considered materials from reexaminations of
`
`patents related to the ’697 patent, including claim charts for Beser and RFC 2543
`
`against the claims of those patents. (See id. at 9, 11, 14-16.) Accordingly, Apple
`
`asks the Board and VirnetX to divert resources to revisit issues that the Office has
`
`already considered.
`
`Second, the Petition fails to comply with several rules and regulations
`
`regarding the content of petitions. The Petition either never or rarely cites the
`
`asserted prior art references, violating the particularity requirements of 35 U.S.C.
`
`Petitioner Apple Inc. - Ex. 1017, p. 1
`
`
`
`§ 312(a)(3) and 37 C.F.R. § 42.104(b)(4). The Petition also proposes horizontally
`
`and vertically redundant grounds without identifying how any one ground
`
`improves on any other, violating Board precedent requiring petitioners to identify
`
`differences in the proposed rejections.
`
`Finally, Apple proposes unreasonable claim constructions. Because its
`
`unpatentability challenges are premised on incorrect claim constructions, Apple
`
`has not met its burden of demonstrating a reasonable likelihood of prevailing in
`
`proving unpatentability of any ’697 patent claim.
`
`II. The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review
`Trial should not be instituted because Apple’s Petition does not comply with
`
`the statutes and regulations that must be satisfied for institution. The Petition fails
`
`to comply with 35 U.S.C. § 312(a)(3)’s particularity requirement and 37 C.F.R.
`
`§ 42.104(b)(4)’s requirement to “specify where each element of the claim is found
`
`in the prior art patents or printed publications relied upon,” by citing almost solely
`
`to expert declarations, which often generalize the references, as opposed to citing
`
`the references themselves. The Petition also proposes redundant grounds without
`
`identifying how any one ground improves on any other.
`
`Petitioner Apple Inc. - Ex. 1017, p. 2
`
`
`
`A. The Petition Fails to Comply with 35 U.S.C. § 312(a)(3) and
`37 C.F.R. § 42.104(b)(4)
`
`A petition must identify “in writing and with particularity, each claim
`
`challenged, the grounds on which the challenge to each claim is based, and the
`
`evidence that supports the grounds for the challenge to each claim[.]” 35 U.S.C.
`
`§ 312(a)(3). It must also “specify where each element of the claim is found in the
`
`prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
`
`The “failure to point out where each element is found in the prior art is a
`
`deficiency in the substantive requirements of the petition,” which results in denial
`
`of the petition. Wowza Media Sys., LLC et al. v. Adobe Sys., Inc., IPR2013-00054,
`
`Paper No. 16 at 3 (July 13, 2013). Accordingly, the Board has denied petitions for
`
`failure to cite prior art references being asserted. See, e.g., Tasco, Inc. v. Pagnani,
`
`IPR2013-00103, Paper No. 6 at 22 (May 23, 2013) (“Rather than providing
`
`citations to supporting evidence in [a prior art reference] Petitioner provides
`
`conclusory statements, such as ‘[s]ince each circuit of the circuit breaker receives a
`
`signal from a distinct transmitter, the signals of all the circuits must be different or
`
`unique.’ (Pet. at 42 (no citation to [prior art reference] provided).”)
`
`Apple’s Petition fails to meet these requirements because the Petition cites
`
`almost exclusively to an accompanying declaration (Ex. 1003) rather than to the
`
`prior art references themselves. The result is that, for many claim features, it is
`
`unclear what feature in the prior art the Petition is attempting to refer to through
`
`Petitioner Apple Inc. - Ex. 1017, p. 3
`
`
`
`the declaration. Because of this flaw, the Board and VirnetX are forced to cobble
`
`together and, in some instances, to simply speculate about what specific invalidity
`
`theories are being asserted.1
`
`For example, the Petition asserts that Beser anticipates claims 1-11, 14-25,
`
`and 28-30, but the Petition fails to cite Beser at all in its purported discussion of
`
`Beser and the challenged claims. (Pet. at 16-33.) Similarly, the Petition asserts
`
`that Beser in view of RFC 2401 renders obvious claims 1-11, 14-25, and 28-30, but
`
`never cites either reference in its purported analysis. (Id. at 33-38.) The Petition
`
`also contends that claims 1-11, 14-25, and 28-30 are anticipated by RFC 2543, but
`
`the Petition cites RFC 2543 only four times, and only for portions of claims 1, 2,
`
`16, and 24. (Id. at 39-56.) The Petition further asserts that claims 1-11, 14-25, and
`
`28-30 are obvious in view of RFC 2543 and RFC 1889 and RFC 2327, but the
`
`Petition cites RFC 1889 only for portions of claims 2 and 24 and fails to cite RFC
`
`2327 at all. (Id. at 56-58.) Lastly, the Petition contends that claims 8-9 and 22-23
`
`are obvious in view of RFC 2543 and Mobility Support Using SIP, but fails to cite
`
`Mobility Support Using SIP at all. (Id. at 58-59.) In short, the Petition fails to
`
`1 Apple was on notice of these deficiencies based on VirnetX’s Preliminary
`
`Responses to the petitions Apple filed against other VirnetX patents, but chose to
`
`repeat them in this Petition. (See, e.g., Apple Inc. v. VirnetX Inc., IPR2013-00349,
`
`Paper No. 10 at 13-16 (Sept. 17, 2013).)
`
`Petitioner Apple Inc. - Ex. 1017, p. 4
`
`
`
`identify where in the asserted prior art all of the features of any challenged claim
`
`are found.
`
`The issue is compounded by the length of the cited declaration, which spans
`
`196 pages—more than the length of three IPR petitions. (See Ex. 1003.) Apple
`
`asks the Board and VirnetX to parse this large volume of material by (i) collecting
`
`the Petition’s declaration citations for each claim feature, (ii) ascertaining the
`
`various arguments the declarant makes for each feature, (iii) comparing those
`
`arguments to the disclosure of the cited references, and (iv) determining whether
`
`referenced portions of the prior art correspond to the features of the claims. This
`
`does not meet the requirements for a petition, and it also circumvents the page
`
`limits for petitions.
`
`As an example of a critical deficiency, claim 1 recites, among other things,
`
`“determining, in response to the request, whether the second network device is
`
`available for a secure communications service.” The Petition does not explain how
`
`Beser discloses that a second network device is “available” for a secure
`
`communications service. Instead, the Petition generally discusses what is
`
`purportedly contained in the request from the first network address. (See Pet. at 19
`
`(“Beser explains that after first network device receives a request, it evaluates it,
`
`and if the device determines the packet contains a request to initiate an IP tunnel, it
`
`will send the request to the trusted-third-party network device.”); id. at 20 (“[I]f the
`
`Petitioner Apple Inc. - Ex. 1017, p. 5
`
`
`
`trusted-third-party network device determines the unique identifier specifies a
`
`destination that can establish a secure tunnel (e.g., the terminating end device or
`
`destination of a VOIP request), it will negotiate with the first and second network
`
`devices to establish the IP tunnel between those network devices.”).) Nowhere
`
`does the Petition attempt to explain how Beser discloses “determining, in response
`
`to the request [from the first network device], whether the second network device
`
`is available for a secure communications service,” as recited in claim 1. The
`
`Petition is similarly deficient regarding independent claim 16. (See id. at 19-21.)
`
`As a further example, the Petition discusses RFC 2543 in generalities and
`
`fails to explain what in the reference specifically discloses “determining, in
`
`response to the request, whether the second network device is available for a
`
`secure communications service,” as recited in independent claim 1. (See id. at 43-
`
`45 (generally asserting that “RFC 2543 explains that after the caller sends the
`
`INVITE message, the callee’s SIP server will receive the message, and then try to
`
`locate the callee,” but never identifying what specific features of RFC 2543
`
`allegedly correspond to “determining” whether a “second network device” is
`
`“available for a secure communications service,” as recited in claim 1).) The
`
`Petition is similarly deficient regarding independent claim 16. (Id. at 43-45.)
`
`Because the Petition fails to cite and identify the specific features of the
`
`prior art references it relies on to challenge the specific elements of claims 1-11,
`
`Petitioner Apple Inc. - Ex. 1017, p. 6
`
`
`
`14-25, and 28-30, it fails to comply with the “particularity” requirement of 35
`
`U.S.C. § 312(a)(3) and fails to “specify where each element of the claim is found
`
`in the prior art patents or printed publications relied upon” as required by 37 C.F.R.
`
`§ 42.104(b)(4). Due to these deficiencies, a trial should not be instituted.
`
`B.
`
`The Board Should Not Institute Based on the Petition’s
`Redundant Grounds
`
`The Board should reject this Petition because it raises grounds of rejection
`
`that are both internally redundant and also redundant in view of the proposed
`
`grounds in Apple’s ’238 Petition. The Board has held that it will not consider
`
`redundant grounds of rejection like Apple’s because the Board must issue a final
`
`written decision in inter partes review proceedings within one year of institution
`
`(or 18 months for good cause). Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`
`CBM2012-00003, Paper No. 7 (Oct. 25, 2012).2 Redundant grounds place a
`
`significant burden on the Board and the patent owner, and they cause unnecessary
`
`2 Although Liberty Mutual is a decision in a covered business method
`
`review, the Board has applied its reasoning to inter partes reviews based on the
`
`similar considerations that apply in both types of proceedings. See, e.g., LaRose
`
`Indus., LLC v. Capriola Corp., IPR2013-00120, Paper No. 20 at 4 (July 22, 2013)
`
`(citing Liberty Mutual, CBM2012-00003, Paper No. 7 at 2-12).
`
`Petitioner Apple Inc. - Ex. 1017, p. 7
`
`
`
`delay that jeopardizes completing the inter partes review by the statutory deadline.
`
`Id.
`
`Because “[t]he Board seeks to streamline and converge issues at all phases
`
`of the proceeding . . . at [the] time of institution the Board analyzes the petition on
`
`a claim-by-claim, ground-by-ground basis, to eliminate redundant grounds.” Idle
`
`Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper No. 26 at 3 (June 11,
`
`2013). As explained by the Board, the redundancy inquiry does not focus on
`
`“whether the applied prior art disclosures have differences, for it is rarely the case
`
`that the disclosures of different prior art references, will be literally identical.”
`
`EMC Corp. v. Personal Web Techs., LLC, IPR2013-00087, Paper No. 25 at 3 (June
`
`5, 2013). Instead, the Board considers “whether the petitioner articulated a
`
`meaningful distinction in terms of relative strengths and weaknesses with respect
`
`to application of the prior art disclosures to one or more claim limitations.” Id. at
`
`3-4. The onus is on the petitioner to articulate that “meaningful distinction.” See
`
`ScentAir Techs., Inc. v. Prolitec, Inc., Case IPR2013-00180, Paper No. 18 at 3
`
`(Aug. 26, 2013) (“To avoid a determination that a requested ground of review is
`
`redundant of another requested ground, a petitioner must articulate a meaningful
`
`distinction. . . .”).
`
`In Liberty Mutual, the Board identified two types of redundant rejections:
`
`(1) “horizontally”
`
`redundant
`
`rejections and
`
`(2) “vertically”
`
`redundant
`
`Petitioner Apple Inc. - Ex. 1017, p. 8
`
`
`
`rejections. Liberty Mutual, CBM2012-00003, Paper No. 7 at 3. The Board
`
`explained that horizontally redundant rejections apply “a plurality of prior art
`
`references . . . not in combination to complement each other but as distinct and
`
`separate alternatives.” Id. In this type of redundancy, the references “provide
`
`essentially the same teaching to meet the same claim limitation, and the associated
`
`arguments do not explain why one reference more closely satisfies the claim
`
`limitation at issue in some respects than another reference, and vice versa.” Id.
`
`Vertical redundancy “exists when there is assertion of an additional prior art
`
`reference to support another ground of unpatentability when a base ground already
`
`has been asserted against the same claim without the additional reference and the
`
`Petitioner has not explained what are the relative strength and weakness of each
`
`ground.” Id. at 12. Thus, an example of vertical redundancy is when a proposed
`
`rejection is based on one reference alone while another proposed rejection against
`
`the same claim is based on that same reference plus another reference. Apple’s
`
`petitions contain both types of redundancy.
`
`In the ’238 Petition, Apple proposes five grounds of rejection against the
`
`’697 patent claims, including the following:
`
`P1-1. Wesinger allegedly anticipates claims 1-11, 14-25, and 28-30;
`
`P1-2. Wesinger in view of RFC 2543 allegedly renders obvious
`
`claims 4-7 and 18-21;
`
`Petitioner Apple Inc. - Ex. 1017, p. 9
`
`
`
`P1-3.
`
`P1-4.
`
`Aventail allegedly anticipates claims 1-11, 14-25, and 28-30;
`
`Aventail in view of RFC 2543 allegedly renders obvious claims
`
`4-7 and 18-21; and
`
`P1-5.
`
`Kiuchi allegedly anticipates claims 1-3, 8-11, 14-17, 22-25, and
`
`28-30.
`
`Here, Apple proposes six grounds of invalidity, including the following:
`
`P2-1.
`
`P2-2.
`
`Beser allegedly anticipates claims 1-11, 14-25, and 28-30;
`
`Beser in view of RFC 2401 allegedly renders obvious claims 1-
`
`11, 14-25, and 28-30;
`
`P2-3.
`
`Beser in view of RFC 2401 and the knowledge of a person of
`
`ordinary skill in the art allegedly renders obvious claims 1-11, 14-25,
`
`and 28-30;
`
`P2-4.
`
`P2-5.
`
`RFC 2453 allegedly anticipates claims 1-11, 14-25, and 28-30;
`
`RFC 2453 in view of RFC 1889 and RFC 2327 allegedly
`
`renders obvious 1-11, 14-25, and 28-30; and
`
`P2-6.
`
`RFC 2453 in view of Mobility Support Using SIP allegedly
`
`renders obvious claims 8-9 and 22-23.
`
`These examples demonstrate horizontal
`
`redundancy by proposing
`
`anticipation rejections of common claims based on Wesinger, Aventail, Kiuchi,
`
`Beser, and RFC 2453 (P1-1, P1-3, P1-5, P2-1, and P2-4). In another instance of
`
`Petitioner Apple Inc. - Ex. 1017, p. 10
`
`
`
`horizontal redundancy, Apple proposes parallel obviousness grounds for
`
`overlapping claims (e.g., P1-2, P1-4, P2-2, P2-3, P2-5, and P2-6). Apple’s
`
`petitions never explain which lead referenceWesinger, Aventail, Kiuchi, Beser,
`
`or RFC 2453or which obviousness combination is better in any respect
`
`compared to the others for any challenged claim.
`
`The Petition also demonstrates vertical
`
`redundancy by proposing
`
`anticipation rejections based on Beser (P2-1) and RFC 2453 (P2-4) while
`
`simultaneously challenging common claims as obvious using Beser and RFC 2453
`
`as the lead references (P2-2, P2-3, P2-5, and P2-6). Apple does not explain how
`
`these proposed obviousness rejections are any better or different from the proposed
`
`anticipation rejections based on Beser or RFC 2453 alone. And neither of Apple’s
`
`petitions explains how any of the proposed obviousness combinations improves on
`
`any of the other combinations.3
`
`As in Liberty Mutual, Apple simply proposes different references or
`
`different combinations that “provide essentially the same teaching to meet the
`
`same claim limitation, and the associated arguments do not explain why one
`
`3 VirnetX highlighted similar deficiencies in the previous petitions filed by
`
`Apple, and the deficiencies are repeated here. (See, e.g., Apple Inc. v. VirnetX Inc.,
`
`IPR2013-00397, Paper No. 11 at 13-18 (Oct. 4, 2013).)
`
`Petitioner Apple Inc. - Ex. 1017, p. 11
`
`
`
`reference [or reference combination] more closely satisfies the claim limitation at
`
`issue in some respects than another reference [or reference combination], and vice
`
`versa.” Liberty Mutual, CMB2012-00003, Paper No. 7 at 3. Although “the focus
`
`of redundancy is on whether a petitioner articulated a meaningful distinction in
`
`terms of the relative strengths and weaknesses with respect to [the] application of
`
`the prior art reference disclosures to one or more claim limitations,” Apple has
`
`identified no distinctions whatsoever. LaRose, IPR2013-00120, Paper No. 20 at 4
`
`(“Petitioner has not explained any such strengths and weaknesses . . . .”).
`
`Accordingly, the Board should deny the Petition because it presents internally
`
`redundant grounds and grounds redundant to those in the ’238 Petition.
`
`III. The Petition’s Claim Constructions Are Flawed and Should Be Rejected
`In inter partes review, claims are to be given their “broadest reasonable
`
`construction in light of the specification.” 37 C.F.R. § 42.100(b). In applying the
`
`“broadest reasonable construction” or interpretation (“BRI”) standard, the words of
`
`the claim must be given their plain meaning unless the plain meaning is
`
`inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
`
`The ordinary meaning of a term may be evidenced by a variety of sources,
`
`including “the words of the claims themselves, the remainder of the specification,
`
`the prosecution history, and extrinsic evidence concerning relevant scientific
`
`Petitioner Apple Inc. - Ex. 1017, p. 12
`
`
`
`principles, the meaning of technical terms, and the state of the art.” Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (citation omitted).
`
`Additionally, the prosecution history is part of the intrinsic record and
`
`should be considered when construing the claims. Id. at 1317. In inter partes
`
`review proceedings, the Board has consistently considered the prosecution history
`
`when construing the claims. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`
`IPR2012-00001, Paper No. 15 at 8 (Jan. 9, 2013); Motorola Solutions, Inc. v.
`
`Mobile Scanning Techs., LLC, IPR2013-00093, Paper No. 28 at 10 (Apr. 29,
`
`2013).
`
`As explained below, Apple proposes several defective claim constructions
`
`that do not represent the BRI of the claims. Because it is based on incorrect claim
`
`constructions, the Petition cannot demonstrate a reasonable likelihood of prevailing
`
`for any claim of the ’697 patent.
`
`A. Overview of the ’697 Patent
`The ’697 patent discloses embodiments relating to initiating a secure
`
`communication link between a user’s computer 2601 (e.g., a “first network device”
`
`in the claims) and a target 2604 (e.g., a “second network device” in the claims)
`
`over a network.
`
`Petitioner Apple Inc. - Ex. 1017, p. 13
`
`
`
`
`
`(Ex. 1001, FIGS. 26 and 27.) In one embodiment, a request to look up an internet
`
`protocol (IP) address of the second network device based on a domain name
`
`associated with the second network device is intercepted by being received for an
`
`evaluation related to establishing the secure communication link. (See id. at 40:31-
`
`37; 41:6-19; FIG. 27, 2701, 2702, 2704.) A determination is made, in response to
`
`the request, whether the second network device is available for a secure
`
`communications service. (See id.) Additionally, the request is resolved into an
`
`address that is returned to the first network device. (See id. at 40:44-46.) A secure
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`communication link is initiated between the first network device and the second
`
`network device based on a determination that the second network device is
`
`available for the secure communications service. (See, e.g., id. at 40:37-49, 41:30-
`
`39, 41:47-56; FIG. 27.) The secure communications service uses the secure
`
`communication link to communicate at least one of video data and audio data
`
`Petitioner Apple Inc. - Ex. 1017, p. 14
`
`
`
`between the first network device and the second network device. (See, e.g., id. at
`
`21:52-62.) The secure communication link is a direct link between the first and
`
`second network devices, using encryption to provide data security.
`
`Level of Ordinary Skill in the Art
`
`B.
`A person of ordinary skill in the art at the relevant time would have had a
`
`master’s degree in computer science or computer engineering and approximately
`
`two years of experience in computer networking and computer security. In
`
`litigation related to VirnetX’s patents, this level of skill was adopted by Petitioner
`
`Apple Inc. and a host of other companies, including Cisco Systems, Inc.; NEC
`
`Corporation; NEC Corporation of America; Aastra USA, Inc.; Aastra Technologies
`
`Ltd.; Mitel Networks Corp.; Mitel Networks, Inc.; Siemens Enterprise
`
`Communications GmbH & Co. KG; Siemens Enterprise Communications, Inc.;
`
`and Avaya Inc. (Ex. 2006 at 4, Memorandum Opinion and Order in VirnetX Inc. v.
`
`Mitel Networks Corp. et al., Case No. 6:11-CV-18 (E.D. Tex. Aug. 1, 2012); Ex.
`
`1049 at 5, Memorandum Opinion and Order in VirnetX Inc. v. Cisco Systems, Inc.
`
`et al., Case No. 6:10-CV-417 (E.D. Tex. April 25, 2012).)
`
`Apple now proposes a lower level of skill in an attempt to ensure that its
`
`expert meets its proposed skill level. (Pet. at 5.) Apple’s newfound definition
`
`should be rejected, however, as nearly a dozen companies, including Apple itself,
`
`have agreed that the appropriate level of skill is the one proposed by VirnetX.
`
`Petitioner Apple Inc. - Ex. 1017, p. 15
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`
`
`“Domain Name” (Claims 1, 14, 16, and 28)4
`C.
`VirnetX’s Proposed Construction
`Apple’s Proposed Construction
`A name corresponding to a network
`A name corresponding to an IP address
`address
`
`The BRI of “domain name” is “a name corresponding to a network address.”
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`VirnetX’s proposed construction is consistent with Apple’s but recognizes that a
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`name may correspond to types of network addresses other than an “IP” address.
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`(Pet. at 6-7.) The ’697 patent claims support this construction by separately
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`reciting a relationship between the claimed domain name and an IP address. (Ex.
`
`1001, claim 1: “a request to look up an internet protocol (IP) address of the second
`
`network device based on a domain name.”) If the term “domain name” inherently
`
`required correspondence with an IP address, as Apple contends, then this “IP
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`address” claim language would be redundant. Its presence suggests that “domain
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`name” is a broader term consistent with VirnetX’s construction.
`
`VirnetX’s construction is also consistent with the specification, which
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`explains that Internet Protocol or “IP” is but one type of network. (See e.g., Ex.
`
`1001 at 4:19, 5:13-14, 11:51-53.) The specification also contemplates “‘boutique’
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`embodiments . . . for use in smaller networks, such as small virtual private
`
`4 VirnetX identifies only the challenged claims that expressly recite the
`
`terms at issue. Claims that depend from the identified claims may also implicitly
`
`contain the terms.
`
`Petitioner Apple Inc. - Ex. 1017, p. 16
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`
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`networks” instead of large networks like the Internet, where IP addresses are
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`commonplace. (Ex. 1001 at 16:62-66.) Nothing requires these smaller networks to
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`use IP addresses. The specification similarly contemplates applications including
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`“video-conferencing, e-mail, word processing programs, telephony, and the like,”
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`which do not necessarily use IP addresses. (Ex. 1001 at 21:57-59.)
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`Accordingly, under the applicable BRI standard, a “domain name” is “a
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`name corresponding to a network address.”
`
`D.
`
`“Secure Communication Link” (Claims 1-3, 11-13, 16-17, and
`24-27)
`
`VirnetX’s Proposed Construction
`A direct communication link that
`provides data security through
`encryption
`
`Apple’s Proposed Construction
`A communication link in which
`computers privately and directly
`communicate with each other on
`insecure paths between the computers
`where the communication is both secure
`and anonymous, and where the data
`transferred may or may not be encrypted
`
`
`Apple’s proposed “secure communication link” construction raises two
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`primary issues: whether a secure communication link requires (1) encryption and
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`(2) anonymity. For the reasons discussed below, encryption is required but
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`anonymity is not.
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`Encryption: Apple first contends that “[a] ‘secure communication link’. . .
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`must encompass virtual private networks.” (Pet. at 7.) VirnetX agrees that some
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`features of VPNs are applicable to secure communication links. For example,
`
`Petitioner Apple Inc. - Ex. 1017, p. 17
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`
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`VPNs must be encrypted. The FreeS/WAN glossary of terms in the ’697 patent’s
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`prosecution history explains that a VPN is “a network which can safely be used as
`
`if it were private, even though some of its communication uses insecure
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`connections. All traffic on those connections is encrypted.” (Ex. 2004 at 24,
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`Glossary for the Linux FreeS/WAN Project.) A contemporaneous computing
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`dictionary agrees that “VPNs enjoy the security of a private network via access
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`control and encryption . . . .” (Ex. 2005 at 8, McGraw-Hill Computer Desktop
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`Encyclopedia (9th ed. 2001).)
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`During litigation, Apple agreed that secure communication links in the
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`context of VirnetX’s patents shared the encryption requirement of VPNs. Apple
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`and other defendants asked the district court to adopt an encryption requirement
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`based on VirnetX’s statements during reexamination that contrasted the “secure
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`communication link” recited in claims of related U.S. Patent Nos. 7,418,504 and
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`7,921,211 with the unencrypted link described in Beser. (Ex. 2002 at 2-3, Motion
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`for Reconsideration in the ’417 Litigation (E.D. Tex. June 21, 2012), “VirnetX
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`unequivocally disclaimed ‘secure communications links’ that are not encrypted”;
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`Ex. 1056 at 25, Patent Owner’s Response to Office Action of December 29, 2011.)
`
`VirnetX did not oppose the motion, and the district court granted it in ful
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