VIRNETX EXHIBIT 2006
`Apple v. VirnetX
`Trial IPR2015-00866
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`Serial No.: 11/839,987
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`Response to June 8, 2010 Office Action
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`Applicant appreciates the Examiner’s examination of the subject application. Claims 1-
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`Remarks
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`18 are currently pending.
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`In the Office Action, the Examiner has rejected Claims 1-18 under 35 U.S.C. § 103(a), as
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`being unpatentable over VPN Overview and Aventail Connect V 3.1/V2.6 Administrator’s Guide
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`(“Aventail”). The Examiner rejected claims 1-18 on the ground of nonstatutory obviousness-
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`type double patenting as being unpatentable over claims 2-23 of co—pending Application No.
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`1 1/679,416.
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`Applicant respectfully traverses the outstanding objection and rejections and requests
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`reconsideration of the subject application in light of the foregoing amendments and the following
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`remarks.
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`Patentability under 35 U.S. C. § 103
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`The Examiner has rejected Claims 1-18 under 35 U.S.C. § 103(a), as being unpatentable
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`over VPN Overview and Aventail. These rejections are respectfully traversed, and
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`reconsideration and withdrawal of these rejections are respectfully requested.
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`Independent claim 1 recites the following:
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`A method of accessing a secure network address, comprising:
`sending a query message from a first network device to a secure domain
`service, the query message requesting from the secure domain service a secure
`network address for a second network device;
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`receiving at the first network device a response message from the secure
`domain name service containing the secure network address for the second
`network device; and
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`sending an access request message from the first network device to the
`secure network address using a virtual private network communication link.
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`(emphasis added).
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`Serial No.: 11/839,987
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`Response to June 8, 2010 Office Action
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`As a preliminary matter, neither Aventail nor VPN Overview have been shown to be
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`prior art to all claims in the present application, including claim 1. Aventail is not prior art
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`because the present application claims priority to U.S. Patent Nos. 6,502,135 (hereinafter “the
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`‘135 patent”) and 7,188,180 (hereinafter “the ‘180 patent”). The ‘135 and ‘180 Patents have
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`been subject to an inter partes reexamination proceedings, Control Nos. 95/001,269 (hereinafter
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`“the ‘269 Reexam”) and 95/001,270 (hereinafter “the ‘270 Reexam”), respectively. In both
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`Reexams, the USPTO determined that “Aventail cannot be relied upon as prior art to the
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`[patents].” See Reexamination Control No. 95/001,269, Action Closing Prosecution, June 16,
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`2010, attached as Exhibit A, and Reexamination Control No. 95/001,270, Action Closing
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`Prosecution, June 16, 2010, attached as Exhibit B. This determination was soundly based on the
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`fact that no evidence was found that established Aventail’ s publication date.
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`Indeed, Aventail’s identification of a copyright date range of 1996 — 1999 is not
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`equivalent to a publication date. The distinction between a publication date and a copyright date
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`is critical. To establish a date of publication, the reference must be shown to have “been
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`disseminated or otherwise made available to the extent that persons interested and ordinarily
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`skilled in the subject matter or art, exercising reasonable diligence, can locate it.” In re Wyre,
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`655 F.2d 221 (C.C.P.A. 1981). Aventail, on its face, provides “© 1996-1999 Aventail
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`Corporation.” The copyright date does not meet this standard. Unlike a publication date, a
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`copyright date merely establishes “the date that the document was created or printed.”
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`Hilgraeve, Inc. v. Symantec Corp., 271 F. Supp. 2d 964, 975 (E.D. Mich. 2003).
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`Presuming the author of the document accurately represented the date the document was
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`created, this creation date is not evidence of any sort of publication or dissemination. Without
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`more, this bald assertion of the creation of the document does not meet the “publication”
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`standard required for a document to be relied upon as prior art.
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`Further exacerbating matters is the filing date of the ‘135 Patent: February 15, 2000.
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`Suppose the relied upon sections of the Aventail reference were created on December 31, 1999,
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`and the copyright date range were accordingly amended to read “1996—1999.” Under these
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`circumstances, it is possible that the document, although created, was not made publicly
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`available until after the filing date of the ‘135 Patent, six weeks after creation. Under these
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`circumstances, Aventail clearly would not be eligible to be relied upon as prior art to the ‘135
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`Patent.
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`As an aside, the Applicant notes that the present assignee (VimetX Inc.) and its
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`prosecution counsel have been accused of inequitable conduct during the ‘269 Reexam in a
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`litigation proceeding, VirnetX Inc. v. Cisco Systems, Inc., et al., United States District Court for
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`the Eastern District of Texas, Tyler Division, Case No. 6:10—cv—417. Exhibits C—E. In its
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`Original Answer, Affirmative Defenses, and Counterclaims to the Vimetx’s Original Complaint,
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`the Defendant Apple Inc. (“Apple”) alleges that evidence of Aventail’s publication as early as
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`June 1999 was presented in a different trial involving Microsoft Corporation. Exhibit C at ‘H 23
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`(p. 14). Apple further alleges that “VimetX was aware that the Aventail reference may have
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`been published at least as early as June 1999.” Exhibit C at ‘H 23. Defendants Aastra
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`Technologies Limited and Aastra USA Inc. (“Aastra”) have made similar allegations in their
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`responsive pleadings. Exhibit D at ‘H 86 (p. 19); Exhibit E at ‘H 86 (p. 19). To the contrary, the
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`applicants are unaware of evidence establishing Aventail’s publication date, and specifically are
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`unaware of the June 1999 publication date alleged by Apple and Aastra in their pleadings. The
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`trial transcript from the Microsoft trial does not discuss anything about a publication date for the
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`Aventail reference. Exhibit F. While the trial transcript references the Aventail product, it does
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`not mention anything about a publication date. See e. g. Exhibit F-2, pp. 112, 146; Exhibit F-3,
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`pp. 115, 119-20; Exhibit F-10 pp. 21-40; Exhibit F-11, pp. 21-32, 120-150. The deposition of
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`Gary Tomlinson (former employee of Aventail) taken during discovery prior to the Microsoft
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`trial is inconclusive, at best. Exhibit H at pp. 33-36. Thus, although an allegation of knowledge
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`has been made by a third party, the applicants, the assignee and applicants’ prosecution counsel
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`have not had and do not have such knowledge. To be sure, the applicants will notify the USPTO
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`immediately if it becomes aware of evidence of Aventail’s publication date.
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`VPN Overview has also not been shown to be prior art. On its face, VPN Overview only
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`provides that it was copyrighted in 1998. VPN Overview at 2. Further, the reference identifies
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`itself as being nothing more than a draft. VPN Overview at 1 (Stating the following: “White
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`Paper — DRAFT”). The lack of a publication date in conjunction with the document’s status as a
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`draft fail to evidence that VPN Overview is prior art to the present application.
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`Assuming arguendo, that Q of these references are prior art to the present application,
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`neither VPN Overview nor Aventail, alone or in combination, are understood to disclose or
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`suggest the features of claim 1, particularly with respect to at least the features of “a Virtual
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`private network communication link,” “a s(=,(:ju1‘(=, domain name service” and aE computer
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`network address.”
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`Aventail’s and VPN Overview’s disclosures were summarized in the Declaration of
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`Professor Jason Nieh in support of the ‘270 Reexam. Reexamination Control No. 95/001,270,
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`Declaration of Jason Nieh, Ph.D., Pursuant to 37 C.F.R. § 1.132, April 19, 2010, attached as
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`Exhibit G (hereinafter “Nieh Decl.”). The Nieh Decl. is cited herein to characterize the cited
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`references and their deficiencies.
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`Aventail discloses a system and architecture for transmitting data between two
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`computers using the SOCKS protocol. Nieh Decl. at ‘H 14. The system routes certain, predefined
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`network traffic from a WinSock (Windows sockets) application to an extranet (SOCKS) server,
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`possibly through successive servers. Aventail at 7; Nieh Decl. at ‘H 14. Upon receipt of the
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`network traffic, the SOCKS server then transmits the network traffic to the Internet or external
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`network. Aventail at 7; Nieh Decl. at ‘H 14. Aventail’s disclosure is limited to connections
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`created at the socket layer of the network architecture. Nieh Decl. at ‘H 14.
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`In operation, a component of the Aventail Connect software described in the reference
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`resides between WinSock and the underlying TCP/1P stack. See Aventail at 9; Nieh Decl. at ‘H
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`15. The Aventail Connect software intercepts all connection requests from the user, and
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`determines whether each request matches local, preset criteria for redirection to a SOCKS server.
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`See Aventail at 10; Nieh Decl. at ‘H 15. If redirection is appropriate, then Aventail Connect
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`creates a false DNS entry to return to the requesting application. See Aventail at 12; Nieh Decl.
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`at ‘H 16. Aventail discloses that Aventail Connect then forwards the destination hostname to the
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`eXtranet SOCK server over a SOCKS connection. See Aventail at 12; Nieh Decl. at ‘H 16. The
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`SOCKS server performs the hostname resolution. Aventail at 12; Nieh Decl. at ‘H 17. Once the
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`hostname is resolved, the user can transmit data over a SOCKS connection to the SOCKS server.
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`Nieh Decl. at ‘H 17. The SOCKS server, then, separately relays that transmitted data to the target.
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`Nieh Decl. at ‘H 17.
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`Aventail does not teach a VPN. In fact, the system disclosed in Aventail is incompatible
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`with a VPN, and one skilled in the art would be unable to combine the two. These assertions are
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`true for at least three reasons. First, Aventail has not been shown to demonstrate that computers
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`connected via the Aventail system are able to communicate with each other as though they were
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`on the same network. Id. at ‘H 25. Aventail discloses establishing point—to—point SOCKS
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`connections between a client computer and a SOCKS server. Id. The SOCKS server then relays
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`data received to the intended target. Id. Aventail does not disclose a VPN, where data can be
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`addressed to one or more different computers across the network, regardless of the location of
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`the computer. Id.
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`For example, suppose two computers, A and B, reside on a public network. Id. at ‘H 26.
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`Further, suppose two computers, X and Y, reside on a private network. Id. If A establishes a
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`VPN connection with X and Y’s network to address data to X, and B separately establishes a
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`VPN connection with X and Y’s network to address data to Y, then A would nevertheless be able
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`to address data to B, X, and Y without additional set up. Id. This is true because A, B, X, and Y
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`would all be a part of the same VPN. Id.
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`In contrast, suppose, according to Aventail, which only discloses communications at the
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`socket layer, A establishes a SOCKS connection with a SOCKS server for relaying data to X,
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`and B separately establishes a SOCKS connection with the SOCKS server for relaying data to Y.
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`Id. at ‘H 27. In this situation, not only would A be unable to address data to Y without
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`establishing a separate SOCKS connection (i. e. a VPN according to the Office Action), but A
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`would be unable to address data to B over a secure connection. Id. This is one example of how
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`the cited portions of Aventail fail to disclose a VPN. Id.
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`Second, according to Aventail, Aventail Connect’s fundamental operation is
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`incompatible with users transmitting data that are sensitive to network information. Id. at ‘H 28.
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`As stated above, Aventail discloses that Aventail Connect operates between the WinSock and
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`TCP/IP layers, as depicted on page 9:
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`'v\-indx;x\-*»::- TCFWF’ éuppli-:2-3t:v;m
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`:"-
`r:.i1h::.r ‘.~"
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`(‘Aventail Connect
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`itagrered Service Prfiruider) §
`‘
`_
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`x
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`Aventail at 9; id. Because Aventail discloses that Aventail Connect operates between these
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`layers, it can intercept DNS requests. Nieh Dec. at ‘H 28. Aventail discloses that Aventail
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`Connect intercepts certain DNS requests, and returns a false DNS response to the user if the
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`requested hostname matches a hostname on a user—defined list. Id. Accordingly, Aventail
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`discloses that the user will receive false network information from Aventail Connect for these
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`hostnames. Id. If the client computer hopes to transfer to the target data that is sensitive to
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`network information, Aventail Connect’s falsification of the network information would prevent
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`the correct transfer of data. Id. Aventail has not been shown to disclose a VPN.
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`Third, Aventail has not been shown to disclose a VPN because computers connected
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`according to Aventail do not communicate directly with each other. Id. at ‘H 29. Aventail
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`discloses a system where a client on a public network transmits data to a SOCKS server via a
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`singular, point—to—point SOCKS connection at the socket layer of the network architecture. Id.
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`The SOCKS server then relays that data to a target computer on a private network on which the
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`SOCKS server also resides. Id. All communications between the client and target stop and start
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`at the intermediate SOCKS server. Id. The client cannot open a connection with the target itself.
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`Therefore, one skilled in the art would not have considered the client and target to be virtually on
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`the same private network. Id. Instead, the client computer and target computer are deliberately
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`separated by the intermediate SOCKS server. Id. For these reasons, Aventail not only fails to
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`disclose a VPN, but it discloses a system that is inherently incompatible with a VPN.
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`Dr. Nieh also summarized VPN Overview in his declaration. VPN Overview provides an
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`overview of VPNs, describing their basic requirements, and some of the key technologies that
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`permit private networking over public networks. See, VPN Overview at Abstract; Nieh Dec. at ‘H
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`30. As described above, Aventail is inherently incompatible with a VPN. Thus, one skilled in
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`the art would be unable to implement the system disclosed in VPN Overview on the system
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`disclosed in Aventail. The two references cannot be combined in the manner suggested in the
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`Office Action of June 9, 2010, even if the references were prior art to the present application.
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`Accordingly, VPN Overview and Aventail, either alone or in combination, are not understood to
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`disclose, teach, or suggest the features of independent claim 1.
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`Moreover, neither Aventail nor VPN Overview teach or disclose “a secure domain name
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`service” and a “secure computer network address.” Both Aventail and VPN Overview disclose
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`conventional domain name services and computer network addresses, but not “a secure domain
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`name” or “a secure computer network address.” See Office Action at 3. Indeed, in
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`reexamination of a patent to which the current application claims priority, the Patent Office
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`found that neither Aventail nor VPN Overview teach or disclose “a secure domain name
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`service.” Reexamination Control No. 95/001,270, Action Closing Prosecution, June 16, 2010,
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`attached as Exhibit B, at ‘M 6-7 and 9-10. (“Aventail does not teach the claimed .
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`.
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`. secure
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`domain name service .
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`.
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`. as being a part of a non—conventional domain name system;” “VPN
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`Overview [does not] teach the claimed .
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`.
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`. secure domain name service .
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`.
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`. as being a part of a
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`non—conventional domain name system.” Paragraphs [0303] — [0306] of the application also
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`support the distinction that “a secure domain name” and “a secure computer network address”
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`are not conventional domain name services and computer network addresses. See also Nieh Dec.
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`at ‘H 10-13.
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`For all these reasons, Applicant respectfully submits that neither Aventail nor VPN
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`Overview teach or disclose the elements of independent claim 1. Applicant respectfully submits
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`that claim 1 is in condition for allowance. Reconsideration and withdrawal of the rejection of
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`independent claim 1 is respectfully requested.
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`The other claims currently under consideration in the application are dependent from
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`their respective independent claims discussed above and therefore are believed to be allowable
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`over the applied references for at least the reasons provided above for their respective
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`independent claims. Because each dependent claim is deemed to define an additional aspect of
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`the invention, the individual consideration of each on its own merits is respectfully requested.
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`Reconsideration and withdrawal of the rejections of the dependent claims are respectfully
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`requested.
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`The absence of a reply to a specific rejection, issue, or comment does not signify
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`agreement with or concession of that rejection, issue, or comment. In addition, because the
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`arguments made above may not be exhaustive, there may be other reasons for patentability of
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`any or all claims that have not been expressed. Finally, nothing in this paper should be construed
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`as an intent to concede, or an actual concession of, any issue with regard to any claim, or any
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`cited art, except as specifically stated in this paper, and the amendment or cancellation of any
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`claim does not necessarily signify concession of unpatentability of the claim prior to its
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`amendment or cancellation.
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`Non-statutory Double Patenting Rejection
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`Examiner has rejected claims 1-18 on the ground of nonstatutory obViousness—type
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`double patenting as being unpatentable over claims 2-23 of co—pending Application No.
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`11/679,416. Accordingly, Applicant submits herewith a terminal disclaimer. Applicant
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`respectfully submits that this rejection has been overcome and requests withdrawal of this
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`rejection.
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`Serial No.: 11/839,987
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`Response to June 8, 2010 Office Action
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`In light of the Amendments and Remarks herein, the Applicant submits that the pending
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`CONCLUSION
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`claims, claims 1-19, are in condition for allowance and respectfully requests a notice to this
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`effect. Should the Examiner have any questions, please call the undersigned at the phone
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`number listed below.
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`To the extent necessary, a petition for an extension of time (3 months) under 37 C.F.R. §
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`1.136 is hereby made. Please charge any shortage in fees due in connection with the filing of
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`this paper, including extension of time fees, to Deposit Account 501133 and please credit any
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`excess fees to such deposit account.
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`Respectfully submitted,
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`MCDERMOTT WILL & EMERY LLP
`
`/Toby H. Kusmer/
`Toby H. Kusmer
`Registration No. 26,418
`28 State Street
`Boston, MA 02109
`Phone: 617-535-4065
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`Facsimile: 617-535-3800
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`Date: January 10, 2011
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`DM_US 27382961 -1 .077580.0066
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`Please recognize our Customer No. 23630 as
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