PTAB

IPR2013-00376

New Bay Capital LLC v. VirnetX Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Establishment of a Secure Communication Link Based on a Domain Name Service (DNS) Request
  • Brief Description: The ’151 patent discloses a system and method where a data processing device, acting as a DNS proxy, intercepts DNS requests from a client. The proxy determines if the request corresponds to a secure server; if so, it automatically initiates an encrypted channel (e.g., a VPN), and if not, it forwards the request to a conventional DNS function to return an IP address for a nonsecure computer.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1 and 13 over Kiuchi

  • Prior Art Relied Upon: Kiuchi ("C-HTTP - The Development of a Secure, Closed HTTP-based Network on the Internet," a 1996 IEEE publication).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kiuchi disclosed a secure network (C-HTTP) system that uses a client-side proxy and a C-HTTP name server for secure communications, and a conventional DNS for non-secure communications. In Kiuchi, when a request is for a non-secure server, the C-HTTP name server returns an error, prompting the client-side proxy to then initiate a separate request to a conventional DNS. Petitioner asserted that all elements of the claimed invention were present in Kiuchi, just distributed differently.
    • Motivation to Combine (for §103 grounds): Petitioner contended that a person of ordinary skill in the art (POSITA) would modify Kiuchi by consolidating the domain name resolution functions into the C-HTTP name server. Instead of returning an error for non-secure requests, the modified C-HTTP name server would directly query the conventional DNS itself. This modification was argued to be a simple and obvious design choice to streamline the system, eliminate unnecessary steps (the error message and subsequent request), and improve efficiency.
    • Expectation of Success: A POSITA would have a high expectation of success as this modification involved rearranging known functions within the C-HTTP system without changing their fundamental operation, yielding a predictable result.

Ground 2: Anticipation of Claims 1 and 13 by Kiuchi

  • Prior Art Relied Upon: Kiuchi.
  • Core Argument for this Ground:
    • Prior Art Mapping: In an alternative argument, Petitioner asserted that Kiuchi’s client-side proxy itself is a data processing device that anticipates all limitations of the challenged claims. Petitioner argued the client-side proxy contains an internal "resolver function" that acts as the claimed "DNS proxy module." This resolver intercepts an internal request (derived from an HTTP request), determines if the target is secure by querying the C-HTTP name server, automatically initiates a secure channel if the target is secure, and forwards the request to a conventional DNS if the target is not secure (upon receiving an error from the C-HTTP name server). Petitioner argued this internal logic and functionality within a single component (the client-side proxy) met every limitation of the claims.

Ground 3: Obviousness of Claims 1 and 13 over Dalton in view of Kiuchi

  • Prior Art Relied Upon: Dalton ("Applying Military Grade Security to the Internet," a 1997 publication) and Kiuchi.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Dalton disclosed a firewalled DNS system, a Compartmented Mode Workstation (CMW), that intercepts DNS requests and determines whether they are for a protected host on an internal LAN or an external host on the internet. If external, Dalton’s CMW forwards the request to a conventional DNS. However, Dalton did not teach the automatic initiation of an encrypted channel over the public internet. Kiuchi supplied this missing element by teaching a system that automatically creates a secure, encrypted channel (a VPN) for communications over the internet.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Dalton’s DNS filtering capability with Kiuchi’s secure channel creation to replace Dalton's costly and geographically limited private LAN with a more flexible and cost-effective virtual private network over the internet as taught by Kiuchi. This combination would allow for secure communications between geographically separate computers as if they were on the same private LAN, providing a clear technical and economic incentive for the proposed modification.
    • Expectation of Success: A POSITA would expect success in modifying Dalton's CMW to perform Kiuchi's name server functions (returning VPN resources) and adding Kiuchi's VPN establishment functions to the client and server, as both systems were DNS-based and addressed the common problem of securing network communications.

4. Key Claim Construction Positions

Petitioner asserted that the Patent Owner, VirnetX, should be estopped from arguing for narrower claim constructions than those it successfully advocated for in prior district court litigations. Key proposed constructions included:

  • "domain name server (DNS) proxy module": A program that responds to a domain name inquiry in place of a conventional DNS. Petitioner argued this could be a software module on the same computer as the client, not necessarily a separate server.
  • "Automatically initiating an encrypted channel": Construed as "initiating the channel without involvement of a user." This construction was based on a prior court ruling in favor of VirnetX.
  • "DNS request": Broadly construed as "a communication that contains a domain name and requests an IP address," which could include an internal function call between software modules on the same computer, not just a network packet.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1 and 13 of Patent 7490151 as unpatentable under 35 U.S.C. §§ 102 and 103.