PTAB

IPR2013-00377

New Bay Capital LLC v. VirnetX Inc

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1. Case Identification

2. Patent Overview

  • Title: Agile Network Protocol for Secure Communications Using Secure Domain Names
  • Brief Description: The ’504 patent relates to a method for establishing secure communications by modifying a conventional Domain Name Service (DNS) system. The core purported improvement is configuring the DNS system to provide an explicit "indication" that it supports the establishment of a secure communication link, rather than just returning an IP address.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, 5, 16, and 27 under §102 over Kiuchi

  • Prior Art Relied Upon: Kiuchi (Takahiro Kiuchi and Shigekoto Kaihara, “C-HTTP – The Development of a Secure, Closed HTTP-based Network on the Internet,” published in the Proceedings of SNDSS 1996).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kiuchi discloses every limitation of independent claim 1 and its asserted dependent claims. Kiuchi describes a "C-HTTP name server" for a closed, secure network that functions as the claimed "domain name service system." This server is connected to the Internet, stores hostnames (domain names) and corresponding IP addresses, and receives queries. The central argument is that Kiuchi's server provides the claimed "indication" that it supports establishing a secure link. When the C-HTTP name server receives a valid query, it returns not only the IP address but also a public key and "Nonce" values. Petitioner contended that the act of providing this cryptographic information, which is essential for establishing the secure link, inherently serves as the required "indication."
    • Dependent Claims Mapping: Petitioner further argued that Kiuchi anticipates the dependent claims. Claim 2 (top-level domain name) is met by hostname examples like "Coordinating.Center.CSCRG." Claim 5 (authentication using a cryptographic technique) is met by Kiuchi’s explicit teaching of using digital signatures and encryption to authenticate requests. Claim 16 (link between a first and second location) is met by Kiuchi’s description of establishing a secure connection between a client-side proxy and a server-side proxy. Claim 27 (transparently enabling the link) is met by Kiuchi’s express statement that "End-users do not have to employ security protection procedures" and are not conscious of the C-HTTP communications.

Ground 2: Obviousness of Claim 21 under §103 over Kiuchi in view of Broadhurst

  • Prior Art Relied Upon: Kiuchi (SNDSS 1996) and Broadhurst (Patent 6,560,634).
  • Core Argument for this Ground:
    • Prior Art Mapping: Claim 21 depends on claim 1 and further requires that the domain name service system comprise a "server" that includes a "domain name database." Petitioner asserted that Kiuchi clearly discloses the "server" element through its C-HTTP name server. While Kiuchi does not use the specific term "database," it describes the server storing and performing lookups of domain names and corresponding IP addresses.
    • Motivation to Combine: Broadhurst explicitly teaches that a conventional DNS comprises servers that use a "domain name database" containing records that associate domain names with numerical IP addresses. Petitioner argued a POSITA would combine Kiuchi's secure name server with Broadhurst's conventional database structure for the simple, predictable purpose of efficient data storage and retrieval. Storing domain name and IP address information in a database was the standard and logical method for implementing the functionality described in Kiuchi.
    • Expectation of Success: A POSITA would have had a high expectation of success, as using a database to organize, store, and query data was a fundamental and routine technique in network server design. Integrating a database into Kiuchi's server would have been a straightforward implementation detail, not a source of unpredictable results.

4. Key Claim Construction Positions

  • "configured ... to comprise an indication that the domain name service system supports establishing a secure communication link": Petitioner argued this phrase should be given its plain and ordinary meaning, where an "indication" is simply "something that serves as a sign or token signifying" support for a secure link. This construction is critical because it allows the provision of cryptographic data (like public keys and Nonce values in Kiuchi), which enables a secure link, to itself be the "indication." Petitioner argued against any narrower construction that would require the indication to be a specific type of message or a user-visible signal, asserting no such limitation exists in the claims or specification.
  • "domain name service system": Petitioner contended this term should be construed broadly as a system performing a domain name service (a lookup service returning an IP address), not limited to a conventional DNS as defined by the Internet Engineering Task Force (IETF). This broad construction was necessary for Kiuchi's C-HTTP name server, which performs this function for a closed network, to qualify as the claimed system.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the instant IPR should proceed despite two pending inter partes reexaminations of the ’504 patent. The petition asserted that those reexaminations were likely to be terminated under 35 U.S.C. §317(b) due to final judgments in parallel district court litigation involving the reexamination requesters (Cisco and Apple). Furthermore, Petitioner characterized its petition as "highly streamlined," focusing on a single primary reference (Kiuchi), and advancing new evidence and arguments not presented in the pending reexaminations, thus justifying a parallel proceeding.

6. Relief Requested

  • Petitioner requested institution of an IPR and cancellation of claims 1, 2, 5, 16, and 27 as anticipated by Kiuchi, and cancellation of claim 21 as obvious over Kiuchi in view of Broadhurst.