PTAB

IPR2013-00378

New Bay Capital LLC v. VirnetX Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Agile Network Protocol for Secure Communications Using Secure Domain Names
  • Brief Description: The ’211 patent discloses a method for improving upon conventional Domain Name Service (DNS) systems. The purported improvement involves programming a DNS system to include code that, in response to a query for a network address, also indicates whether the system supports the establishment of a secure communication link.

3. Grounds for Unpatentability

Ground 1: Anticipation by Kiuchi - Claims 36, 37, 47, and 51 are anticipated under 35 U.S.C. §102(b) by Kiuchi.

  • Prior Art Relied Upon: Kiuchi (“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, a 1996 publication, discloses every limitation of the challenged claims. Kiuchi describes a secure "C-HTTP name server" for a closed network of institutions that functions as the claimed "domain name service system." The petition asserted this C-HTTP name server meets the limitations of independent claim 36 by:
      • Connecting to a network: The system is explicitly designed for use on the Internet.
      • Storing domain names and addresses: The C-HTTP name server performs name resolution by looking up stored hostnames and returning corresponding IP addresses for members of the closed network.
      • Receiving a query: A "client-side proxy" sends a query to the C-HTTP name server to request the IP address of a host.
      • Indicating support for a secure link: This critical limitation is allegedly met when, in response to a permitted query, the C-HTTP name server returns not only the IP address but also the public key of the server-side proxy and unique "Nonce" values. Petitioner contended that this specific information, which is necessary to establish a secure connection, serves as the claimed "indication" that the system supports such a link.
    • Dependent Claim Mapping: Petitioner further argued that Kiuchi anticipates the dependent claims:
      • Claim 37 (top-level domain name): Kiuchi allegedly discloses domain names that include a top-level domain name, providing examples such as "University.of.Tokyo.Branch.Hospital" and "Coordinating.Center.CSCRG," where "Hospital" and "CSCRG" function as top-level domains.
      • Claim 47 (authenticating the query): Kiuchi allegedly teaches authenticating requests using cryptographic techniques, explicitly mentioning the use of an "electronic signature for the request/response authentication" and stating that requests are "encrypted and certified."
      • Claim 51 (transparently to a user): Kiuchi allegedly discloses establishing the secure link transparently, stating that "End-users do not have to employ security protection procedures. They do not even have to be conscious of using C-HTTP based communications."

4. Key Claim Construction Positions

Petitioner dedicated significant argument to claim construction, asserting that the Patent Owner (VirnetX) should be judicially estopped from proposing narrower constructions than those it successfully argued for in prior district court litigation involving the ’211 patent family.

  • "Domain name service system": Petitioner proposed the construction "a system that performs a lookup service that returns an IP address for a requested domain name." This broad construction, previously advocated by VirnetX, is not limited to conventional DNS as defined by the Internet Engineering Task Force (IETF) and would therefore encompass Kiuchi's C-HTTP name server.
  • "Code for...indicating": Petitioner proposed this term means "Instructions for execution by a computer, such as a server, for serving as a sign or token signifying." Petitioner argued this construction is consistent with the patent's specification, where returning a secure URL or a "clear reply" that enables a VPN connection are described as forms of indication. This construction covers Kiuchi's return of a public key and Nonce values as the "sign or token."
  • "Transparently": For claim 51, Petitioner argued the patent’s specification defines this term as "the user need not be involved in creating the secure link," directly mapping to Kiuchi’s disclosure.

5. Arguments Regarding Discretionary Denial

While predating modern Fintiv analysis, the petition addressed related proceedings to argue for institution.

  • Petitioner acknowledged two pending inter partes reexaminations of the ’211 patent brought by other parties. However, it argued that the present IPR petition was "highly streamlined" in contrast. While the reexaminations challenged all 60 claims with over a dozen prior art references, this petition focused on only four claims and relied on a single prior art reference (Kiuchi). Petitioner asserted it was advancing "new evidence...and explanations" to justify cancellation over Kiuchi, suggesting this focused approach merited the Board's consideration for efficiency.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 36, 37, 47, and 51 of Patent 7,921,211 as unpatentable due to anticipation by the Kiuchi reference.