PTAB

IPR2014-00238

Apple Inc v. VirnetX Inc

Key Events

Petition

petition Intelligence

Case #: IPR2014-00238
Patent #: 8,504,697
Filed: December 6, 2013
Petitioner(s): Apple Inc.
Patent Owner(s): VirnetX, Inc. and Science Application International Corporation
Challenged Claims: 1-11, 14-25, and 28-30

Title: System and Method Employing an Agile Network Protocol for Secure Communications Using Secure Domain Names
Brief Description: The ’697 patent discloses methods and systems for establishing a secure communication link between two network devices. The system works by intercepting a request from a first device to look up an Internet Protocol (IP) address based on a domain name for a second device, determining if the second device is available for a secure service, and then initiating a secure link, such as a Virtual Private Network (VPN).

Prior Art Relied Upon: Wesinger (Patent 5,898,830).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Wesinger discloses every limitation of the challenged claims. Wesinger describes a firewall system that intercepts connection requests from a client to a remote destination. The firewall uses a DNS/DDNS module to resolve the destination's hostname into an IP address. Based on a configuration database, the firewall determines if the connection is permitted and requires special processing like encryption. If a secure connection is authorized, the firewall establishes a secure channel (a VPN) and communicates video and audio data, anticipating the limitations of independent claims 1 and 16.
- Key Aspects: Petitioner contended that Wesinger’s firewall transparently intercepts the initial connection request containing the domain name, creates a virtual host to process it, and uses a configuration file to determine whether a secure, encrypted connection is required, thereby initiating a secure communication link as claimed.

Prior Art Relied Upon: Wesinger (Patent 5,898,830) and RFC 2543.
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that while Wesinger provides the foundational secure communication architecture capable of handling encrypted audio and video, it does not explicitly disclose a "video conferencing service" or "telephony service" (limitations of claims 4-7 and 18-21). RFC 2543, a well-known standard for Session Initiation Protocol (SIP), explicitly discloses methods for establishing video conferencing and telephony services over secure links.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to implement the standard services from RFC 2543 on Wesinger's secure architecture. This would consolidate multiple communication services (e.g., VoIP, firewall) onto a single, desirable platform, enabling an organization to consistently implement and regulate security and access control measures.
- Expectation of Success: Implementing the well-documented services of RFC 2543 on Wesinger's capable architecture would have been simple and straightforward from a technical perspective, providing a high expectation of success.

Prior Art Relied Upon: Aventail (a 1999 printed publication comprising administrator guides for a VPN system).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the Aventail VPN system performs the same steps as the challenged claims. Aventail discloses client software that transparently intercepts all connection requests on a client computer using a Layered Service Provider (LSP). The system evaluates the request's domain name against a set of redirection rules to determine if the destination requires a secure connection. If a rule is matched, the system automatically establishes an encrypted VPN with a remote Extranet Server, thereby initiating the secure link and anticipating claims 1 and 16.
- Key Aspects: Aventail's ability to support UDP traffic for applications like RealAudio® was cited as evidence that it taught the communication of audio data over the secure link.
Additional Grounds: Petitioner asserted additional challenges, including that claims 4-7 and 18-21 are obvious over Aventail in view of RFC 2543, and that various claims are anticipated by Kiuchi (a 1996 IEEE publication). These grounds relied on similar rationales, either applying the RFC 2543 teachings to the Aventail base system or mapping the claim limitations to Kiuchi's C-HTTP system for creating a closed, secure network over the Internet.

"intercepting . . . a request": Petitioner argued that the broadest reasonable construction of "intercepting" must encompass "receiving" a request.
Rationale: This argument was based on dependent claims 10 and 29, which explicitly state that the step of "intercepting the request consists of receiving the request to determine whether the second network device is available for the secure communications service." Petitioner highlighted that during prosecution, Patent Owner amended the independent claims from "receiving" to "intercepting" to overcome a rejection based on Wesinger. Petitioner contended this amendment was rendered meaningless by the language of the newly added dependent claims, and therefore the claims remain unpatentable over the same prior art.

Petitioner requested institution of an inter partes review and cancellation of claims 1-11, 14-25, and 28-30 of the ’697 patent as unpatentable.