PTAB

IPR2014-00486

Apple Inc v. VirnetX Inc

Key Events

Petition

petition Intelligence

Case #: IPR2014-00486
Patent #: 8,051,181
Filed: March 10, 2014
Petitioner(s): Apple Inc.
Patent Owner(s): VirnetX, Inc. and Science Application International Corporation
Challenged Claims: 1-29

Title: Method for Establishing Secure Communication Link Between Computers of Virtual Private Network
Brief Description: The ’181 patent discloses methods for establishing a secure communication link, such as a Virtual Private Network (VPN), between computers over a public network. The invention relies on a "secure name service" to resolve a device's "secure name" into a network address to initiate secure communications.

Prior Art Relied Upon: Beser (Patent 6,496,867).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Beser discloses every limitation of the challenged claims. Beser describes a system for establishing a secure IP tunneling association between end devices (e.g., VoIP phones, personal computers) with the aid of a trusted-third-party network device. Petitioner contended that Beser's end devices are associated with both a "secure name" (e.g., a phone number registered with the trusted third party) and an "unsecured name" (e.g., a standard domain name). The trusted-third-party device in Beser functions as the claimed "secure name service" by resolving the secure name to an IP address, which initiates the creation of a secure communication link (an IP tunnel). Petitioner asserted that this disclosure directly maps to the elements of independent claims 1, 2, 24, 26, 28, and 29, and further detailed how Beser’s teachings met the limitations of all dependent claims.

Prior Art Relied Upon: Beser (Patent 6,496,867) and RFC 2401 ("Security Architecture for the Internet Protocol").
Core Argument for this Ground:
- Prior Art Mapping: This ground was presented as an alternative in case the Board determined that the claimed "secure communication link" requires all network traffic to be encrypted and that Beser alone did not teach this. Petitioner argued Beser provides the complete framework for establishing an IP tunnel using a secure name resolved by a third-party service. RFC 2401, which defines the IPsec protocol, provides the standard and well-known method for encrypting all traffic within such a tunnel.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because Beser expressly states that its IP tunnels ordinarily utilize the encryption techniques described in RFC 2401. Petitioner asserted that the motivation was explicit: to implement the secure tunnel taught by Beser using the conventional, industry-standard security protocol that Beser itself suggests for that exact purpose.
- Expectation of Success: A POSITA would have had a high expectation of success in implementing the combination. RFC 2401 was designed as a modular and standardized protocol to be readily integrated into the type of IP networking systems described in Beser to provide robust, end-to-end security for communications over a public network.

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, which describes a "C-HTTP" system for creating a closed, secure network over the Internet, anticipates the challenged claims. The system uses client-side and server-side proxies and a central "C-HTTP name server." Petitioner contended that an origin server in Kiuchi is associated with both a "secure name" (an unconventional hostname with a non-standard top-level domain, resolvable only by the C-HTTP server) and an "unsecured name" (a conventional domain name resolvable by public DNS). The C-HTTP name server functions as the claimed "secure name service." It receives a request for the secure name and returns the IP address and public key needed to automatically establish an encrypted connection between the proxies, thereby anticipating the claimed method.
Additional Grounds: Petitioner asserted additional obviousness challenges based on Beser in view of Kiuchi and Beser in view of RFC 2543, relying on similar theories of combining known networking and security components to achieve predictable results.

"secure name": Petitioner argued that, based on the patent's prosecution history, the broadest reasonable interpretation of this term is a "non-standard domain name that cannot be resolved by a conventional domain name server." This construction was central to the invalidity arguments, as it allowed non-traditional identifiers from the prior art (e.g., phone numbers in Beser, non-standard hostnames in Kiuchi) to satisfy this key claim limitation.
"secure communication link": Petitioner contended this term, which the patent equates to a VPN, should be interpreted broadly to mean a link where communication is secure and anonymous, but where the transferred data is not necessarily encrypted. This construction supported the primary anticipation argument against Beser, which suggests but does not mandate encryption for all traffic, and set up the alternative obviousness ground with RFC 2401 to address the encryption element explicitly.
"secure name service": Consistent with its position on "secure name," Petitioner argued this term should be construed as "a service that can resolve network addresses for a secure name for which a conventional name service cannot resolve addresses." This construction allowed Petitioner to map the functionality of the trusted-third-party devices in Beser and Kiuchi to the claims.

Petitioner requests institution of an inter partes review and cancellation of claims 1-29 of the ’181 patent as unpatentable.