PTAB

IPR2014-00618

Microsoft Corp 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 ’211 patent discloses a domain name service system for establishing secure communications. The system is configured to connect to a network, store domain names and corresponding network addresses, receive a query for a network address, and indicate in response whether the system supports establishing a secure communication link.

3. Grounds for Unpatentability

Ground 1: Anticipation Under §102 - Claims 1-2, 6, 14-17, 19-23, 26-28, 33-41, 43-47, 50-52, and 57-60 are anticipated by Provino.

  • Prior Art Relied Upon: Provino (Patent 6,557,037).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Provino discloses every limitation of the challenged claims, including those in independent claims 1, 36, and 60. Provino describes a system for establishing secure communications between a remote client device and a Virtual Private Network (VPN). Petitioner asserted that Provino’s combination of a standard nameserver (17), a firewall (30), and a VPN nameserver (32) collectively constitutes the claimed "domain name service system." This system connects to the Internet, stores "human-readable Internet addresses" (domain names) and corresponding "integer Internet addresses" (network addresses), and receives queries for those addresses. Critically, Petitioner argued that Provino’s system "indicates" its support for a secure link when, in response to a query, the standard nameserver provides the network address of the firewall, enabling the client to initiate a secure tunnel. The successful establishment of this encrypted tunnel was argued to be the claimed "secure communication link."

Ground 2: Obviousness Under §103 - Claims 20, 21, 35, 44, 45, and 59 are obvious over Provino in view of RFC 1034.

  • Prior Art Relied Upon: Provino (Patent 6,557,037) and RFC 1034 (“Domain Names – Concepts and Facilities,” Nov. 1987).
  • Core Argument for this Ground:
    • Prior Art Mapping: These claims add the limitation of a "domain name database." Petitioner argued that while Provino’s nameservers inherently require a database to function, RFC 1034 explicitly discloses the foundational structure of the Domain Name System (DNS), teaching that name servers are repositories of information that make up the "domain database."
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would have been motivated to implement the nameservers in Provino using the standard database structure taught by RFC 1034. Using a structured database allows for fast, efficient storage and searching of the large number of domain names and IP addresses required for a functional system, which is a more effective solution than alternatives like a flat text file.
    • Expectation of Success: Because RFC 1034 provides the standard for DNS architecture, a POSITA would have a high expectation of success in applying its teachings to the nameservers described in Provino.

Ground 3: Obviousness Under §103 - Claims 29-32 and 53-56 are obvious over Provino in view of Kosiur.

  • Prior Art Relied Upon: Provino (Patent 6,557,037) and Kosiur ("Building and Managing Virtual Private Networks," 1998).

  • Core Argument for this Ground:

    • Prior Art Mapping: These claims require that the secure communication link be capable of supporting a "plurality of services," including applications like video conferencing, email, audio, and video. While Provino describes a secure VPN, Kosiur teaches that by 1998, it was common for VPNs to be configured to support a wide variety of applications and services, including interactive multimedia, IP telephony, file transfers, and e-mail.
    • Motivation to Combine: A POSITA would combine these teachings to improve the utility of Provino’s system. Kosiur explained that supporting such services was essential for increasing the mobility and productivity of remote employees, which was the exact user base for the system in Provino. Therefore, configuring Provino’s VPN to support the services described in Kosiur would have been an obvious and desirable modification to increase its commercial value and effectiveness.
    • Expectation of Success: Kosiur described that VPNs were already commonly configured to support these services, demonstrating that the technology was well-understood and its implementation in a system like Provino’s would have been straightforward.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) for claims 16, 27, 33, 40, 51, and 57 over Provino in view of RFC 2660, arguing that if the patent owner contended Provino’s secure tunnel was not a true end-to-end link, RFC 2660’s teachings on the Secure HTTP (S-HTTP) protocol would have made it obvious to implement end-to-end encryption.

4. Key Claim Construction Positions

  • "Domain name service system": Petitioner argued for a broad construction that encompasses any system performing the claimed functions, whether it is a single device or multiple discrete components working together. This construction was necessary to argue that Provino's standard nameserver, firewall, and VPN nameserver collectively meet the limitation.
  • "Indicate / indicating": Petitioner advocated for a broad interpretation where the term includes any visible or non-visible message or signal that the system supports establishing a secure link. This could be the act of returning a firewall's address (which enables security) or the successful establishment of the link itself, rather than requiring an explicit flag or message.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-2, 6, 14-17, 19-23, 26-41, 43-47, and 50-60 of the ’211 patent as unpatentable.