PTAB

IPR2015-00185

Apple Inc v. VirnetX Inc

Key Events

Petition

petition Intelligence

Case #: IPR2015-00185
Patent #: 7921211
Filed: October 31, 2014
Petitioner(s): Apple Inc.
Patent Owner(s): VirnetX, Inc. and Science Application International Corporation
Challenged Claims: 1-2, 5-6, 14-17, 19-23, 26-41, 43-47, 50-60

Title: Agile Network Protocol for Secure Communications Using Secure Domain Names
Brief Description: The ’211 patent describes a domain name service (DNS) system for establishing secure communication links. The system is configured to receive a query for a network address and, in response, indicate whether the system supports establishing a secure link, thereby allowing a client computer to differentiate between secure and insecure destinations before initiating a connection.

Prior Art Relied Upon: Kiuchi (a 1996 IEEE publication titled “C-HTTP – The Development of a Secure, Closed HTTP-based Network on the Internet”).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Kiuchi’s “C-HTTP” system disclosed every limitation of the challenged claims. This system created a secure network for a closed group of institutions over the public internet using client-side and server-side proxies managed by a central “C-HTTP name server.” Petitioner asserted that this combination of proxies and the name server constituted the claimed “domain name service system.” In Kiuchi’s system, a client-side proxy sends a query containing a hostname to the C-HTTP name server. The server determines if the hostname belongs to a server within the secure network. If it does, the name server returns an IP address and security credentials (e.g., a public key) for the corresponding server-side proxy. If it does not, the server returns an error message. Petitioner contended that this differential response—returning connection information versus an error—functioned as the claimed “indication” of whether the system supports establishing a secure communication link. For dependent claims, Petitioner mapped features like cryptographic authentication (claim 5) to Kiuchi’s use of digital signatures to certify requests between the proxy and the name server.

Prior Art Relied Upon: Kiuchi (a 1996 IEEE publication) and RFC 1034 (an IETF publication from 1987 describing DNS concepts and facilities).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that to the extent Kiuchi was found not to explicitly disclose a “domain name database” as required by these dependent claims, RFC 1034 supplied the missing element. RFC 1034, a foundational document on DNS architecture, explicitly teaches that name servers act as repositories for a “domain database” that stores domain names and corresponding network addresses in a structured manner.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings of RFC 1034 with Kiuchi’s system to improve efficiency. Petitioner argued that using a structured database, as taught by RFC 1034, is a fundamental and well-known design choice for managing the large number of domain names and IP addresses in a network system like Kiuchi’s, as it allows for faster and more efficient data storage and retrieval than an unstructured file.
- Expectation of Success: The combination would have yielded predictable results, as implementing a name server using a structured database was a standard and routine practice in network engineering at the time.

Prior Art Relied Upon: Kiuchi (a 1996 IEEE publication) and RFC 2660 (an IETF publication from 1996 describing the Secure HTTP protocol).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that if the claim limitation of a secure link “between a first location and a second location” were interpreted to require a true end-to-end encrypted channel (from the end-user agent to the origin server) rather than just a secure link between intermediate proxies, this combination would render the claims obvious. While Kiuchi provided a secure link between its proxies, RFC 2660 taught Secure HTTP (S-HTTP), a protocol providing end-to-end security directly between an HTTP client and server.
- Motivation to Combine: A POSITA would have been motivated to integrate S-HTTP into Kiuchi's system because Kiuchi itself explicitly states its protocol can "co-exist with" other secure HTTP proposals to "assure end-to-end or individual security." This provided a clear reason to look to known protocols like S-HTTP to achieve the exact benefit described in Kiuchi.
- Expectation of Success: A POSITA would have had a high expectation of success because S-HTTP was designed to be compatible with and integrated into HTTP-based systems like the one described by Kiuchi.
Additional Grounds: Petitioner asserted additional obviousness challenges based on Kiuchi in view of Lindblad (to add video services for claims 32 and 56).

"domain name service system": Petitioner argued this term should be construed broadly to encompass any system with the characteristics described in the claims, which could include one or more discrete computers or devices. This construction was important for mapping the distributed components of Kiuchi’s prior art system (e.g., client proxy, server proxy, and name server) to this single claim element.
"indicate/indicating": Petitioner contended this term should encompass any visible or non-visible message, signal, or even the resulting system behavior that informs the user about the availability of a secure link. This included the return of security credentials versus an error message, or the successful establishment of the secure link itself. This broad interpretation was critical to arguing that Kiuchi’s system provided the claimed "indication."

Petitioner filed this IPR with a motion for joinder to IPR2014-00615, an already-instituted review on the same patent involving the same primary prior art. Petitioner argued that this petition largely mirrored the instituted proceeding, adding only a single new ground against claim 5. It asserted that joinder would be efficient and would not impose an undue burden on the Board or Patent Owner, aligning with the purpose of the joinder provisions under 35 U.S.C. §315(c).

Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 5-6, 14-17, 19-23, 26-41, 43-47, and 50-60 as unpatentable.