PTAB

IPR2015-00187

Apple Inc v. VirnetX Inc

Log In
Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Establishment of a Secure Communications Link Based Domain Name (DNS) Request
  • Brief Description: The ’151 patent describes a system for securing internet communications. The system intercepts a Domain Name System (DNS) request from a client, determines if the request is for a secure server, and if so, automatically initiates an encrypted communication channel between the client and the secure server.

3. Grounds for Unpatentability

Ground 1: Anticipation over Kiuchi - Claims 1-2, 6-8, and 12-14 are anticipated under 35 U.S.C. §102 by Kiuchi.

  • Prior Art Relied Upon: Kiuchi (a printed publication from the 1996 Symposium on Network and Distributed Systems Security).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kiuchi’s secure communication system, called "C-HTTP," discloses every limitation of the challenged claims. Kiuchi’s "client-side proxy" was asserted to be the claimed "DNS proxy module" that intercepts a request from a user agent (the "client"). This proxy determines if the request corresponds to a secure server within its closed network by querying a "C-HTTP name server." If the request is for a non-secure server, Kiuchi’s proxy forwards the request to a standard public DNS. If the request corresponds to a secure server, the client-side proxy automatically initiates a secure, encrypted "C-HTTP connection" with a "server-side proxy," which functions as the claimed encrypted channel.
    • Key Aspects: Petitioner contended that Kiuchi’s disclosure of hiding the true IP address of the origin server behind a server-side proxy anticipates the limitations of dependent claims 6 and 12.

Ground 2: Obviousness over Kiuchi in view of RFC 2660 - Claims 1-2, 6-8, and 12-14 are obvious over Kiuchi in view of RFC 2660.

  • Prior Art Relied Upon: Kiuchi (a printed publication from the 1996 Symposium on Network and Distributed Systems Security) and RFC 2660 (a 1996 draft publication on Secure HTTP).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative, arguing that even if Kiuchi’s proxy-to-proxy connection was not considered a channel directly "between" the client and the end server, the combination with RFC 2660 would render the claims obvious. RFC 2660 taught the use of Secure HTTP (S-HTTP) to provide end-to-end secure transactions between a client and a server. Petitioner asserted that modifying Kiuchi’s system to use S-HTTP for communication between the user agent and origin server, instead of standard HTTP, would have been a simple and obvious design choice.
    • Motivation to Combine: Petitioner argued that Kiuchi provided the explicit motivation to combine. Kiuchi stated that its C-HTTP protocol could "co-exist with other secure HTTP compatible user agents and servers" to provide "both institutional and personal level security protection." Kiuchi specifically cited an early draft of RFC 2660 as an example of such a secure protocol.
    • Expectation of Success: A person of ordinary skill in the art (POSITA) would have had a high expectation of success in combining the teachings. The combination involved incorporating a known secure communication protocol (S-HTTP from RFC 2660) into Kiuchi’s framework to achieve the exact benefit—end-to-end encryption—that Kiuchi itself suggested.

4. Key Claim Construction Positions

Petitioner asserted that several terms should be construed according to their broadest reasonable interpretation, leveraging Patent Owner's prior assertions and the understanding of a POSITA.

  • "DNS Request": Petitioner argued this term should encompass "a request for a resource corresponding to a domain name." This construction allowed Petitioner to map Kiuchi’s disclosure of an HTTP request containing a hostname to this claim limitation.
  • "Automatically Initiating/Creating an Encrypted/Secure Channel": Petitioner proposed this means "initiating/creating the encrypted/secure channel without involvement of a user." This construction was crucial for mapping the automated proxy-to-proxy connection establishment in Kiuchi.
  • "Between [A] and [B]": Citing the Patent Owner’s contentions in prior litigation, Petitioner argued this term should be construed to cover an encrypted channel on the "public communication paths between the client and the secure server," regardless of whether the channel extends fully end-to-end. This interpretation supported the argument that Kiuchi’s encrypted proxy-to-proxy link met the limitation.

5. Key Technical Contentions (Beyond Claim Construction)

  • Effective Priority Date: A central contention was that the challenged claims of the ’151 patent are not entitled to a priority date earlier than February 15, 2000. Petitioner argued that key claim limitations, specifically those involving "DNS request," were first introduced in the application filed on that date. Because the earlier applications in the priority chain allegedly did not disclose or enable the subject matter involving DNS, Petitioner contended that the 1996 Kiuchi and RFC 2660 references were valid prior art under §102(b).

6. Arguments Regarding Discretionary Denial

  • To preemptively address the one-year statutory time bar under 35 U.S.C. §315(b), Petitioner filed a motion for joinder with an already-instituted inter partes review, IPR2014-00610, which involved the same patent and prior art. Petitioner argued that under §315(c), the time bar does not apply when a petition is accompanied by a motion for joinder.

7. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-2, 6-8, and 12-14 of the ’151 patent as unpatentable.