PTAB

IPR2015-01010

Apple Inc v. VirnetX Inc

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1. Case Identification

2. Patent Overview

  • Title: System and Method Employing an Agile Network Protocol for Secure Communications Using Secure Domain Names
  • Brief Description: The ’643 patent discloses methods for establishing a secure, encrypted communication link between two devices over a network. The technology focuses on a "One-Click" embodiment that enables the secure mode without requiring a user to enter cryptographic information, instead using a domain name resolution process to initiate the secure connection.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-9, 12, 14-24, 27, and 29-32 under 35 U.S.C. §102

  • Prior Art Relied Upon: Yeager & McGrath, Web Server Technology (“Yeager”).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Yeager, a 1996 book on web server technology, disclosed all limitations of the challenged claims. Yeager described establishing a secure connection using the HTTPS protocol with an SSL-enabled web browser. A user enables this secure mode simply by clicking an "https" hyperlink or a "secure submit" button, which does not require entering cryptographic information. The browser then automatically performs the subsequent steps: it parses the host name from the URL (an identifier), thereby "constructing" a domain name; it sends a query with this domain name to a DNS server and receives an IP address in response; and it uses this IP address to initiate an SSL handshake with the server, establishing the encrypted link. Petitioner mapped these known web functionalities directly to the method steps of independent claims 1 and 17.

Ground 2: Obviousness of Claims 1-9, 11-24 and 27-32 over Yeager in view of IE5 Resource Kit

  • Prior Art Relied Upon: Yeager, and Internet Explorer 5 Resource Kit (“IE5 Resource Kit”).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that, to the extent Yeager was found not to explicitly teach the "constructing a domain name based on an identifier" limitation, the combination with IE5 Resource Kit rendered it obvious. The IE5 Resource Kit described features in the Internet Explorer 5 browser, such as AutoComplete, which automatically adds prefixes (e.g., "http://www.") and suffixes (e.g., ".com") to user-entered text. It also described how IE5 could automatically append local domain names (e.g., ".company.com") to incomplete host names. Petitioner contended these features met the "constructing" limitation by generating a complete domain name from a partial user identifier.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Yeager's general description of an SSL-enabled browser with the specific, well-known implementation of Internet Explorer 5 described in the IE5 Resource Kit. The motivation was to use a known, feature-rich browser to implement Yeager’s standard secure communication system. This was presented as a simple and predictable substitution of one known element (a generic SSL browser) for another (the specific IE5 browser).
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved using a commercially available web browser to perform its intended and well-documented functions within a standard client-server architecture.

Ground 3: Obviousness of Claims 9 and 24 over Yeager in view of RFC 1034

  • Prior Art Relied Upon: Yeager, and RFC 1034 ("Domain Names – Concepts and Facilities").
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground specifically addressed dependent claims 9 and 24, which require receiving a "list of network addresses" in response to a DNS query. Petitioner argued that while Yeager teaches a standard DNS lookup, it does not explicitly state that a list is returned. RFC 1034, the foundational standard for DNS, explicitly taught that the standard response for a host-name-to-address translation request was a "multiple address return," allowing a single domain name to be associated with one or more IP addresses.
    • Motivation to Combine: A POSITA implementing the DNS lookup described in Yeager would have been motivated to consult the official DNS protocol standard, RFC 1034. A POSITA would have incorporated the recommended "multiple address return" feature to create a more robust and reliable system, for example, by enabling load balancing or redundancy.
    • Expectation of Success: Success was predictable because the combination involved implementing a recommended, standardized feature of the very protocol (DNS) that Yeager already employed.
  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 12 and 27 based on Yeager in view of Luotonen (CERN httpd Reference Manual), arguing that using the CERN proxy server taught by Luotonen would provide a method for replacing a non-secure domain name with a secure one.

4. Key Claim Construction Positions

  • "encrypted communication link": Petitioner argued this term should be construed as "a transmission path that restricts access to data, addresses, or other information on the path at least by using encryption." This construction was based on the specification and constructions of similar terms in related patents, and was central to mapping prior art SSL/HTTPS teachings to the claims.
  • "constructing a domain name": Petitioner proposed this term be given its plain and ordinary meaning. However, Petitioner also argued that this scope would encompass actions described in the prior art such as parsing a host name from a URL, or modifying user input by adding prefixes, suffixes, or top-level domains, which was critical to its obviousness arguments involving the IE5 Resource Kit.

5. Arguments Regarding Discretionary Denial

  • Petitioner noted the concurrent filing of a separate petition (IPR2015-01009) against the same ’643 patent. It argued that both petitions should be instituted because each advanced unique grounds based on different primary references and relied on different features of secondary references. Petitioner asserted the petitions presented "distinct and non-redundant grounds," warranting independent institution of trial for each.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-9, 12-24, and 27-32 of the ’643 patent as unpatentable.