VirnetX Inc. et al v. Apple Inc., No. 6:2012cv00855 - Document 180 (E.D. Tex. 2014)
Court Description: MEMORANDUM OPINION AND ORDER. The Court interprets the claim language in this case in the manner set forth in this Order. The Court DENIES Apple's Motion for Summary Judgment of Indefiniteness 148 . Signed by Judge Leonard Davis on 08/08/14. (mll, )
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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION VIRNETX INC. and SCIENCE § APPLICATIONS INTERNATIONAL § § CORPORATION, § Plaintiffs, § § vs. § § APPLE, INC., § § Defendant. § CASE NO. 6:12-CV-855 MEMORANDUM OPINION AND ORDER This Memorandum Opinion construes the disputed claim terms in U.S. Patent Nos. 6,502,135 ( the 135 Patent ), 7,418,504 ( the 504 Patent ), 7,490,151 ( the 151 Patent ), 7,921,211 ( the 211 Patent ), 8,051,181 ( the 181 Patent ), and 8,504,697 ( the 697 Patent ) (collectively, the patents-in-suit ). Also before the Court is Defendant Apple, Inc. s ( Apple ) Motion for Summary Judgment of Indefiniteness (Docket No. 148). On May 20, 2014, the parties presented arguments on the disputed claim terms at a Markman hearing. For the reasons stated herein, the Court adopts the constructions set forth below and DENIES the Motion for Summary Judgment. BACKGROUND VirnetX, Inc. ( VirnetX ) and Science Applications International Corporation ( SAIC ) assert six patents against Apple. The 135 Patent discloses a method of transparently creating a virtual private network ( VPN ) between a client computer and a target computer. The 504 and 211 Patents disclose a secure domain name service. The 151 Patent discloses a domain name service capable of handling both standard and non-standard domain name service queries. The 181 Patent discloses a method of establishing a secure communication link. The 697 Patent discloses a method of communicating between network devices. The patents-in-suit are all related; Application No. 09/504,783 ( the 783 Application ) is an ancestor application for every patent-in-suit. The 135 Patent issued on December 31, 2002, from the 783 Application. The 151 Patent issued from a divisional of the 783 Application. The 181 Patent issued from a divisional of a continuation-in-part of the 783 Application. The 504 Patent issued from a continuation of a continuation-in-part of the 783 Application. The 211 Patent issued from a continuation of the application that resulted in the 504 patent. The 697 Patent issued from a continuation of a continuation of the application that resulted in the 211 Patent. The 135 and 151 Patents share a common specification, as do the 504, 211, and 697 Patents. The Court has already construed some of the terms at issue. See VirnetX, Inc. v. Microsoft Corp., No. 6:07-cv-80, Docket No. 246 (E.D. Tex. July 30, 2009) ( Microsoft ); VirnetX, Inc. v. Cisco Systems, Inc., et al., No. 6:10-cv-417, Docket No. 266 (E.D. Tex. Apr. 25, 2012) ( Cisco ); VirnetX, Inc. v. Mitel Networks Corporation, et al., No. 6:11-cv-18, Docket No. 307 (E.D. Tex. Aug. 1, 2012) ( Mitel ). The Microsoft case involved the 135 Patent; the Cisco case involved the 135, 504, 151, and 211 Patents; and the Mitel case involved the 135, 504, and 211 Patents. APPLICABLE LAW It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). In claim construction, courts examine the patent s intrinsic evidence to define the patented invention s scope. See id.; C.R. Bard, Inc. v. U.S. 2 Surgical Corp., 388 F.3d 858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc ns Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). This intrinsic evidence includes the claims themselves, the specification, and the prosecution history. See Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at 861. Courts give claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in the art at the time of the invention in the context of the entire patent. Phillips, 415 F.3d at 1312 13; Alloc, Inc. v. Int l Trade Comm n, 342 F.3d 1361, 1368 (Fed. Cir. 2003). The claims themselves provide substantial guidance in determining the meaning of particular claim terms. Phillips, 415 F.3d at 1314. First, a term s context in the asserted claim can be very instructive. Id. Other asserted or unasserted claims can also aid in determining the claim s meaning because claim terms are typically used consistently throughout the patent. Id. Differences among the claim terms can also assist in understanding a term s meaning. Id. For example, when a dependent claim adds a limitation to an independent claim, it is presumed that the independent claim does not include the limitation. Id. at 1314 15. [C]laims must be read in view of the specification, of which they are a part. Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); see also Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). This is true because a patentee may define his own terms, give a claim term a different meaning than the term would otherwise possess, or disclaim or disavow the claim scope. Phillips, 415 F.3d at 1316. In these situations, the inventor s lexicography governs. Id. Also, the specification may resolve ambiguous claim 3 terms where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone. Teleflex, Inc., 299 F.3d at 1325. But, [a]lthough the specification may aid the court in interpreting the meaning of disputed claim language, particular embodiments and examples appearing in the specification will not generally be read into the claims. Comark Commc ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. The prosecution history is another tool to supply the proper context for claim construction because a patent applicant may also define a term in prosecuting the patent. Home Diagnostics, Inc., v. Lifescan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004) ( As in the case of the specification, a patent applicant may define a term in prosecuting a patent. ). Although extrinsic evidence can be useful, it is less significant than the intrinsic record in determining the legally operative meaning of claim language. Phillips, 415 F.3d at 1317 (quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but technical dictionaries and treatises may provide definitions that are too broad or may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony may aid a court in understanding the underlying technology and determining the particular meaning of a term in the pertinent field, but an expert s conclusory, unsupported assertions as to a term s definition is entirely unhelpful to a court. Id. Generally, extrinsic evidence is less reliable than the patent and its prosecution history in determining how to read claim terms. Id. 4 Apple also contends that some claims at issue are invalid for indefiniteness. A claim is invalid under 35 U.S.C. § 112 ¶ 2 if it fails to particularly point out and distinctly claim the subject matter that the applicant regards as the invention. The party seeking to invalidate a claim under 35 U.S.C. § 112 ¶ 2 as indefinite must show by clear and convincing evidence that the claim, viewed in light of the specification and prosecution history, does not inform those skilled in the art about the scope of the invention with reasonable certainty. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129, 2130 n.10 (2014); see Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1319 (Fed. Cir. 2003). LEVEL OF ORDINARY SKILL IN THE ART The parties agree that a person of ordinary skill in the art would have a master s degree in computer science or computer engineering as well as two years of experience in computer networking and computer network security. AGREED CLAIM TERMS In the Joint Claim Construction Chart (Docket No. 113-1, Ex. A) the parties agreed to the construction of the following terms: Claim Term secure target web site automatically initiating the VPN DNS proxy server automatically initiating an encrypted channel automatically creating a secure channel automatically creating an encrypted channel secure server Agreed Construction a secure web site on the target computer initiating the VPN without involvement of a user a computer or program that responds to a domain name inquiry in place of a DNS initiating the encrypted channel without involvement of a user creating the secure channel without involvement of a user creating the encrypted channel without involvement of a user a server that requires authorization for access and that can communicate in an encrypted channel 5 DISPUTED CLAIM TERMS virtual private network (VPN) Claims 1, 4 7, and 9 13 of the 135 Patent contain the term virtual private network or VPN. VirnetX proposes a network of computers which privately and directly communicate with each other by encrypting traffic on insecure communication paths between the computers. Apple proposes a network of computers which privately and directly communicate with each other by encrypting traffic on insecure paths between the computers where the communication is both secure and anonymous. The Court previously construed this term in Microsoft, Cisco, and Mitel. The parties dispute whether the Court s construction should require the VPN to be both secure and anonymous. Particularly, the parties dispute the anonymity requirement. Apple asserts that a VPN requires anonymity1 and proposes the construction this Court adopted in Cisco and Mitel, which included an anonymity requirement. 2 VirnetX argues that anonymity is not required and proposes the construction this Court adopted in Microsoft, which did not include an anonymity requirement. 3 However, the Court s claim construction order in Microsoft made clear that this term requires anonymity, even though the Court did not include the anonymity requirement in its construction. See Microsoft, Docket No. 246 at 9 ( [T]he Court construes virtual private network as requiring both data security and anonymity. ). For clarity, 1 At the hearing, VirnetX asked Apple to clarify its position regarding anonymity. Apple explained that it contends anonymity is within the ordinary meaning of VPN, not that the inventors redefined VPN to add an anonymity requirement. Docket No. 174 at 30:5 14. Apple further clarified that it does not assert the inventors disavowed the full scope of VPN as known to persons of ordinary skill in the art. Id. at 33:3 5. Finally, Apple stated its position is that an IPSec VPN achieves anonymity. Id. at 38:8 13. 2 In Cisco and Mitel, the Court construed virtual private network as a network of computers which privately and directly communicate with each other by encrypting traffic on insecure paths between the computers where the communication is both secure and anonymous. Cisco, Docket No. 266 at 5 8; Mitel, Docket No. 307 at 4 6. 3 In Microsoft, the Court construed virtual private network as a network of computers which privately communicate with each other by encrypting traffic on insecure communication paths between the computers. Microsoft, Docket No. 246 at 4 10. 6 the Court explicitly added the anonymity requirement to its later constructions of this term in Cisco and Mitel. See, e.g., Cisco, Docket No. 266 at 5. The Court hereby incorporates by reference its reasoning in Microsoft. For the reasons stated in Microsoft and adopted in Cisco and Mitel, the Court finds that a virtual private network requires anonymity. See Microsoft, Docket No. 246 at 8 9. For clarity, this requirement is explicitly included in the Court s construction in this case. See Cisco, Docket No. 266 at 5. If the Court rejects its position, VirnetX requests the Court to clarify the scope of the anonymity required by the Court s construction. First, it asks the Court to clarify that anonymity is broader than that achieved by the IP-hopping embodiments of the 135 Patent, and is achieved by a tunneled, encrypted VPN. At the hearing, Apple agreed that anonymity is not limited to that achieved by the IP-hopping embodiments of the patent. Docket No. 174 at 42:12 15. It also stated that a tunneled, encrypted VPN can but does not necessarily achieve anonymity. Id. at 41:25 42:4; see id. at 38:21 39:7 (providing an example in which a tunneled, encrypted VPN would not be anonymous). Accordingly, the Court clarifies that anonymity is not limited to that achieved by the IP-hopping embodiments of the 135 Patent, and can be achieved by a tunneled, encrypted VPN. Second, VirnetX requests the Court to clarify that anonymity is achieved by VPNs known to persons of ordinary skill at the time of the invention. According to VirnetX, since Apple claims anonymity is part of the ordinary meaning of VPN, by definition VPNs must achieve anonymity. However, the Court s conclusion that virtual private networks require anonymity is based on intrinsic evidence in the specification. See Microsoft, Docket No. 246 at 8 9. Accordingly, whether a certain VPN achieves anonymity as defined in the patent is a question of infringement for the finder of fact. 7 For the reasons stated in Microsoft and Cisco and subject to the above clarifications, the Court construes virtual private network as a network of computers which privately and directly communicate with each other by encrypting traffic on insecure paths between the computers where the communication is both secure and anonymous. generating from the client computer a Domain Name Service (DNS) request Claim 1 of the 135 Patent contains the term generating from the client computer a Domain Name Service (DNS) request. VirnetX argues that no construction is necessary. Apple proposes generating and transmitting from the client computer a DNS request. The Court previously construed this term in Cisco as generating and transmitting from the client computer a DNS request. Cisco, Docket No. 266 at 27. This term appears in the first step of the method recited in claim 1 of the 135 Patent. In that first step, a domain name service ( DNS ) request is generated from the client computer. The second step determines whether the DNS request seeks access to a secure web site. VirnetX expressed concern that Apple would use its proposed construction of this term to argue that the second step cannot be performed by the client computer, but only by a separate device. At the hearing, Apple stated it will not make that argument. VirnetX then agreed to Apple s proposed construction. The Court adopts the parties agreed construction and construes generating from the client computer a Domain Name Service (DNS) request as generating and transmitting from the client computer a DNS request. an indication that the domain name service system supports establishing a secure communication link Claims 1, 17, 24, 36, 48, and 60 of the 504 Patent contain the term an indication that the domain name service system supports establishing a secure communication link. VirnetX argues that no construction is necessary, but alternatively proposes an indication that the 8 domain name service system has authorized and supports establishing a secure communication link. Apple proposes an affirmative signal beyond the mere returning of an IP address, public key, digital signature, or certificate that the domain name service system supports establishing a secure communication link. The parties dispute the meaning of an indication. In Mitel, the Court determined that this term did not require construction. Mitel, Docket No. 307 at 10. VirnetX argues that if the Court construes this term, it should clarify that an indication means that authorization is being given to establish a secure communication link. Docket No. 136 at 9. VirnetX points to a description in the specification allowing only authorized users to access a VPN. Id. at 9 10. It also argues that the specification disparages conventional domain name services ( DNS ) for not differentiating between authorized and unauthorized users. Id. at 10. However, the specification s preferred embodiments and characterizations of the prior art do not impose an authorization limitation into the claims. Such an authorization requirement is absent from the claims as drafted. Thus, the inclusion of an authorization requirement is improper. Apple s proposed construction tracks disclaimers that it alleges occurred during reexamination of the 504 Patent, which occurred after the Court issued its claim construction order in Mitel. Apple states that during the reexamination, the PTO rejected the relevant claims because the claimed indicate and indicating limitations were met in the prior art through the return of digital certificates, encryption keys, and addresses in response to a request for a secure DNS. Docket No. 150 at 10. Apple explains that in response to this rejection, the patentees disputed that any of those prior art features met the claimed indication limitations, thereby disclaiming those items from the scope of the term indication. Id. VirnetX replies that Apple 9 misreads reexamination remarks made to distinguish conventional DNS servers, and argues there were no disclaimers. Docket No. 136 at 10 11. In response to the rejection during reexamination, the patentees argued: the [rejection] applies a much broader construction of indication that encompasses features that neither indicate that the domain name service system supports establishing a secure communication link nor are visible to any users, such as merely returning an IP address, a public key, or a certificate demonstrating authenticity of the source of the public key. Docket No. 150-14, Ex. 13 at 5. The patentees continued, [t]he 504 patent specification clearly and unequivocally disclaims merely returning an address or a public key by describing these actions as conventional in the prior art . . . . Id., Ex. 13 at 6. They further stated, [n]ever does the specification equate the mere return of requested DNS records, such as an IP address or key certificate, with supporting secure communications. Id., Ex. 13 at 6. In this response, the patentees clearly distinguished the mere return of requested DNS records, such as an IP address or key certificate, the claimed indication terms. Thus, the reexamination response constitutes an unequivocal disclaimer of DNS servers that only return requested DNS records, such as an IP address or key certificate. Accordingly, the Court construes an indication that the domain name service system supports establishing a secure communication link as an indication other than merely returning of requested DNS records, such as an IP address or key certificate, that the domain name service system supports establishing a secure communication link. indicate in response to the query whether the domain name service system supports establishing a secure communication link Claim 1 of the 211 Patent contains the term indicate in response to the query whether the domain name service system supports establishing a secure communications link. VirnetX argues that no construction is necessary, but alternatively proposes indicate in response to the 10 query whether the domain name service system has authorized and supports establishing a secure communication link. Apple proposes in response to the query for a network address, affirmatively signaling beyond the mere returning of an IP address, public key, digital signature, or certificate that the domain name service system supports establishing a secure communication link. In Mitel, the Court determined that this term did not require construction. Mitel, Docket No. 307 at 11. The issue and arguments regarding this term are identical to those raised for the previous term. Namely, VirnetX s response to a rejection during reexamination of the 211 Patent, which contains this term, is identical in relevant respects to the response to a rejection of the 504 Patent quoted above. See Docket No. 150-15, Ex. 14 at 5 6. Further, the parties briefed this term together with the previous term. For the same reasons stated regarding the previous term, the Court construes an indication that the domain name service system supports establishing a secure communication link as indicate in response to the query, other than the mere returning of requested DNS records, such as an IP address or key certificate, that the domain name service system supports establishing a secure communication link. intercept / intercepting Claims 1, 10, 15, 16, 29, and 30 of the 697 Patent contain the term intercept or intercepting. VirnetX argues no construction is necessary. Apple proposes access/accessing a communication addressed to another. At the hearing, the parties agreed that this term does not require construction, with the understanding that intercepting must mean more than simply receiving. The Court adopts the parties agreement and clarifies that intercepting means more than simply receiving. Given that clarification, the Court finds that intercept / intercepting does not require construction. 11 [intercept / intercepting] . . . a request to look up an internet protocol (IP) address Claims 1 and 16 of the 697 Patent contain the term [intercept / intercepting] . . . a request to look up an internet protocol (IP) address. VirnetX argues no construction is necessary, but alternatively proposes receiving a request to look up an IP address and performing some evaluation on the request that is not merely resolving the request. Apple argues no construction is necessary beyond the construction of intercept and intercepting. The issue and arguments regarding this term are identical to those raised for the previous term. Further, the parties briefed this term together with the previous term. For the same reasons stated regarding the previous term, the Court clarifies that intercepting means more than simply receiving. Given that clarification, the Court finds that [intercept / intercepting] . . . a request to look up an internet protocol (IP) address does not require construction. [determine/determining] . . . is available for a secure communications service Claims 1, 14, and 16 of the 697 Patent contain the term [determine/determining] . . . is available for a secure communications service. VirnetX argues no construction is necessary. Apple proposes determine/determining whether a device is available to establish a secure communication link. VirnetX complains that Apple s proposed construction impermissibly changes the claim language from available for a secure communications service to available to establish a secure communication link. Docket No. 136 at 15. Apple defends its construction, claiming that the secure communication link is used only after the second device is available for a secure communication service. Docket No. 150 at 19 20. It asserts that, therefore, determining that a device is available for a secure communications service requires a determination that the device is available to establish a secure communications link. Id. Apple also cites the 12 specification in support of its construction, claiming that it equates the secure communications service to the establishment and use of a secure communication link. Id. at 20. The term secure communications service is found in the abstract, the summary of the invention, and the claims. In each instance, its availability is the basis for initiating a secure communication link. See 697 Patent, abstract (explaining that the invention is configured to initiate a secure communication link between the first network device and the second network device based on a determination that the second network device is available for the secure communications service ); accord id. at cols. 8:16 20, 8:33 36; id., claims 1, 16. Thus, the patent describes that to be available for a secure communications service is to be available to establish a secure communication link. The Court construes [determine/determining] . . . is available for a secure communications service as determine/determining whether a device is available to establish a secure communication link. domain name lookup Claims 14 and 28 of the 697 Patent contain the term domain name lookup. VirnetX argues no construction is necessary. Apple proposes a lookup service that returns an IP address for a requested domain name to the requester. The parties dispute whether domain name lookup requires the return of an IP address. VirnetX contends that the claims only require looking up a domain name not also returning an IP address. Docket No. 136 at 16; Docket No. 152 at 8. It argues that requiring the return of an IP address would exclude a preferred embodiment that does not return the true IP address, but sets up a VPN instead. Docket No. 136 at 16. Apple disputes that contention, arguing that an IP address is returned even when a VPN is established. Docket No. 150 at 22. 13 A domain name lookup performs the second step in claimed methods of connecting network devices. 697 Patent, claims 1, 14, 16, 28. The specification discloses the return of an IP address after the first step intercepting a request to look up the second device s IP address but before the third step initiating a secure communication link between the two devices. See id. at cols. 39:32 38, 40:31 49. Thus, an IP address must be returned during the second step, which is performed by a domain name lookup. While VirnetX contends an IP address need not be returned, in the example actually cited by VirnetX, a DNS Proxy returns an IP address to the requestor. Cisco, Docket No. 266 at 15. Thus, adopting Apple s construction would not exclude a preferred embodiment. Accordingly, the Court construes domain name lookup as a lookup service that returns an IP address for a requested domain name to the requester. secure name service Claims 2, 22, and 28 of the 181 Patent contain the term secure name service. VirnetX proposes a lookup service that returns a network address for a requested secure name and facilitates establishing a secure communication link based on a secure name. Apple proposes that the term is indefinite. Apple argues that the intrinsic record lacks guidance as to how one of ordinary skill would construe secure name service, which was coined by the patentees. Docket No. 148 at 9. It states that the term was added to the claims to replace the term name service, which had been rejected as indefinite by the PTO. Id. at 14. Apple contends that secure name service is indefinite because the patentees definition of the term during reexamination relied on another term that Apple asserts is indefinite, secure name. Id. 14 As explained below, Apple has not met its burden to show that the term secure name is indefinite. See infra pp. 16 17. Thus, Apple s argument that secure name service is indefinite because it depends on the definition of secure name fails. Regarding construction, VirnetX argues that a secure domain name service described in the specification is the preferred embodiment of a secure name service. Docket No. 136 at 16. First, it asserts that, like the embodiment, the claimed secure name service returns a network address. Id. However, it contends that the embodiment is not limiting. Thus, it contends that, unlike the embodiment, the network address returned is not required to be secure. Id. at 17. Second, VirnetX maintains that, like the embodiment, the claimed secure name service must facilitate establishing a secure communication link. Id. Contrary to VirnetX s argument, the specification s disclosure of a secure domain name service is not merely a preferred, non-limiting embodiment it is the only embodiment. It presents the only objective measure to determine the scope of the claims using secure name service. Consistent with the Court s previous construction of secure domain name service, the returned network address must be secure. See Microsoft, Docket No. 246 at 31 32; Cisco, Docket No. 266 at 17 19. Further, VirnetX s proposal requiring the secure name service to facilitate establishing a secure communication link adds a functional limitation that does not help define the term. It is thus rejected. The Court construes secure name service as a lookup service that returns a secure network address for a requested secure name. Apple s Motion for summary judgment that this term is indefinite is DENIED. 15 secure name Claims 1, 2, 3, 5, 8, 10, 11, 22, 23, and 24 29 of the 181 Patent contain the term secure name. VirnetX proposes an authenticated name that can be resolved by a secure name service and can be used for establishing a secure communication link. Apple proposes that the term is indefinite. Like the previous term, Apple argues that the intrinsic record lacks guidance as to how one of ordinary skill would construe secure name, which was coined by the patentees. Docket No. 148 at 9. It states that in response to an indefiniteness rejection regarding secure name during prosecution, the patentees only provided non-limiting examples to define the term. Id. at 9 10. Apple further notes that dependent claim 3 of the 181 Patent specifies that the secure name in claim 2 be a secure domain name. Id. at 11. Thus, it argues, secure name must encompass something more than a secure domain name, which is disclosed in the specification and has been construed by the Court. Id. VirnetX states that in response to the indefiniteness rejection of secure name, the patentees not only provided examples, but also explained the term. Docket No. 156 at 5. It argues that the examiner s subsequent withdrawal of the indefiniteness rejection is evidence that one of ordinary skill would understand the term s scope. Id. at 6. That scope, it asserts, is that a secure name is analogous to a secure domain name, but not so limited. Id. Secure name does not appear in the specification of the 181 Patent. Therefore, the claims and prosecution history comprise the relevant intrinsic evidence regarding this term. Dependent claim 3 of the 181 Patent recites, [t]he method according to claim 2, wherein the secure name of the second device is a secure domain name. Thus, secure name must encompass something more than a secure domain name. 16 In response to the indefiniteness rejection regarding secure name, the patentees confirmed that [t]he claimed secure name includes, but is not limited to, a secure domain name. Docket No. 148-8, Ex. 7 at 9. That response also provided two examples of the term: For example, a secure name can be a secure non-standard domain name, such as a secure nonstandard top-level domain name (e.g., .scorn) or a telephone number. Id., Ex. 7 at 9. Further, the patentees response explained the meaning of the term: [A] secure name is a name associated with a network address of a first device. The name can be registered such that a second device can obtain the network address associated with the first device from a secure name registry and send a message to the first device. The first device can then send a secure message to the second device. Id., Ex. 7 at 9. Apple s briefing does not address this explanatory passage. E.g., Docket No. 148 at 10 (asserting that, [i]n responding to the indefiniteness rejection, rather than attempt to define the term, VirnetX simply gave two examples of what it considered to be secure names ). Therefore, Apple does not address how the passage fails to define the term or to differentiate a secure name from a secure domain name. Apple has thus not met its burden of showing by clear and convincing evidence that the term is indefinite. Regarding construction, VirnetX advances the same arguments for this term as it did for the previous term, secure name service. Docket No. 136 at 18. In addition, it argues that the secure name is authenticated because the specification and file history teach that the secure name can be registered. Id. at 18 19. Apple disputes that a secure name is authenticated. Apple argues that the 181 Patent does not require domain names to be registered, or even contain the phrase authenticated name. Docket No. 150 at 29. VirnetX s proposed construction is unsupported. Its requirement that a secure name can be used for establishing a secure communication link does not define what the term means and 17 is rejected. Similarly, the specification does not support the proposed construction s authentication requirement. A secure name is not required to be authenticated simply because it is able to be registered. The phrase resolved by is vague and introduces an ambiguous concept. Accordingly, the Court interprets this term in light of the patentees explanation of the term to the PTO. The Court construes secure name as a name corresponding to a secure network address. Apple s motion for summary judgment that this term is indefinite is DENIED. unsecured name Claims 1, 26, and 27 of the 181 Patent contain the term unsecured name. VirnetX proposes a name that can be resolved by a conventional name service. Apple proposes that the term is indefinite. Apple advances the same indefiniteness arguments for this term as for the previous term. Apple s indefiniteness arguments for this term fail for the same reasons stated regarding the previous term. Further, Apple disputes the use of the phrase conventional name service in VirnetX s proposed construction. Docket No. 150 at 30. It argues that the 181 Patent does not use that phrase or provide guidance as to how one of ordinary skill would differentiate conventional from unconventional in this context. Id. Apple also criticizes that under VirnetX s proposed construction, the definition of unsecured name overlaps with the definition of secure name. Id. at 28. That is, it challenges VirnetX s assertion that a conventional name service can resolve secure names, not just unsecured names. To support the inclusion of conventional name service in the construction, VirnetX cites a portion of the specification that discloses an unsecured name that is registered with 18 conventional domain name services. Docket No. 136 at 19 (citing 181 Patent at col. 52:50 58). VirnetX further explains that the specification does not require secure names and unsecured names to be mutually exclusive. Docket No. 152 at 8. It points to an embodiment claiming a non-standard secure name that conventional domain services cannot resolve. Docket No. 136 at 19 (citing 181 Patent, claim 23). It argues that since not all secure names are non-standard, the patent does not foreclose the possibility that a conventional name service can resolve secure names, not just unsecured names. Id. As noted with regard to the previous term, the phrase resolved by in VirnetX s proposed construction is vague and introduces an ambiguous concept. Thus, VirnetX s proposed construction is rejected. Further, the ordinary relationship between unsecured name and secure name is that the terms are opposites. VirnetX s cited embodiment accords with this ordinary relationship; it does not evidence a departure from it. VirnetX provides no evidence that the patentee redefined secure names and unsecure names to overlap. Therefore, one of ordinary skill in the art would interpret unsecured name and secured name to be mutually exclusive. Accordingly, the Court construes unsecured name as a name corresponding to an unsecured network address. Given that this construction defines the scope of the term, it is not indefinite. Apple s Motion for summary judgment that this term is indefinite is DENIED. securely communicate Claims 1, 24, 26, and 29 of the 181 Patent contain the term securely communicate. VirnetX argues that no construction is necessary, but alternatively proposes communicate with data security. Apple proposes send a message over a secure communication link. Apple states that the specification only refers to sending messages over a secure communication link. Docket No. 150 at 23. Therefore, Apple concludes, securely necessarily 19 means a secure communications link is required for sending or communicating a message. Id. at 24. VirnetX disputes the inclusion of secure communications link in Apple s proposed construction, arguing that the phrase is already a separate claim limitation. Docket No. 136 at 20. It argues that, to the extent construction is necessary, this term should be construed simply to acknowledge that securely refers to data security. Id. As VirnetX correctly states, the claims already recite that messages are sent over a secure communications link. See 181 Patent, claim 1 (reciting receiving a message from a second device to securely communicate with a first device and then sending a message over a secure communication link ). In its constructions of secure communication link in Cisco and Mitel, the Court held that the term securely referred to data security. Cisco, Docket No. 266 at 10 13; Mitel, Docket No. 307 at 6 7. VirnetX s alternative construction is consistent with that finding. Accordingly, the Court construes securely communicate as communicate with data security. sending a message securely Claims 24 26 and 29 of the 181 Patent contain the term sending a message securely. VirnetX argues that no construction is necessary, but alternatively proposes sending a message with data security. Apple proposes sending a message over a secure communication link. The issue and arguments regarding this term are identical to those raised for the previous term. For the same reasons stated regarding the previous term, the Court construes sending a message securely as sending a message with data security. 20 non-secure communication link Claim 7 of the 181 Patent contains the term non-secure communication link. VirnetX proposes a communication link that is not a secure communication link. Apple proposes a communication link that transmits information in the clear. VirnetX argues that the prefix non applies to the entire remainder of the term, secure communication link. Docket No. 136 at 21. Thus, it contends that this term encompasses anything that does not meet the Court s construction of secure communication link. Id. The Court previously construed secure communication link to require both security and direct communication. Cisco, Docket No. 266 at 10 13. 4 Thus, according to VirnetX, a non-secure communication link includes communication links that provide security but do not directly communicate. Apple contends that the prefix non applies only to the word secure. Docket No. 150 at 24. Thus, it contends that this term means a communication link that is not secure, regardless of whether or not it directly communicates. Id. It argues that VirnetX s conclusion that an encrypted link could still be deemed non-secure is absurd. Id. at 24 25. The prefix non applies only to the word secure. When the patentees wished to apply the prefix non to a phrase lasting more than one word, they made their intention explicit. See 181 Patent at col. 49:29 31 (describing a communication link that was not secure and not a VPN as a non-secure, non-VPN communication link ). Here, the patentees could have applied the prefix non to the entire remainder of the term by drafting the term to read not a secure 4 In Cisco, the Court construed secure communication link as a direct communication link that provides data security. Cisco, Docket No. 266 at 10 13. After claim construction, the Cisco parties agreed that data security was provided through encryption. In Mitel, the Court adopted the Cisco parties amendment and construed secure communication link as a direct communication link that provides data security through encryption. Mitel, Docket No. 307 at 6 7. 21 communication link, but chose not to. Accordingly, the Court rejects VirnetX s proposed construction and adopts the substance of Apple s proposed construction. 5 The Court construes non-secure communication link as a communication link that transmits information without data security by encryption. requesting and obtaining registration of a secure/unsecured name Claims 24 27 of the 181 Patent include the term requesting and obtaining registration of a secure/unsecured name. VirnetX argues no construction is necessary. Apple originally proposed requesting and obtaining from a domain name registry service ownership of an secure/unsecured name. However, in its briefing, Apple informed the Court that it no longer proposes a construction. Docket No. 150 at 25. In light of the parties agreement, the Court finds that requesting and obtaining registration of a secure/unsecured name does not require construction. message Claims 1, 2, 5, 6, 8, 10 13, 22, 24 26, 28, and 29 of the 181 Patent include the term message. VirnetX proposes a unit of information that can be transmitted electronically. Apple proposes a communication comprising one or more network packets. Apple argues that the specification equates messages with packets. Docket No. 150 at 26 (quoting 181 Patent at col. 3:14 15 (describing IP packet messages )). It points to an embodiment that is incompatible with messages that are composed of anything except packets for support. Id. VirnetX replies that Apple s proposed construction conflates the information being transmitted (the message ) with the preferred method of delivery (the packet ). Docket No. 152 at 10. It alleges that if the specification equated messages with packets, then Apple s 5 The parties agree that in the clear describes communication links that are not secure, or unencrypted. Docket No. 136 at 21; Docket No. 150 at 24. In order to clarify for the jury, the Court replaces the phrase in the clear with a more concrete synonymous phrase. 22 cited excerpt from the specification IP packet messages would be redundant. Id. (quoting 181 Patent at col. 3:14 15). For its construction, VirnetX relies on the dictionary definition of message. Docket No. 136 at 23. Apple s cited preferred embodiment uses packets to form information messages. But Apple does not cite a disclaimer of the plain and ordinary meaning of message that limits it to this preferred embodiment. Accordingly, the Court rejects Apple s proposed construction and adopts VirnetX s proposed construction based on the term s plain and ordinary meaning. The Court construes message as a unit of information that can be transmitted electronically. DISPUTED TERMS FOR WHICH PARTIES REST ON PRIOR BRIEFING For the remainder of the disputed terms, VirnetX and Apple rest on the claim construction briefing from the Cisco case. Docket No. 113 at 2; Docket No. 113-2, Ex. B; Docket No. 136 at 14; Docket No. 150 at 19; See Cisco, Docket Nos. 173, 182, 192, 209, 366, 424. They raise no new arguments. Because the parties provided no reason to modify the Court s prior constructions and for the reasons stated in the Cisco and Mitel cases, the Court construes the remainder of the disputed terms as follows: Claim Term Domain Name Service (DNS) domain name between [A] the client and [B] the secure server Court s Construction a lookup service that returns an IP address for a requested domain name to the requester a name corresponding to an IP address extending from [A] to [B] between [A] the client computer and [B] the target computer between [A] a/the first computer and [B] a/the second computer 23 Claim Term wherein the secure communication service uses the secure communication link to communicate at least one of video data and audio data between the first network device and the second network device secure communication link web site secure web site secure web computer Court s Construction wherein the secure communication service uses the secure communication link to communicate at least one of video data and audio data extending from the first network device and the second network device a direct communication link that provides data security through encryption one or more related web pages at a location on the World Wide Web a web site that requires authorization for access and that can communicate in a VPN the target computer that hosts the secure web site Cisco, Docket No. 266; Mitel, Docket No. 307. CONCLUSION For the foregoing reasons, the Court interprets the claim language in this case in the manner set forth above. For ease of reference, the Court s claim interpretations are set forth in a table in Appendix A and the parties agreed constructions are set forth in a table in Appendix B. Further, the Court DENIES Apple s Motion for Summary Judgment of Indefiniteness (Docket No. 148). So ORDERED and SIGNED this 8th day of August, 2014. __________________________________ LEONARD DAVIS UNITED STATES DISTRICT JUDGE 24 APPENDIX A Claim Term virtual private network (VPN) generating from the client computer . . . an indication that the domain name service system supports establishing a secure communication link indicate in response to the query whether the domain name service system supports establishing a secure communications link intercept / intercepting [intercept / intercepting] . . . a request to look up an internet protocol (IP) address [determine/determining] . . . is available for a secure communications service domain name lookup secure name service secure name unsecured name securely communicate sending a message securely non-secure communication link Court s Construction a network of computers which privately and directly communicate with each other by encrypting traffic on insecure paths between the computers where the communication is both secure and anonymous generating and transmitting from the client computer a DNS request an indication other than merely returning of requested DNS records, such as an IP address or key certificate, that the domain name service system supports establishing a secure communication link indicate in response to the query, other than the mere returning of requested DNS records, such as an IP address or key certificate, that the domain name service system supports establishing a secure communication link No construction necessary. The Court clarifies that intercepting means more than simply receiving. No construction necessary. The Court clarifies that intercepting means more than simply receiving. determine/determining whether a device is available to establish a secure communication link a lookup service that returns an IP address for a requested domain name to the requester a lookup service that returns a secure network address for a requested secure name a name corresponding to a secure network address a name corresponding to an unsecured network address communicate with data security sending a message securely as sending a message with data security a communication link that transmits information without data security by encryption No construction necessary requesting and obtaining registration of a secure/unsecured name message a unit of information that can be transmitted electronically Domain Name Service (DNS) a lookup service that returns an IP address for a requested domain name to the requester domain name a name corresponding to an IP address 25 Claim Term Court s Construction between [A] the client and [B] the extending from [A] to [B] secure server between [A] the client computer and [B] the target computer between [A] a/the first computer and [B] a/the second computer wherein the secure communication service uses the secure communication link to communicate at least one of video data and audio data between the first network device and the second network device secure communication link web site secure web site secure web computer wherein the secure communication service uses the secure communication link to communicate at least one of video data and audio data extending from the first network device and the second network device a direct communication link that provides data security through encryption one or more related web pages at a location on the World Wide Web a web site that requires authorization for access and that can communicate in a VPN the target computer that hosts the secure web site 26 APPENDIX B Claim Term secure target web site automatically initiating the VPN DNS proxy server automatically initiating an encrypted channel automatically creating a secure channel automatically creating an encrypted channel secure server Agreed Construction a secure web site on the target computer initiating the VPN without involvement of a user a computer or program that responds to a domain name inquiry in place of a DNS initiating the encrypted channel without involvement of a user creating the secure channel without involvement of a user creating the encrypted channel without involvement of a user a server that requires authorization for access and that can communicate in an encrypted channel 27
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