Takeaway: The Board is not obligated to adopt a narrower claim construction in view of Patent Owner asserting the existence of prosecution history disclaimer, particularly where Patent Owner had the opportunity to amend the claims to reflect the alleged disclaimer, but elected not to do so.

In its Final Written Decision, the Board found that that claims 1-5, 7, 8, 10, 12, 13, 15, 17, and 18 of the ‘274 patent are unpatentable. The grounds for unpatentability included both anticipation and obviousness.

Microsoft Corporation (“Microsoft”) had requested inter partes review of claims 1-5, 7, 8, 10, 12, 13, 15, 17, and 18 of the ‘274 patent in related IPR2014-00483. Petitioner did the same in the instant IPR2014-00403. The Board subsequently joined these proceedings, and after Microsoft and Patent Owner settled, the instant IPR2014-00403 was terminated with respect Microsoft, but continued with respect to Petitioner.

The ‘274 patent relates to secure systems for communicating over the Internet. The instituted grounds of unpatentability were anticipation of claims 1, 7, 8, 10, 12, 13, 15, and 17 under 35 U.S.C. § 102 in view of Provino; obviousness of claims 2-5 under 35 U.S.C. § 103 in view of Provino and Kosiur; and obviousness of claim 18 under 35 U.S.C. § 103 in view of Provino and Xu.

The Board addressed the construction of a number of terms, including “Virtual Private Network (VPN) Communication Link” and “Secure Domain Service (SDNS).” For the latter term, the parties disputed what the related claim terminology “recognizes . . . requesting a secure domain name” requires. In essence, Patent Owner had argued that “Petitioner’s proposed construction improperly embraces the allegedly disclaimed type of conventional DNS that ‘happens’ to resolve a domain name quest ‘associated with secure domain name.’” The Board ultimately concluded that “claim 1 does not require ‘recognizing’ as argued by Patent Owner.” As noted by the Board, where, as here, Patent Owner had the opportunity to propose claim amendments reflecting the narrower construction proposed as a result of alleged disclaimer, but did not do so, the factors weigh against finding any prosecution history disclaimer, “especially where any disclaimer is equivocal at best.”

Based on the adopted claim constructions, the Board went on to find that “Petitioner has demonstrated, by a preponderance of the evidence, that Provino anticipates claims 1, 7, 8, 10, 12, 13, 15, and 17 under 35 U.S.C. § 102; that the combination of Provino and Kosiur renders claims 2–5 obvious under 35 U.S.C. § 103(a); and that the combination of Provino and Xu renders claims 18 obvious under 35 U.S.C. § 103(a).” As a result, the Board ordered that claims 1-5, 7, 8, 10, 12, 13, 15, 17, and 18 of the ‘274 patent were unpatentable.

Apple Inc. v. VirnetX Inc., IPR2014-00403
Paper 42: Final Written Decision
Dated: July 29, 2015
Patent: 7,987,274 B2
Before: Michael P. Tierney, Karl D. Easthom, and Stephen C. Siu
Written by: Easthom
Related Proceedings: IPR2014-00483