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Expert witness: Microsoft infringed VirnetX patents, and knew it
An expert witness who looked at Microsoft's source code has determined that the company indeed infringed upon two of VirnetX's patents, knew about the patents, and believed the technology was valuable enough – and not obvious enough – to attempt patenting similar technology itself.

http://blog.seattlepi.com/microsoft/archives/197593.asp

Seattlepi.com combed through 301 pages of court transcripts from Day 2 (on Tuesday) of the VirnetX v. Microsoft patent-infringement trial. Mark T. Jones, an electrical and computer engineering professor at Virginia Tech, testified in his 10th trial as an expert witness that VirnetX's allegations were true.

The Scotts Valley, Calif., company of 12 employees alleges Microsoft infringed two of its patents – Nos. 6,502,135 and 7,188,180 – on technology for secure and automatic virtual private networks, or VPNs. In its defense, Microsoft is arguing that the patents are invalid largely because the technology was obvious – in this sense, a legal term – and that Microsoft's Windows XP, Windows Vista, Office Live Communicator and other products did not infringe.

During the trial in Tyler, Texas, Jones and a VirnetX attorney walked the jury through a lengthy presentation that explained the wording of VirnetX's patents, explained Jones' independent analysis of Microsoft's products, and explained how he believed Microsoft infringed.



BACKGROUND COVERAGE
· VirnetX stock soars as Microsoft patent trial nears
· VirnetX's future depends on Microsoft lawsuit
· Microsoft: VirnetX was created to sue us for $242M

Perhaps more notably, however, VirnetX's legal team showed that Microsoft tried to patent the VPN technology it used in Office Live Communicator, and that the U.S. Patent and Trademark Office rejected the application by citing VirnetX's '135 patent as previously existing technology, or "prior art."

Microsoft's merely applying for a patent suggests that Microsoft didn't believe the technology was obvious to a computer expert. Obviousness is a main element of Microsoft's legal defense.

Let's tackle that first, that Microsoft received a rejection from the USPTO based on the '135 patent VirnetX now owns.

Here, VirnetX council Douglas Cawley, of the McKool Smith law firm, is questioning Jones about the elements of "direct infringement" – whether Microsoft had the knowledge that its products might have been directly infringing VirnetX patents. Edmund Munger and Bob Short are two of the listed inventors.

Accompanying Jones' sworn testimony, in which he referred to evidence documents and Microsoft depositions, was a PowerPoint presentation for the courtroom.



Q. So for the first element, did you find that Microsoft had – did you find evidence that Microsoft had knowledge of the '135 patent?

A. Yes, sir, I did. I'd like to show that to you.

Q. Okay. This is Plaintiff's Exhibit 401. What are we seeing here?

A. This is an information sent from the U.S. Patent & Trademark Office from – well, from there to Microsoft representatives during the – what's called the prosecution of a patent by Microsoft.

Q. So Microsoft was applying for a patent on some technology it wanted to patent?

A. Yes, sir.

Q. And this is correspondence from the United States Patent Office back to Microsoft?

A. Yes, it is, and it's dated September 26th, 2003.

Q. Now, where does Mr. Munger and Dr. Short's '135 patent fit into this document?

A. Well, let me turn to a little bit later part of it. So I've highlighted two portions of this document. The first one says, essentially, that the claims that Microsoft had submitted as part of the patent application were unpatentable in view of Munger. And they mention the '135 patent explicitly. And a little lower down, we see as to Claim 12, Munger teaches the method of Claim 9 wherein the communication device is a proxy server.

Q. So does this mean that the patent claims that Microsoft was trying to get, that in September of 2003, they were rejected because of the Munger '135 patent we've talked about?

A. Yes, sir. And this is the record of the information or the discussion that the Patent Office sent back to Microsoft's representatives.



Before Jones spoke about the USPTO application, he and Cawley went through the specifics of Microsoft's alleged infringement of the '135 patent.

To infringe a patent, somebody must violate only one "claim." VirnetX alleges Microsoft infringed Claims 1, 10 and 12 of the '135 patent. In the excerpt below, Jones and Cawley walk through the three steps to Claim 1.

Not quoted here, they also went through the steps for Claims 10 and 12. Jones said his opinion is that Microsoft infringed all three claims.

Bold sentences were added for clarity.



Q. So I want to start with the preamble of the claim, which says: A method of transparently creating a virtual private network between a client computer and a target computer. Is that what we do in Office Communicator and the remaining Microsoft '135 products?

A. Yes, it is. That's what happens when the remote computer establishes a VPN to the computers back at (example) Acme.com.

Q. Are there words in here that Judge (Leonard) Davis has defined for us?

A. Yes, there are. As we saw earlier and the definition I read was for virtual private network.

Q. And you've already read that definition to us. Did you apply it in analyzing these claims?

A. Yes, sir.

Q. Now, let's move to the first step, which is, generating from the client computer a domain name service request that requests an IP address corresponding to a domain name associated with the target computer. What is happening – I'm sorry. Did Judge Davis provide us definitions for that term?

A. Yes, he did. For two of those terms. The first one is domain name service, and that is a lookup service that returns an IP (Internet protocol) address for a requested domain name. And the second one is the definition of domain name, which is a name corresponding to an IP address.

Q. So did you find that in the Microsoft '135 product?

A. Yes, I did. That is when the – for example, the application is sending that domain name to the RTC interfaces (or, pieces of the Windows application programming interface).

Q. Did you find that element met in all of the Microsoft '135 products?

A. Yes, sir, I did.

Q. Now, Professor Jones, we have check boxes here (on a foam board). What I want to know is, can I check off that element as being met in the Microsoft '135 products?

A. Yes, sir.

Q. The second element of the claim says – the second step, excuse me – says: Determining whether the domain name service, or DNS, request transmitted in Step 1 is requesting access to a secure website. Has Judge Davis provided us definitions of some of the words there?

A. Yes, sir. Secure website, and the definition for that is a website that requires authorization for access and that can communicate in a VPN. For website, it's one or more related web pages at a location on the worldwide web.

Q. Now, in the Microsoft '135 products, did you find that the RTC interfaces determine whether the DNS request is requesting access to a secure site?

A. Yes, I did, as I described for the DNS proxy server with those four questions about available connections.

Q. Does the site require authorization for access?

A. Yes, sir. As discussed, the user has to be an authorized user or the gatekeeper computer will not allow the connection.

Q. Now, more specifically, in the Microsoft '135 products, did you find that the RTC interfaces determine whether the DNS request is requesting access to a secure website?

A. No, sir, I did not.

Q. Okay. Why not?

A. Well, as I mentioned earlier, the Office Communications Server is not literally a website.

Q. Well, Professor Jones, if you found the Microsoft '135 products do not involve requesting access to a secure website, does that mean that this element of the claim is not met by the Microsoft '135 products?

A. No, sir, it doesn't. Just making a small change does not mean that you don't infringe. If – if the product is insubstantially different from the claims, then it still infringes under this Doctrine of Equivalents (a legal term) that we talked about earlier.

Q. Well, Professor Jones, did you determine this Office Communicator features offered over the virtual private network are not substantially different than a secure website?

A. Yes, sir, I did.

Q. For instance, would the virtual private network be triggered any differently, if it were to carry website traffic?

A. No, sir, it wouldn't. The – the triggering mechanism here would still be the same whether it was literally web pages or presence information or instant messaging. It wouldn't work any differently.

(Jumping ahead ....)

Q. So were you able to determine if the Microsoft '135 products perform substantially the same function as a secure website?

A. Yes, sir, they do. They make use of computers to communicate in the VPN to present information to clients, and they require that the clients be authorized to access the servers.

Q. Were you able to determine if the Microsoft '135 products perform in substantially the same way as a secure website?

A. Yes, sir, they do. They make use of computers to communicate in the VPN using protocols. They present information to clients through Windows over the internet, and they do so in a way in which the client's and servers cooperate to ensure that the clients are authorized to connect.

Q. And finally, did you determine whether the Microsoft '135 products achieve substantially the same result as a secure website?

A. Yes, sir, I did. I found that the result achieved was that the client is able to communicate with computers in a VPN. It does so over a public network and in a way in which only clients that are registered are able to communicate in that network with those servers.

Q. And, Professor Jones, did you conclude that the Microsoft '135 products meet the element of determining whether the DNS request in Step 1 is requesting access to a secure website?

A. Yes, sir, I did under the Doctrine of Equivalents.

Q. May I check that element (on the board)?

A. Please do.

Q. Let's look now at the last claim element, which reads: In response to determining that the domain name service request, or DNS request, in Step 2 is requesting access to a secure target website, automatically initiating the VPN between the client computer and the target computer. What is happening in that claim element?

A. In that element, the DNS proxy server is sending a request to – to initiate the VPN. And in the Microsoft products that happens when the RTC interfaces initiate the VPN with the gatekeeper computer.

Q. I think you touched on this earlier, but is that VPN just always going to be to a single Office Communications Server?

A. No, sir. As I mentioned earlier, that's a group of servers as well as other computers that form a network back at the company.

Q. Now, has Judge Davis provided any additional definitions that help us with this claim element?

A. Yes, sir. So for the claim term, automatically initiated in the VPN, we use the definition initiating the VPN without involvement of a user.

Q. In the Microsoft products, after it is determined that the DNS request pertains to a secure site, do the products automatically initiate a VPN between the client computer and the target computer?

A. Yes, sir, they do. They send that request to the gatekeeper computer to – or the RTC interfaces sent that request to the gatekeeper computer to initiate the VPN.

Q. Will that gatekeeper computer make sure that the proper credentials are presented?

A. Yes, sir, it will.

Q. Now, remind us, really, what was the user's involvement here with all this information going back and forth?

A. Well, the user, as we saw in the screen shot, types in that domain name and his log in. And after that, this all happens behind the scenes automatically.

Q. Professor Jones, did you find this last element met in the Microsoft '135 products?

A. Yes, sir, I did under the Doctrine of Equivalents.

Q. May I check that box?

A. Please do.

Q. Well, Professor Jones, we have checked all the boxes on Claim 1. What does that mean?

A. Well, that means that the Microsoft '135 – '135 products infringe Claim 1 of the '135 patent, and, therefore, they infringe the '135 patent.



The following statement from Jones summarizes Tuesday's court proceedings quite well.



It's my opinion that even Microsoft's own knowledge of the way its products operate, as well as their knowledge of the '135 patent, that as one of ordinary skill in the art would have understood, that using those products in the way that Microsoft describes would have resulted in infringing the '135 patent.


Cawley and Jones went on to talk about the '180 patent – the other one VirnetX alleges Microsoft infringed. But at about 5 p.m., Judge Davis sent the court to recess. VirnetX's attorneys did not complete their examination of Jones on Tuesday, and seattlepi.com has not yet been able to obtain transcripts of Wednesday's proceedings.

Ostensibly, Microsoft's attorneys were able to cross-examine Jones. Further proceedings will be reported here when the transcripts become available.

Sources said the proceedings Wednesday and Thursday were "good for VHC," or VirnetX Holding Corp.