Invalidity dossier

US 7921211

Agile network protocol for secure communications using secure domain names

Current assignee: Black Swamp IP, LLC

Added 9/30/2026, 11:12:52 PM

At a glanceNo PTAB challenges6 lawsuits on fileasserted by Black Swamp IP, LLCSoftware Technology & Computing Systems (T)

Active provider: DeepSeek · deepseek-v4-flash

Patent summary

Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.

✓ Generated

I'll search for authoritative information on this patent number before summarizing.

US 7,921,211 — Analyst Summary

Note on scope: I searched for this specific number only. No CAFC docket dated in 2026 involving 7,921,211 surfaced in my searches; the appeal/PTAB activity I could verify is older (see §6). I flag below where I am relying on secondary sources rather than the patent text itself.


1. Bibliographic data

Field Value (as sourced)
Patent number US 7,921,211 B2
Title Agile network protocol for secure communications using secure domain names
Application 11/840,560
Filed August 17, 2007 (Google Patents "Filing date 2007-08-17"; Unified Patents lists 2007-08-16 — minor datapoint conflict)
Issued April 5, 2011 (Google Patents "Publication date 2011-04-05"; Unified Patents lists grant 2011-04-04)
Inventors Victor Larson; Robert Dunham Short, III; Edmund Colby Munger; Michael Williamson
Assignee VirnetX, Inc. (original assignee VirnetX, Inc.; assignment history shows the inventors assigned to Science Applications International Corporation (SAIC), which then assigned to VirnetX, Inc.)
Priority Effective filing date traced to 1998-10-30 (provisional), via 09/429,643 → 09/504,783 → 09/558,210 → 10/714,849 → 11/840,560
Status Expired – Fee Related; adjusted expiration 2021-09-29
Continuation of Application 10/714,849 (filed Nov. 18, 2003, now U.S. Pat. No. 7,418,504)

The '211 patent sits at the end of a long continuation/CIP chain rooted in the 1998–2000 SAIC "TARP" applications. It is a sibling of 6,502,135 ('135) and 7,418,504 ('504), and is described in E.D. Tex. opinions as a continuation of the application that issued as the '504 patent.

2. Abstract (as reported by secondary databases)

"A secure domain name service for a computer network is disclosed that includes a portal connected to a computer network, such as the Internet, and a domain name database connected to the computer network through the portal. The portal authenticates a query for a secure computer network address, and the domain name database stores secure computer network addresses for the computer network. Each secure computer network address is based on a non-standard top-level domain name, such as .scom, .sorg, .snet, .snet, .sedu, .smil and .sint."

Confidence note: This matches the specification's own summary of the secure domain name service (SDNS) embodiment (see the "Definitions"/summary material in the fetched text), and it is the abstract recorded on the Unified Patents record for US-7921211-B2. I did not retrieve the abstract line directly from the patent front page.

3. What the patent actually describes (plain language)

The '211 patent is one of the VirnetX/SAIC "agile network protocol" family. The specification's core technology is the Tunneled Agile Routing Protocol (TARP):

  • Packets are multiply encrypted (an outer "link key" layer and an inner "session key" layer) and routed through special TARP routers so that the true destination is hidden behind encryption.
  • Agile routing — packets take randomized multi-hop paths; IP agility / IP address hopping (IHOP) — source and destination addresses change according to a shared algorithm with transmit/receive "hopblock" tables and a sliding "look-ahead" window at the receiver; decoy packets are mixed in to defeat traffic analysis; hardware/MAC-address and discriminator-field hopping are also described.
  • For the '211 claims specifically, the relevant embodiment is the secure domain name service / DNS-proxy feature: a modified DNS server (with a DNS proxy) intercepts a lookup, decides whether the requested site is a "secure" site, checks whether the user is authorized, and if so transparently (or "automatically") causes a VPN/secure communication link to be set up between the client and the secure target, returning an address (which need not be the real target address) to the user.

4. Independent claims (plain language)

From the PTAB institution decision and the parties' papers, the independent claims of the '211 patent are claim 1 (system), claim 36 (storage medium / instructions), and claim 60 (method) — all three recite the same core four-element structure.

Claim 1 — System. A system for providing a domain name service for establishing a secure communication link, comprising a domain name service system that is configured and arranged to:

  1. be connected to a communication network;
  2. store a plurality of domain names and corresponding network addresses;
  3. receive a query for a network address; and
  4. indicate, in response to the query, whether the domain name service system supports establishing a secure communication link.
    (Quoted verbatim from the PTAB decision text I retrieved, which reproduces claim 1 of the '211 patent.)

Claim 36 — Storage medium / instructions. The same four elements, but framed as a storage medium containing instructions (code) for a domain name service for establishing a secure communication link — i.e., code for connecting to the communication network, storing the domain names and corresponding network addresses, receiving the query for a network address, and indicating whether the system supports establishing a secure communication link. (The petition literature confirms claim 36 uses "code" language, and dependent claims such as 45 recite "code resides on a server" and "code for creating a domain name database.")

Claim 60 — Method. The same four elements recited as method steps for providing a domain name service for establishing a secure communication link: providing/connecting the domain name service system to the communication network, storing the domain names and corresponding network addresses, receiving the query, and indicating in response to the query whether the domain name service system supports establishing a secure communication link.

Confidence note: I have Claim 1 verbatim. For Claims 36 and 60 I have the substance confirmed by PTAB/petition characterizations (they were briefed together with Claim 1 as sharing the identical four limitations), but I have not retrieved the literal claim language word-for-word from the patent. Treat the Claim 36/60 wording above as a faithful paraphrase, not a verbatim quote.

Claim construction (E.D. Tex., VirnetX v. Mitel, No. 6:11-cv-18, Judge Davis, Aug. 1, 2012) — useful for reading the claims:

  • "secure communication link" = a direct communication link that provides data security through encryption.
  • "domain name service" = 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.
  • "domain name service system" = no construction necessary.
  • "an indication that the domain name service system supports establishing a secure communication link" = no construction necessary.

5. Claim 1's four limitations, restated in everyday terms

Stripped of jargon, the independent claims cover a name-resolution service that, when asked "what's the address for X?", also tells the requester whether that service is capable of setting up a secure (encrypted) link — rather than merely returning an IP address as a conventional DNS would.

6. Litigation, PTAB, and CAFC history (verified results only)

District court (E.D. Tex.):

  • 6:10-cv-00417 (Cisco/Apple et al.) — asserted patents included the '211; jury found infringement (Nov. 7, 2012 verdict, $368.16M).
  • 6:11-cv-00018 (Mitel/Siemens/Avaya) — claim construction covering the '211 (Doc. 307).
  • 6:12-cv-00855 (Apple II), 6:13-cv-00211 (Microsoft), 6:13-cv-00351 (Microsoft).

PTAB:

  • IPR2013-00397 and IPR2013-00398 (Apple) — not instituted (procedural).
  • IPR2013-00378 — settlement.
  • IPR2014-00174, -00175 — not instituted (procedural).
  • IPR2014-00615 and IPR2014-00618 (Microsoft) — instituted (challenging claims 1, 2, 6, 14-17, 19-23, 26-41, 43-47, 50-60), later settled; IPR2014-00616 — not instituted.
  • IPR2015-00185 and IPR2015-00186 — not instituted (procedural).
  • IPR2016-00957 — Final Written Decision (recorded June 12, 2017), adverse invalidity finding involving the '211.
  • Inter partes reexamination 95/001,789 (control no. 95/001,789, Patent 7921211, third-party requester).

CAFC / Supreme Court (as reported by VirnetX):

  • Appeal of IPR2016-00957 docketed as No. 17-2594 (companion 17-2593 involved 7,418,504). After the PTAB's adverse decisions, the CAFC on April 4, 2022 vacated the PTAB's decision in IPR2016-00957 and remanded Appeal No. 17-2594 with instructions to dismiss (the Director rehearing requests had been denied January 7, 2022).
  • No. 2013-1489 (VirnetX v. Cisco/Apple, Sept. 16, 2014) — Fed. Cir. affirmed validity/infringement findings in part, but vacated and remanded the district court's construction of "secure communication link" as applied to the '504 and '211 patents for further proceedings on FaceTime infringement, and vacated the damages award.
  • Other docketed CAFC matters in the family: 14-1395, 17-1591, 17-2593, 18-1197, 19-1050, 21-1672, 22-2234.
  • Supreme Court dockets touching VirnetX include Nos. 19-832 and 23-315; the 23-315 petition concerns the '135 and '151 patents (Kiuchi/C-HTTP anticipation issue), not the '211 patent, so it should not be attributed to '211.

7. Explicit uncertainties / caveats

  1. No 2026 CAFC docket for 7,921,211 was found. Given the patent is expired (expiration 2021-09-29, status "Expired – Fee Related"), new 2026 CAFC activity on this specific number is unlikely, but I cannot rule it out — my search coverage of CAFC 2026 dockets is not exhaustive.
  2. Verbatim claim text: I have Claim 1 verbatim from a PTAB reproduction. Claims 36 and 60 are paraphrased from PTAB/petition characterizations and should be verified against the printed patent columns if exactness matters.
  3. Date discrepancies (filing 8/17 vs. 8/16/2007; issue 4/5 vs. 4/4/2011) exist between Google Patents and Unified Patents. The authoritative patent text I was given states filing 2007-08-17 and publication 2011-04-05.
  4. Abstract: taken from a secondary database record; the fetched patent text did not display the front-page abstract line.
  5. Assignee history: "Current Assignee VirnetX Inc." per Google Patents, with an intermediate assignment to SAIC — the Unified Patents record lists "Parent Company: VirnetX Inc."

I did not fabricate any docket number, claim number, or reference; where I am paraphrasing rather than quoting, I have said so.

Generated 9/30/2026, 11:21:14 PM

Cases on file (6)

Group view →

Specific litigation cases in our database that name US patent 7921211. The free-form analysis below may also discuss cases beyond this list.

Lawsuits filed per year

2010: 1 case1'102011: 1 case'112012: 1 case'122013: 1 case'13'14'152016: 1 case'16
Cases asserting US 7921211, by filing year.

Litigation summary

Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.

✓ Generated

I'll research litigation involving US Patent 7,921,211. Let me run several targeted searches.

Good initial results. Let me dig deeper into specific cases and parties.

Let me verify specific case numbers and the non-Apple defendants.

Litigation Involving U.S. Patent No. 7,921,211 ("the '211 patent")

Patent: US 7,921,211 B2 — "Agile network protocol for secure communications using secure domain names"
Patentee/Assignee: VirnetX Inc. (originally Science Applications International Corporation)
Priority date: 1998‑10‑30; granted: 2011‑04‑05; status: Expired – Fee Related (adjusted expiration 2021‑09‑29, per Google Patents)

Important caveats up front

  1. Scope of the data. The most complete consolidated source is the Google Patents "Family has litigation" docket list for US‑7,921,211 (which in turn draws on the Unified Patents litigation/PTAB portal and Darts‑IP). That list is compiled at patent‑family level, so some entries may concern sibling patents (e.g., 6,502,135; 7,418,504; 7,490,151) rather than the '211 patent specifically. I flag below where I could not independently confirm that the '211 patent itself was asserted. Retrieved from: https://patents.google.com/patent/US7921211/en
  2. I could not retrieve every docket through PACER/CAFC in this session, so outcomes for some 2021–2026 appeals are unverified; those are marked accordingly rather than guessed.

A. District court litigation in which '211 was asserted

1. VirnetX Inc. & Science Applications Int'l Corp. v. Cisco Systems, Inc., Apple Inc., Aastra USA, Inc., Aastra Technologies Ltd., NEC Corp., and NEC Corp. of America

  • Court: U.S. District Court for the Eastern District of Texas, Tyler Division (Judge Leonard Davis)
  • Case No.: 6:10‑cv‑00417‑LED
  • Filed: August 11, 2010
  • Patents asserted against Apple/Cisco et al.: U.S. 6,502,135; 6,839,759; 7,188,180; 7,418,504; 7,490,151; and 7,921,211
  • Outcome (Apple): Jury verdict Nov. 6, 2012 — Apple found to infringe; claims 36, 37, 47 and 51 of the '211 patent were among the adjudicated, valid claims. Final judgment entered Feb. 27/28, 2013 (Dkt. 742) awarding $368,160,000 plus interest/ongoing damages. Source: https://www.courtlistener.com/docket/[4530682/742](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=4530682-0742)/virnetx-inc-v-apple-inc/
  • Appeal: Fed. Cir. No. 2013‑1489 — VirnetX, Inc. v. Cisco Systems, Inc., 2014 WL 4548722 (Fed. Cir. Sept. 16, 2014). The court affirmed validity of all four patents and affirmed infringement of the '135/'151 patents (VPN on Demand), but vacated the '504/'211 infringement findings and the damages award and remanded. Rehearing denied Dec. 16, 2014. The Federal Circuit construed "secure communication link" as "a direct communication link that provides data security and anonymity."
  • On remand (the '504/'211 retrial): Jury verdict Sept. 30, 2016 — $302.4 million for infringement of the '504 and '211 patents (earlier‑generation products). Final judgment entered Sept. 29, 2017 in the total amount of ~$439.7 million (including enhancement for willfulness and fees/interest). Affirmed on appeal (Fed. Cir., discussed below).
  • NEC and Aastra: entered into license agreements with VirnetX and were dismissed from the case.
  • Cisco: the Cisco portion "concluded with a final judgment" (per the PTAB's recitation).

2. VirnetX Inc. & SAIC v. Apple Inc.

  • Court: E.D. Tex., Tyler Division
  • Case No.: 6:12‑cv‑00855‑LED (consolidating 6:11‑cv‑00563‑LED)
  • Filed: November 6, 2012
  • Patents asserted: 6,502,135; 7,418,504; 7,921,211; 7,490,151 (later amended to add 8,051,181 and 8,504,697)
  • Accused products: iPhone 5, iPod touch 5th gen., iPad 4th gen., iPad mini, and then‑current Macs
  • Status: This case, together with 6:11‑cv‑00563, produced the 2016 retrial on the '504/'211 patents and, separately, the April 2018 trial on the '135/'759/'180/'151 patents ($502.6M verdict — those patents do not include '211). Further post‑trial/appellate proceedings continued into the 2020s.

3. VirnetX Inc. v. Apple Inc. (severed ongoing‑royalty action)

  • Court: E.D. Tex., Tyler Division
  • Case No.: 6:13‑cv‑00211‑LED
  • Status: This is the severed action (from 6:10‑cv‑00417) concerning an ongoing royalty for Apple's post‑judgment infringing use of the FaceTime/VPN‑on‑Demand features. The court awarded a 0.98% ongoing royalty (public order issued Mar. 6, 2014). It relates to the adjudicated patents, including the '211 patent.

4. VirnetX Inc. & SAIC v. [Microsoft Corp.](/litigations/by-plaintiff/Microsoft%20Corp.)

5. VirnetX Inc. v. Mitel Networks Corp. et al.

  • Court: E.D. Tex.
  • Case No.: 6:11‑cv‑00018
  • Note/uncertainty: This case appears in the Google Patents family litigation list for the '211 patent, and claim‑construction briefs exist. However, contemporaneous reporting indicates VirnetX sued Mitel (and Siemens Enterprise Communications) on the '135 and '504 patents. I could not verify that the '211 patent itself was asserted against Mitel, so treat this entry as family‑level, not '211‑specific.

6. ITC Investigation No. 337‑TA‑858 (VirnetX/SAIC v. Apple) — negative as to '211

  • Filed Sept. 14, 2012; instituted Oct. 16, 2012; withdrawn Feb. 27, 2013. The ITC action concerned U.S. Patent No. 8,051,181 — not the '211 patent. Included only to avoid confusion.

B. PTAB / post‑grant proceedings on the '211 patent

Inter partes reexamination (pre‑AIA):

  • Control No. 95/001,789, filed October 18, 2011, directed to claims 1–60 of the '211 patent. Third‑party requester correspondence was handled through outside counsel (McDermott Will & Emery / Sidley Austin correspondence addresses appear in the record). The examiner found claims 36–60 invalid over prior art; VirnetX appealed to the PTAB, which affirmed; the Federal Circuit affirmed in the 2019 appeal (see §C). Cisco Systems is reported to have filed an inter partes reexamination request against claims 1–60 of the '211 patent in 2011.

Inter partes reviews (IPRs) naming the '211 patent (status labels per Google Patents/Unified Patents):

Proceeding Status
IPR2013‑00378 Settlement
IPR2013‑00397 Not Instituted – Procedural
IPR2013‑00398 Not Instituted – Procedural
IPR2014‑00174 Not Instituted – Procedural
IPR2014‑00175 Not Instituted – Procedural
IPR2014‑00615 Instituted; later Settlement
IPR2014‑00616 Not Instituted (institution denied)
IPR2014‑00618 Instituted; later Settlement
IPR2015‑00185 Not Instituted – Procedural
IPR2015‑00186 Not Instituted – Procedural
IPR2016‑00957 (Black Swamp IP, LLC v. VirnetX Inc.) Filed Apr. 27, 2016; instituted Sept. 9, 2016; Final Written Decision; terminated Oct. 7, 2022

Sources: https://litigation.rpxcorp.com/ptab/4898 ; https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2016-00957 ; PTAB institution decision in IPR2014‑00615/‑00616/‑00618.

Caution: I could not confirm the identity of the petitioner for each IPR from the retrieved records. The IPR2014‑00615 family decision cites the 2013 E.D. Tex. Microsoft action among "copending proceedings," but that is a related‑litigation disclosure, not proof that Microsoft was the petitioner.


C. Appellate proceedings (CAFC / Supreme Court)

Court / No. Matter Disposition (as verified)
Fed. Cir. 2013‑1489 VirnetX v. Cisco Systems (appeal of 6:10‑cv‑00417) Sept. 16, 2014 — affirmed validity; affirmed '135/'151 infringement; vacated '504/'211 infringement & damages; remanded
Fed. Cir. 2014‑1395 Related appeal from E.D. Tex. (Apple) Listed in family docket; details not verified
Fed. Cir. 2017‑2593 & 2017‑2594 VirnetX v. Apple Listed; details not verified
Fed. Cir. 2018‑1197 Appeal of the Sept. 2017 $439.7M judgment ('504/'211) Affirmed (per VirnetX disclosures); designated a companion with 17‑1368/17‑1591
Fed. Cir. 2019‑1050 VirnetX v. Apple/Cisco — PTAB reexamination appeals (§317(b) estoppel; '504/'211 unpatentability) Aug. 1, 2019 opinion: affirmed‑in‑part, vacated‑in‑part, remanded; PTAB's '211 Cisco reexam decision affirmed; rehearing en banc denied Aug. 1, 2019
Fed. Cir. 2021‑1672 Listed for the family Details not verified
Fed. Cir. 2022‑2234 Listed for the family Details not verified
U.S. Supreme Court No. 19‑832 Cert petition relating to the VirnetX/Apple dispute Listed; I could not verify the petition disposition (reported as denied) — treat as unconfirmed
U.S. Supreme Court No. 23‑315 Listed for the family Not verified — I cannot confirm the parties or disposition

Also relevant context: the Federal Circuit's Nov. 2019 decision (reported widely) reversed the district court's finding that Apple's FaceTime infringed the '504 and '211 patents, while confirming infringement of the '135/'151 patents by the redesigned VPN on Demand feature. Apple's Feb. 10, 2020 rehearing petition was denied.


D. Bottom line

  • Yes — substantial litigation exists involving the '211 patent, almost entirely as part of VirnetX's VPN patent campaign.
  • Defendants/parties: Apple Inc. (multiple suits), Cisco Systems, Inc., Microsoft Corp., NEC Corp. / NEC Corp. of America, Aastra USA, Inc. / Aastra Technologies Ltd., and (family‑level, unconfirmed for '211) Mitel Networks Corp.
  • Jurisdictions: Primarily the Eastern District of Texas, Tyler Division (Judge Leonard Davis); appeals to the Federal Circuit; one ITC investigation (which did not involve '211); numerous PTAB IPRs and an inter partes reexamination.
  • Key outcomes for '211: the $368.16M 2013 judgment (claims 36, 37, 47, 51 of '211 held infringed and valid) was vacated as to '211 on appeal in 2014; the '211 claims were later adjudged unpatentable in the Cisco inter partes reexamination, affirmed by the Federal Circuit in 2019; the parallel IPRs largely ended in settlement, non‑institution, or (IPR2016‑00957) a final written decision terminating in 2022.
  • Weakest spots in my answer (stated explicitly): petitioner identities for individual IPRs; the Microsoft 2013 case settlement terms; whether '211 (vs. sibling patents only) was asserted in 6:11‑cv‑00018; and the disposition of Supreme Court Nos. 19‑832 and 23‑315 and Fed. Cir. Nos. 2021‑1672 / 2022‑2234.

If you need PACER/CAFC‑grade confirmation on any single row (especially the 2021–2026 appellate items and the Microsoft settlement), I'd recommend pulling the specific docket directly — those are the entries I could not fully verify from the sources available in this session.

Generated 9/30/2026, 11:21:35 PM

Proceedings on file (0)

All PTAB activity →

AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.

Current assignee: Black Swamp IP, LLC

No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.

PTAB challenges

AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.

✓ Generated

I'll research the actual PTAB record for US 7,921,211 before writing anything.

Rich record here — the '211 patent has a long AIA-trial history despite the empty ODP block. Let me pin down each proceeding.

PTAB / AIA Trial Proceedings — US 7,921,211 ("Agile network protocol for secure communications using secure domain names", VirnetX, Inc.)

Sourcing note (read first). The structured "PTAB proceedings on file" block in this prompt reports zero AIA trial proceedings from the USPTO Open Data Portal, and states the default should be "no PTAB activity on file." That default is wrong for this patent. The '211 patent has one of the longest AIA-trial histories of any VirnetX patent — 11 IPR petitions — and the empty ODP result is a coverage/ingest artifact, not a clean record. My proceeding list was sourced two ways and the two agree:

  1. The institution decision in IPR2016-00957, which enumerates the sibling proceedings: "the '211 patent is the subject of inter partes reexamination in 95/001,789 and 95/001,856 and inter partes review in IPR2013-00378, IPR2013-00397, IPR2013-00398, IPR2014-00174, IPR2014-00175, IPR2014-00616, IPR2014-00615, IPR2014-00618, IPR2015-00185, and IPR2015-00186."
  2. The Google Patents / Unified Patents litigation metadata on the '211 patent page, which lists the same case numbers plus IPR2016-00957.

I have not invented any proceeding number. Where I could not verify a date, panel, or claim list from a retrieved document, I say so explicitly rather than filling the gap.


Proceedings overview

Total: 11 AIA trial proceedings — all Inter Partes Review (no PGR, no CBM). Breakdown: 1 reached a Final Written Decision (all 15 challenged claims held unpatentable, FWD later vacated as moot); 2 were instituted and terminated without an FWD (metadata labeled "Settlement"); 7 were denied institution; 1 was terminated pre-institution on the petitioner's own request for adverse judgment. None is active today; the last PTAB docket entry closed on 2022-10-07.

Bottom line for a defendant: this is not a "hardened" patent or a "patent that survived IPRs." It is a patent whose claims were cancelled in the parallel inter partes reexaminations (Apple's 95/001,789 and Cisco's 95/001,856), whose AIA-trial win against it (IPR2016-00957) was vacated as moot on 2022-04-04 because the claims were already gone, and whose term expired on 2021-09-29 per the Google Patents legal-status data. If a demand letter today asserts US 7,921,211, the demand is built on a patent with no enforceable claim and no remaining term. The one caveat: because the IPR FWD was vacated, you cannot point to a standing PTAB decision as your estoppel/preclusion hook — you must instead point to the reexamination certificates and to VirnetX Inc. v. Apple Inc., 931 F.3d 1363 (Fed. Cir. 2019).


IPR2016-00957 — Black Swamp IP, LLC v. VirnetX, Inc.

  • Type: Inter Partes Review (pre-AIA § 102/§ 103; petition filed before 2018-11-13, so BRI claim construction under 37 C.F.R. § 42.100(b))
  • Filed: 2016-02-29 (per Law360's docket page). Discrepancy flagged: one third-party docket aggregator records the case as "Filed April 27, 2016." I could not retrieve the petition itself to resolve this; treat 2016-02-29 as the better-supported date.
  • Status: "Final Written Decision" (structured metadata) → FWD issued 2017-06-12; FWD VACATED and appeal dismissed as moot 2022-04-04; proceeding terminated 2022-10-07. No live decision remains.
  • Judge panel: Michael P. Tierney (Vice Chief APJ), Karl D. Easthom, Stephen C. Siu — the panel on the face of the Final Written Decision. A docket aggregator also lists Jason Melvin on the case.
  • Petition grounds: 35 U.S.C. § 102 anticipation by Kiuchi (Takahiro Kiuchi & Shigekoto Kaihara, "C-HTTP — The Development of a Secure, Closed HTTP-Based Network on the Internet," Proc. SNDSS 1996). Claims challenged: 1, 2, 5, 6, 15, 16, 23, 27, 36, 37, 39, 40, 47, 51, and 60. No expert testimony accompanied the petition — VirnetX argued that was fatal, and the Board rejected that argument at institution, then still found every claim unpatentable.
  • Institution decision: Instituted on all 15 challenged claims, Paper 8 ("Decision Institution of Inter Partes Review," 37 C.F.R. § 42.108). Exact institution date not confirmed, but it necessarily issued on or before 2016-06-12 (the 2017-06-12 FWD is within the statutory one-year trial clock). Panel reasoning: petitioner established a reasonable likelihood of prevailing on at least one challenged claim under § 314(a); the Board declined VirnetX's § 315(d)/§ 325(d) request to deny institution as "the thirteenth challenge," holding that, "[u]nder the specific circumstances involved at this juncture, the Kiuchi-based ground would not place a significant burden on the parties or the Board."
  • Final Written Decision (2017-06-12): Petitioner prevailed on every instituted claim. Verbatim disposition: "we determine that Petitioner met its burden of showing, by a preponderance of the evidence, that claims 1, 2, 5, 6, 15, 16, 23, 27, 36, 37, 39, 40, 47, 51, and 60 of the '211 patent are unpatentable." Independent claim 1 (the DNS-proxy / secure-domain-name system claim) and claims 36, 47 and 51 (the claims VirnetX was asserting against Apple in district court) are all within that list. No challenged claim was held patentable. The FWD did not address claims 3, 4, 7–14, 18, 24–26, 28–35, 38, 41–46, 48–50 or 52–59 because they were not challenged — do not read the FWD as reaching them.
  • Settlement / termination: No settlement; Black Swamp litigated to an FWD. Black Swamp then declined to defend the appeal (notified the court 2017-10-18 that it would not participate), and the USPTO intervened (2017-11-27). The case ended via vacatur.
  • Appeal: Yes. Notice of appeal 2017-09-22 → Fed. Cir. No. 2017-2594 (VirnetX Inc. v. Hirshfeld; consolidated for some purposes with No. 2017-2593, the IPR2016-00693/'504 appeal). The appeal was stayed 2018-01-19 pending the 17-1591 appeal. On 2021-08-19 the Federal Circuit remanded to permit VirnetX to seek Director rehearing (Arthrex-driven); VirnetX requested it 2021-10-18; denied 2022-01-07; VirnetX then filed an amended notice of appeal on 2022-03-10 "solely as a protective measure" and asked the court to vacate as moot. Order of 2022-04-04: "The June 12, 2017 final written decision of the Patent Trial and Appeal Board in IPR2016-00957 is vacated, and Appeal No. 2017-2594 is remanded with instructions to dismiss." The court's stated reason: the 2019 decision in VirnetX Inc. v. Apple Inc., 931 F.3d 1363 (Fed. Cir. 2019), "affirm[ed] separate Board decisions finding the same claims of the patent unpatentable," and the parties agreed the appeal was moot. Order: CourtListener PDF · CourtListener opinion page · Fed. Cir. docket 17-2594 (Unified Patents portal)
  • Defensive value: This is the best historical ammunition on the patent — a clean sweep for the petitioner on all 15 challenged claims, on a single prior-art reference (Kiuchi), by a panel that expressly refused to spare VirnetX an unwinnable trial. But it is now a vacated decision. Do not cite it as a live or preclusive holding; cite it as the PTAB's reasoned analysis that claim 1 and claims 36/47/51 are anticipated by Kiuchi, and pair it with the reexamination certificates that actually killed the claims.

IPR2014-00615 & IPR2014-00618 — Microsoft Corporation v. VirnetX, Inc.

  • Type: Inter Partes Review. Two separate petitions on the same patent, filed together with a third (IPR2014-00616).
  • Filed: March 2014 (VirnetX's own preliminary-response filing states "Microsoft filed its Petition in March 2014"). Exact days not confirmed.
  • Status (structured metadata, verbatim): IPR2014-00615 — "Settlement"; IPR2014-00618 — "Settlement." Gloss: both were instituted, then the trial ended without an FWD; the Board consolidated the two and administratively terminated '618.
  • Judge panel: Not confirmed — the retrieved excerpt of the institution decision does not show the panel signature block. (Tierney/Easthom/Siu handled the parallel VirnetX dockets, but I will not attribute them here without the document.)
  • Petition grounds: § 102 and/or § 103, on references not confirmed from the retrieved excerpt. Claims challenged: 1, 2, 6, 14–17, 19–23, 26–41, 43–47, and 50–60.
  • Institution decision: Paper captioned "Decision Institution of Inter Partes Review in IPR2014-00615 and IPR2014-00618 and Denying Institution of Inter Partes Review in IPR2014-00616." The Board determined "there is a reasonable likelihood it would prevail in establishing unpatentability with respect to all of the challenged claims, claims 1, 2, 6, 14-17, 19-23, 26-41, 43-47, and 50-60." On 2014-10-15 the Board consolidated IPR2014-00618 into IPR2014-00615 and administratively terminated IPR2014-00618 — i.e., '618 never existed as a separate trial after that date.
  • Final Written Decision: None. The instituted trial on '615 was terminated before any FWD; the Board therefore never adjudicated the patentability of claims 1, 2, 6, 14–17, 19–23, 26–41, 43–47, 50–60.
  • Settlement / termination: The public metadata labels both cases "Settlement," consistent with a party-driven termination. I could not retrieve the termination papers, and the terms are not public — do not assume a written settlement agreement or a specific consideration. Note the label for '618 is partly an artifact of the consolidation/administrative termination.
  • Appeal: No (no FWD to appeal).
  • Defensive value: This is the only set of IPRs on the '211 patent that the Board actually instituted against the broad Microsoft claim set (which overlaps heavily with the Black Swamp set). Because it ended without an FWD, it produced no § 315(e)(2) estoppel (estoppel attaches only to an IPR "that results in a final written decision under section 318(a)"). Its value to a modern defendant is evidentiary/historical only.

IPR2014-00616 — Microsoft Corporation v. VirnetX, Inc.

  • Type: Inter Partes Review
  • Filed: March 2014
  • Status (verbatim): "Not Instituted - Procedural" → institution denied on the same paper that instituted '615 and '618.
  • Judge panel: Not confirmed.
  • Petition grounds: Same claim set/grounds family as '615; denied.
  • Institution decision: Denied in the consolidated decision captioned above (2014, before the 2014-10-15 consolidation order). The retrieved excerpt confirms the denial but does not quote the panel's reason; the caption classifies it as procedural ("Not Instituted – Procedural").
  • FWD: None. Settlement: N/A. Appeal: None.
  • Defensive value: Minimal on its own; relevant only as showing why a third parallel Microsoft petition produced no second bite.

IPR2015-00185 & IPR2015-00186 — Apple Inc. v. VirnetX, Inc.

  • Type: Inter Partes Review, each accompanied by a motion for joinder to the Microsoft '615/618 consolidated proceeding.
  • Filed: 2014-10-30 (the '185 and '186 Apple petitions and Dr. Roch Guerin's supporting declarations are dated 2014-10-30; the patent US 9,479,426 lists them by filing date).
  • Status (verbatim): "Not Instituted - Procedural" for both.
  • Judge panel: Michael P. Tierney, Karl D. Easthom, Stephen C. Siu (panel on the 2014-12-02 "Order Conduct of the Proceeding," Paper 8, which reset VirnetX's preliminary-response deadline to 2015-01-16 to allow the joinder motions to be briefed).
  • Petition grounds: Grounds not fully confirmed from the retrieved documents. VirnetX's opposition states Apple's petitions "include[d] new grounds that were not presented nor considered in the '615 proceeding" — a fact the Board would have weighed on joinder.
  • Institution decision: Denied. VirnetX opposed Apple's joinder motions on 2014-12-03, arguing Apple was using § 315(c) joinder to "evade the time bar of § 315(b)" after three prior failures, and that the new grounds made joinder inappropriate. Related-matter footnotes in VirnetX's filings record institution denials dated 2015-02-17 for two proceedings involving the '211 patent; that date is consistent with these two Apple cases but I could not tie it to them document-by-document — treat as probable, not confirmed. Because joinder under § 315(c) requires an instituted proceeding and the Board denied these petitions, Apple never entered the Microsoft trial.
  • FWD: None. Settlement: None.
  • Appeal: None.
  • Defensive value: Documents the § 315(b) end-run pattern: Apple was served with the '211 infringement complaint on 2011-04-05, so its own petitions were time-barred, and this joinder attempt — its fourth and fifth bites at the patent — failed too.

IPR2013-00397 & IPR2013-00398 — Apple Inc. v. VirnetX, Inc.

  • Type: Inter Partes Review
  • Filed: June 2013 (the '397 Notice of Related Matters is dated 2013-07-22; the '397 case number is from Apple's June 2013 VirnetX petition series). Exact petition date not confirmed.
  • Status (verbatim): "Not Instituted - Procedural" for both → denied as time-barred under 35 U.S.C. § 315(b).
  • Judge panel: Not confirmed.
  • Petition grounds: VirnetX's preliminary response in '397 (Ex. 1006, addressing the parallel Black Swamp petition) shows the petition was met with a § 315(b) attack, a 37 C.F.R. § 42.104/42.105 compliance attack, a redundancy attack, and a merits attack; the art is not confirmed from the excerpt.
  • Institution decision: Denied. VirnetX's 2014-12-03 opposition filing later recited the history plainly: "Its first two petitions, in IPR2013-00397 and IPR2013-00398, were denied as untimely under 35 U.S.C. § 315(b)." (This was Apple's second and third validity challenge to the '211 patent; the Board had already denied Apple's parallel VirnetX petitions as time-barred, e.g., Apple Inc. v. VirnetX Inc., IPR2013-00354, Paper 20 (P.T.A.B. Dec. 13, 2013).)
  • FWD / settlement / appeal: None.
  • Defensive value: Shows that even the manufacturer with the deepest pockets could not get an AIA trial on the '211 patent while its time-bar clock was running — the reasons it finally got one were proxy filings and a third-party petitioner.

IPR2014-00174 & IPR2014-00175 — RPX Corporation v. VirnetX, Inc.

  • Type: Inter Partes Review — two of seven coordinated RPX petitions covering four VirnetX patents (U.S. 6,502,135; 7,490,151; 7,921,211; 7,418,504). Case-number-to-patent mapping places '174 and '175 on the '211 patent.
  • Filed: November 2013 (per the Federal Circuit's factual recitation: "In November 2013, RPX Corporation petitioned for inter partes review of the Challenged Patents").
  • Status (verbatim): "Not Instituted - Procedural" → institution denied 2014-06-05.
  • Judge panel: Michael P. Tierney, Karl D. Easthom, Stephen I. Siu (per RPX Corp. v. VirnetX Inc., IPR2014-00171 et al., Paper 57 (P.T.A.B. June 5, 2014)).
  • Petition grounds: Not confirmed at claim level for the '211 petitions. The Board's denial turned on threshold § 315(b) / real-party-in-interest grounds, not the merits, so the grounds were never reached.
  • Institution decision: Denied (2014-06-05), treating IPR2014-00171 as representative of all seven proceedings. The Board found, after granting VirnetX an extraordinary additional-discovery motion (a rare grant), that RPX was acting as a proxy/real party in interest for the time-barred Apple, and therefore denied institution as time-barred under § 315(b). Fed. Cir.: "The Board again denied institution as time-barred based on evidence that Apple was a real party in interest. E.g., RPX Corp. v. VirnetX Inc., IPR2014-00171, Paper 57 at 3." Law-firm case note: RPX Corp. v. VirnetX Inc., IPR2012014-00171…-00177; decision text via vLex/case-law reproduction of the 2014-06-05 denial.
  • FWD / settlement / appeal: None.
  • Defensive value: Establishes the RPX-as-Apple's-proxy finding — useful background if anyone argues that a non-practicing petitioner's IPR is "independent" of an accused infringer's interests.

IPR2013-00378 — New Bay Capital, LLC v. VirnetX, Inc.

  • Type: Inter Partes Review
  • Filed: 2013-06-23 (petition filed; post-institution fees paid the same day).
  • Status (verbatim metadata): "Settlement" → substantively wrong as a label. The proceeding was terminated on 2013-11-12 by adverse judgment against the petitioner (Paper 14, "Judgment: Termination of the Proceeding") after New Bay moved to terminate its own IPRs — before the Board decided whether to institute. The Board refunded $14,000 in post-institution fees on 2013-12-04, confirming no institution ever occurred. VirnetX's own press release: "the USPTO has agreed to terminate the IPRs initiated by New Bay… New Bay reversed course and moved to terminate its IPRs by requesting an adverse judgment." VirnetX press release, 2013-11-13; notice of refund, Docket Alarm
  • Judge panel: None — no panel decided the merits; the refund notice was processed by a Trial Paralegal (Patrick E. Baker).
  • Petition grounds: Reference-based (§ 102/§ 103) grounds with a Housley declaration, per the exhibit list in later VirnetX filings; never adjudicated.
  • Institution decision: None issued — terminated first.
  • FWD: None.
  • Settlement / termination: Not a settlement in the ordinary sense. Public commentary describes New Bay as an entity that made a payoff demand on VirnetX and abandoned the challenge after VirnetX refused; the Board entered adverse judgment at New Bay's request and granted a fee refund.
  • Appeal: None.
  • Defensive value: Almost none on the merits (no decision was ever reached). Its analytical value is as a warning about status labels: the same structured metadata that calls this a "Settlement" also calls IPR2016-00957 a "Final Written Decision" — neither label, standing alone, tells you what happened. Verify against the papers.

Strategic summary

Claim status on the '211 patent (claims 1–60).

  • Held unpatentable by the PTAB (now vacated): claims 1, 2, 5, 6, 15, 16, 23, 27, 36, 37, 39, 40, 47, 51, 60 — IPR2016-00957 FWD, 2017-06-12. This includes independent claim 1 and the three claims VirnetX asserted against Apple (36, 47, 51). The FWD was vacated as moot on 2022-04-04, so it is not a standing adjudication.
  • Challenged in an instituted IPR but never decided: claims 14, 17, 19–22, 26, 28–35, 38, 41, 43–46, 48–50, 52–59 (the balance of Microsoft's instituted '615 set).
  • Invalidated outside the AIA-trial track — this is what actually killed the patent: in the inter partes reexaminations Control Nos. 95/001,789 (Apple) and 95/001,856 (Cisco), with the Federal Circuit affirming in VirnetX Inc. v. Apple Inc., 931 F.3d 1363 (Fed. Cir. Aug. 1, 2019) (the "17-1591" appeal), while directing the PTAB to terminate Apple's reexamination as to claims 36–59 of the '211 patent because those claims had already been the subject of a final district-court validity judgment. Apple's later briefing states flatly that the '211 patent's claims "have had their claims cancelled in post-grant proceedings, after exhausting all appeals to the PTAB and the Federal Circuit," and separately that the 17-1591/18-1751 decisions "affirmed as unpatentable all asserted claims of the '211 patent (claims 36, 47, and 51)."
    ⚠️ Flagged conflict: VirnetX's summary of 931 F.3d 1363 says the court ordered termination of Apple's reexamination as to claims 36–59, which reads in tension with Apple's statement that the same decision affirmed claims 36/47/51 as unpatentable. The most likely reconciliation is that the Cisco reexamination (95/001,856) is what invalidated the higher-numbered claims and the affirmance attached to it, while Apple's duplicative reexamination was cut off as to those claims. I could not resolve this document-by-document. Pull the reexamination certificates before you rely on any specific claim being cancelled.
  • Untested in any AIA trial: claims 3, 4, 7–13, 18, 24, 25, 42, 48, 49 were never part of an instituted IPR. For those, your invalidity story is the reexamination record (and the near-identical '504 patent family), not the PTAB.

Estoppel landscape. § 315(e)(2) estoppel attaches only to an IPR that "results in a final written decision under section 318(a)." Applying that:

  • Black Swamp (IPR2016-00957): an FWD did issue, which would ordinarily estop Black Swamp and its privies as to grounds raised or reasonably could have been raised. But that FWD was vacated, and whether estoppel survives vacatur is unsettled; VirnetX's own briefing argues that "[u]nreviewed PTAB Decisions Lack Preclusive Effect." Do not build a case on '957 estoppel.
  • Microsoft ('615/'618): no FWD → no § 315(e)(2) estoppel. Interesting consequence: Microsoft is not barred by statute from re-litigating the same Kiuchi-type grounds against a sibling patent, and neither is anyone else.
  • Apple ('397, '398, '185, '186), RPX ('174, '175), New Bay ('378), Microsoft ('616): all denials/terminations → no estoppel.
  • What actually binds people is claim preclusion/issue preclusion from the Article III appeals — VirnetX v. Apple, 931 F.3d 1363 (Fed. Cir. 2019), and the district-court judgments in the -417/-855 cases — not PTAB estoppel. Because the '211 patent is expired (2021-09-29) and its claims are gone, the estoppel question is now largely academic: there is no claim left to assert, so "which prior-art grounds are still available" collapses into "you may keep your money."

Pattern signals.

  • One accused infringer made at least five attempts. Apple filed directly in June 2013 (IPR2013-00397, -00398), through RPX in November 2013 (IPR2014-00174, -00175), and again in October 2014 by joinder motion (IPR2015-00185, -00186). Each attempt failed on the § 315(b) time bar or the joinder denial. The Board's RPX decision, after granting VirnetX's motion for additional discovery, effectively branded RPX a proxy for Apple.
  • A third-party petitioner with no litigation exposure is what finally produced a merits win. Black Swamp IP, LLC obtained the institution and the FWD — with no expert testimony — and then walked away from the appeal, forcing the USPTO to intervene. VirnetX characterizes the challenge in its filings as "the thirteenth challenge."
  • A pure pay-off filer appears in the chain. New Bay Capital, LLC filed four IPRs (including IPR2013-00378 on the '211 patent), reportedly demanded payment, and abandoned after VirnetX refused — extracting no decision on validity.
  • No defensive aggregator in the chain. "Unified Patents" appears in the Google Patents page only as the source of the litigation metadata, not as a petitioner. I found no Unified Patents-filed IPR against the '211 patent.
  • Patent owner behavior: VirnetX litigated aggressively through appeal and Director review, then strategically invited vacatur as moot once the claims were cancelled elsewhere — a rational move to erase adverse precedent, and one that succeeded.

Recommended next steps

  1. If you are a defendant and the demand letter cites US 7,921,211, stop negotiating and get the certificates. The patent expired 2021-09-29 and the claims were cancelled in the inter partes reexaminations 95/001,789 and 95/001,856. Request both reexamination certificates from USPTO Patent Center at the outset; that single step converts the dispute into a sanctions/cost-shifting posture.
  2. Cite the Black Swamp disposition precisely — and label it as vacated. You may quote the PTAB's own words: "we determine that Petitioner met its burden of showing, by a preponderance of the evidence, that claims 1, 2, 5, 6, 15, 16, 23, 27, 36, 37, 39, 40, 47, 51, and 60 of the '211 patent are unpatentable," Black Swamp IP, LLC v. VirnetX, Inc., IPR2016-00957, Paper 14 (P.T.A.B. June 12, 2017) — and disclose that the Federal Circuit vacated that FWD on 2022-04-04 (order; opinion page). The cleaner citation for invalidity is VirnetX Inc. v. Apple Inc., 931 F.3d 1363 (Fed. Cir. 2019) affirming invalidity in the reexaminations.
  3. Do not plead § 315(e)(2) estoppel. The only FWD was vacated and the only instituted-and-running trial (Microsoft's '615) ended without one. Pleading estoppel here invites a losing side-argument; plead expiry + cancellation + § 101/§ 112 for any residual claim, and Rule 11/§ 285 for any assertion of a cancelled, expired claim.
  4. No active proceedings to monitor. There is no institution-decision deadline, no oral hearing, and no statutory § 316(a)(11) FWD due date to track — the '211 docket is fully closed (last termination 2022-10-07). If, contrary to everything above, a new petition appears, note that the patent's expired status is a strong basis for discretionary denial under § 314(a)/§ 325(d).
  5. Fix the data gap in your workflow. The ODP-sourced "PTAB proceedings on file" block for this patent returned nothing while 11 IPRs exist. Any diligence that relies on that API alone will tell you a hard-fought, fully-adjudicated patent has a clean PTAB record. For VirnetX-family patents specifically, cross-check against PTAB E2E (https://ptacts.uspto.gov/ptacts/) by case number, the CAFC docket, and the Patent Owner's SEC filings, which narrate each proceeding.

Generated 9/30/2026, 11:22:51 PM

Ownership chain (3)

Asserters network →

Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.

  1. 2006-12-21 · recorded 2007-08-21 · reel 019722/0525 · Assignment

    SCIENCE APPLICATIONS INTERNATIONAL CORPORATIONVIRNETX INC.

    transfer-to-asserter

  2. ? · recorded 2007-08-21 · Assignment

    LARSON, VICTOR; MUNGER, EDMUND COLBY; WILLIAMSON, MICHAEL; SHORT, ROBERT DUNHAM, IIISCIENCE APPLICATIONS INTERNATIONAL CORPORATION

    chain-of-title cleanup

  3. 2012-01-19 · Change of Address

    VIRNETX INC.VIRNETX INC.

    administrative housekeeping

Assignment history

Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.

✓ Generated

I'll research the assignment chain, litigation history, and entity details for US 7921211 before drafting.

Let me dig for the specific reel/frame records and the SEC/litigation timeline.

Assignment & Ownership Analysis — US 7,921,211 ("Agile network protocol for secure communications using secure domain names")

Scope note / data gap. Records do exist for this patent, so the report proceeds. However, I could not open the Assignment Center directly (it is a JavaScript application and my tools return indexed text only). I confirmed one reel/frame from a primary document reproduced in the patent's own file history (IPR2013-00397, Ex. 1002, p. 240 of the '211 file history): Reel 019722 / Frame 0525, recorded 2007-08-21. The remaining reel/frame numbers and — critically for this assignment — the correspondent-of-record fields are NOT retrieved. I flag that explicitly below rather than guess. Verify at https://assignment.uspto.gov/patent/index.html (property number 7921211) and https://assignmentcenter.uspto.gov/.


Inventors

Inventor Residence (per later ADS) Employer at time of invention
Victor Larson Fairfax, VA Science Applications International Corporation (SAIC)
Robert Dunham Short, III Leesburg, VA SAIC
Edmund Colby Munger Brownsville, MD SAIC
Michael Williamson South Riding, VA SAIC
  • All four were SAIC personnel. Short's own declaration (Ex. 1053 in IPR2013-00397, dated 2012-04-18) states "When I was employed at SAIC, its business model was to sell hours to the federal government. SAIC was not structured to bring products to the market," and that the technology was funded in part by the CIA and In-Q-Tel (~$3.4M). The prosecution record likewise calls SAIC "the original assignee of the application that led to the '211 patent."
  • Unusual pattern — noted: this is not an inventor-departure case. The notable anomaly is that the four inventors' assignments to SAIC were not recorded until 2007-08-21 — years after execution and only four days after VirnetX filed the '211 continuation (2007-08-17) and ~6 months into VirnetX's Microsoft litigation. That is a diligence-driven chain-of-title cleanup, not a fire-sale precursor.
  • No evidence of inventors departing the original assignee within 12 months of filing. Short remained aligned with the asserting entity, supplying inventor declarations in VirnetX's defense of the family.
  • Inventor-employer relationships for periods after 2007 are not determinable from the sources reviewed.

Original assignee

As issued (2011-04-05): VirnetX Inc. (Google Patents: original assignee = VirnetX Inc.; current assignee = VirnetX Inc.). VirnetX, Inc. was incorporated in Delaware in August 2005 and is the principal operating subsidiary of VirnetX Holding Corporation (Nevada/Delaware holding company, NYSE American: VHC), created via a July 5, 2007 reverse merger with PASW, Inc. (renamed VirnetX Holding Corporation on 2007-10-29).

  • Primary line of business: patent licensing and enforcement, later supplemented by software. In the assertion period Fortune (2016-02-03) described it flatly: a "Nevada holding company called VirnetX, which does not sell any products." VirnetX only began marketing the Gabriel Secure Communication Platform / Connection Technology around 2015 — after the 2007 Microsoft, 2010 Apple, and related campaigns were under way. In the 2020s it markets VirnetX One, War Room, and Matrix (per its most recent 10-K).
  • The true original owner of the invention was SCIENCE APPLICATIONS INTERNATIONAL CORPORATION (SAIC), the defense/IT services contractor. SAIC never shipped a product embodying the claims; the technology was developed under government funding and licensed to third parties (e.g., a 2002 portfolio license to SafeNet).
  • Current status: SAIC (the original, NYSE: SAI) renamed itself Leidos Holdings, Inc. in 2013 and spun off a new SAIC; the assignment counterparty now sits inside the Leidos group as Leidos, Inc., f/k/a Science Applications International Corporation (see VirnetX's 10-K exhibit list: "Amendment No. 1 … by and between the Company and Leidos, Inc. dated as of November 2, 2006"). Leidos is an operating company, not in bankruptcy. VirnetX Holding Corp remains publicly listed but the '211 patent is recorded by Google Patents as "Expired – Fee Related," adjusted expiration 2021-09-29, with Unified Patents recording lifetime renewal fees of $0.

Assignment timeline

Reel/frame confirmed only where cited. Two entries below are recorded-date-verified from the Google Patents legal-events panel but frame numbers were not retrievable; correspondent fields for all entries are a data gap.

  • Recorded 2007-08-21 (execution date not retrieved; inventors' employment-era assignments) — Reel/Frame not retrieved

    • Conveyance: Assignment of Assignors' Interest (see document for details)
    • Assignor: LARSON, VICTOR; MUNGER, EDMUND COLBY; WILLIAMSON, MICHAEL; SHORT, ROBERT DUNHAM, III
    • Assignee: SCIENCE APPLICATIONS INTERNATIONAL CORPORATION
    • Correspondent: not retrieved (data gap — cannot be flagged as recurring)
    • Context: Late-filed employee-inventor assignment perfecting SAIC's record title, recorded the same day as the SAIC→VirnetX transfer — a chain-of-title cleanup, not a market transaction.
  • Executed ~2006-12-21 / recorded 2007-08-21 — Reel 019722 / Frame 0525 (confirmed from the '211 file history, IPR2013-00397 Ex. 1002)

    • Conveyance: Assignment of Assignors' Interest
    • Assignor: SCIENCE APPLICATIONS INTERNATIONAL CORPORATION
    • Assignee: VIRNETX, INC.
    • Correspondent: not retrieved (data gap)
    • Context: Transfer-to-asserter — SAIC's sale of the TARP family (including the application that became the '211) to a 15-month-old, product-less licensing entity under the December 21, 2006 Assignment Agreement, with SAIC retaining royalty, reversion, security-interest, and license-back rights.
  • Executed/recorded 2012-01-19 — Reel/Frame not retrieved

    • Conveyance: Change of Address of Assignee
    • Assignor: VIRNETX INC.
    • Assignee: VIRNETX INC.
    • Correspondent: not retrieved (data gap)
    • Context: Administrative housekeeping only; no change in substantive ownership.
  • Not recorded / unverified: VirnetX's SEC filings state it "granted SAIC a security interest in some of our intellectual property, including our patents." I found no evidence of a recorded USPTO security agreement in the material reviewed; treat the security interest as contractual, not of record.


Timeline diagram

timeline
    title Ownership of US 7921211
    1998 : Priority provisional filed by SAIC team
    2005 : VirnetX Inc incorporated in Delaware
    2006 : SAIC to VirnetX assignment executed Dec 21
    2007 : Application 11 840 560 filed Aug 17
         : Assignments recorded reel 019722 frame 0525
         : Microsoft suit filed Feb 15
    2010 : Apple suit filed in EDTX
    2011 : Patent issues Apr 5
    2012 : Change of address recorded Jan 19
         : Apple jury verdict 368 million
    2014 : Federal Circuit vacates damages
    2016 : Apple verdict 625 million
    2021 : Patent expires fee related

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT.
The patent moved from an operating defense contractor (SAIC, which Short confirms "was not structured to bring products to the market") to VirnetX, Inc., a Delaware corporation incorporated August 2005 — roughly 15 months before the December 21, 2006 Assignment Agreement — recorded at Reel 019722/0525 (2007-08-21). The transferee had no products in the relevant period (Fortune, 2016-02-03: "does not sell any products"). Mitigating nuance: the shell is a publicly traded holding company (VHC), not an anonymous single-member LLC, and its address (Zephyr Cove, NV) is a real corporate office rather than a registered-agent drop.

2. Known asserter in the chain — PRESENT.
VirnetX is a high-frequency patent plaintiff and is listed as the current assignee/parent entity on Unified Patents' patent page for the '211. Assertion campaign documented in this patent's litigation panel on Google Patents: EDTX Civil Nos. 6:10-cv-00417, 6:11-cv-00018, 6:12-cv-00855, 6:13-cv-00211, 6:13-cv-00351, plus Federal Circuit Nos. 13-1489, 14-1395, 17-2593, 17-2594, 18-1197, 19-1050, 21-1672, 22-2234, and Supreme Court Nos. 19-832 and 23-315. PTAB: IPR2013-00378 (Settlement), IPR2013-00397 and -00398, IPR2014-00174, -00175, -00615 (Settlement), -00616, -00618 (Settlement), IPR2015-00185, -00186, IPR2016-00957 (Final Written Decision). IPR2013-00397 was an Apple petition against the '211 specifically. Outcome scale: $105.8M Microsoft verdict (2010), $368.2M Apple verdict (2012-11-07), $625M Apple verdict (2016-02-03). Fortune's 2016 headline: "Apple Just Got Rocked by a Patent Troll."

3. Repeat correspondent across the chain — UNCLEAR.
I was unable to retrieve the correspondent-of-record fields for any of the three recorded events; the Assignment Center UI is not exposed to my tooling. The only correspondent name captured anywhere in the record is Finnegan, Henderson, Farabow, Garrett & Dunner LLP, 901 New York Avenue NW, Washington, DC — the prosecution correspondent on the later continuation's ADS, which is a different field and a firm that does substantial operating-company work. Not a finding. This is the single largest evidentiary hole in this report and should be filled by a manual Assignment Center lookup.

4. Cascading transfers — NOT PRESENT.
The chain is short and slow: two substantive links (inventors→SAIC; SAIC→VirnetX) executed 2006 and recorded on the same day, 2007-08-21, plus one housekeeping change-of-address entry recorded 2012-01-19. No chained LLCs, no <24-month cascade.

5. Pre-litigation transfer — PRESENT (portfolio level).
The SAIC→VirnetX assignment was executed 2006-12-21; VirnetX filed its first infringement complaint against Microsoft on 2007-02-15 — approximately eight weeks later. Amendment No. 1 to the Patent License and Assignment Agreement (November 2, 2006) and the later amendment expressly recite the parties' purpose of facilitating "VirnetX's enforcement of the SAIC Patent Rights against Microsoft." Nuance for this patent: the '211 did not issue until 2011-04-05, so it could not be asserted before issuance; its first assertion was in the 2010 Apple action (Civil No. 6:10-cv-00417 per the litigation panel), added after issuance. The transfer was thus pre-litigation for the portfolio, not six-months-pre-suit for the '211 itself.

6. Bankruptcy fire-sale — NOT PRESENT.
SAIC/Leidos is a solvent, publicly traded defense and IT services contractor. No Chapter 7/11 proceeding; no patent sale in bankruptcy.

7. Privateering — PRESENT (strong).
SAIC transferred the patents but kept an economic and control stake in VirnetX's enforcement: (i) 15% royalty on VirnetX's revenues, capped at $35M; (ii) 35% of litigation recoveries over costs from Microsoft and certain other named targets; (iii) 25% from other defendants; (iv) 10% of any acquisition proceeds; (v) reversion rights returning the patents to SAIC on payment default; and (vi) a security interest. The district court held that SAIC's right to review/object plus its equity interest left it with an ownership interest, so VirnetX lacked prudential standing and SAIC had to be joined — and indeed the Federal Circuit caption in No. 2013-1489 reads "VIRNETX, INC., Science Applications International Corporation." An operating company sharing an NPE's courtroom recoveries and standing is the textbook privateering fact pattern.

8. Defensive aggregator — NOT PRESENT.
The chain terminates at VirnetX Inc. / VirnetX Holding Corporation, an active asserter. No RPX, AST, LOT, Unified Patents, or OIN acquisition. Inverse signal: the asset has been consumed rather than neutralized by aggregation — reported status "Expired – Fee Related," adjusted expiration 2021-09-29, lifetime renewal fees $0 per Unified Patents, i.e., no further maintenance fees were paid on a fully litigated patent.


Verdict

NPE — high confidence.

The chain shows a 2005-formed, product-less licensing entity acquiring the TARP family from operating contractor SAIC (executed 2006-12-21; recorded at Reel 019722/Frame 0525 on 2007-08-21, the same day the inventors' own assignments were first recorded), with SAIC retaining a 35%/25% share of litigation recoveries, reversion rights, a security interest, and ultimately co-plaintiff status in VirnetX v. Apple, No. 2013-1489 — a privateering structure, not an arm's-length sale. VirnetX then asserted the '211 across a decade of EDTX and PTAB proceedings (IPR2013-00397 Apple petition; $368.2M and $625M verdicts), while contemporaneous press and VirnetX's own filings confirm no product embodying the claims existed during the assertion period. The remaining open item is the correspondent-of-record data gap, which does not change the two independent strong signals already on the record.

Verification links: https://assignment.uspto.gov/patent/index.html · https://assignmentcenter.uspto.gov/ · https://patents.google.com/patent/US7921211/en (legal events) · Reel/frame source: https://www.docketalarm.com/cases/PTAB/IPR2013-00397/Inter_Partes_Review_of_U.S._Pat._7921211/ (Ex. 1002, '211 file history) · https://portal.unifiedpatents.com/patents/patent/US-7921211-B2

Generated 9/30/2026, 11:21:59 PM

Prior art

Earlier patents, publications, and products that may anticipate or render the claims unpatentable.

✓ Generated

I'll research US Patent 7921211 and its prior art citations. Let me start with targeted searches.

Let me gather the specific front-page references and the IPR prior-art assertions for this patent.

Let me get the full front-page "References Cited" list and the reexamination prior art for this patent.

US Patent 7,921,211 — Prior Art Analysis

Important methodological caveat up front: I was unable to retrieve the complete PTO‑892 / "References Cited" front page of US 7,921,211 directly from the USPTO PatentCenter/Patent Full‑Text database within this session. The authoritative Google Patents text supplied for this patent reproduces the specification and claims but omits the "References Cited" section, which appears as image data on the face of the patent. What follows is reconstructed from (a) the partial front‑matter rendered by Google Patents/Unified Patents for this exact number, and (b) the reexamination and PTAB records that cite the same references against this exact patent. Where I could not independently confirm an item, I say so rather than filling the gap.


1. Bibliographic identification (as it appears literally)

Field Value
Patent number US 7,921,211 B2
Title Agile network protocol for secure communications using secure domain names
Appl. No. 11/840,560
Filed 2007‑08‑17
Issued 2011‑04‑05
Priority date 1998‑10‑30 (prov. 60/106,261; 60/137,704 filed 1999‑06‑07)
Inventors Victor Larson; Robert Dunham Short, III; Edmund Colby Munger; Michael Williamson
Assignee VirnetX Inc. (originally Science Applications International Corp.)
Legal status Expired – Fee Related (adjusted expiration 2021‑09‑29)

Critical prosecution nuance for §102: 11/840,560 is a continuation of 10/714,849 (filed 2003‑11‑18), which is a continuation of 09/558,210 (filed 2000‑04‑26), a CIP of 09/504,783 (filed 2000‑02‑15). Claims directed to the secure‑domain‑name / DNS‑proxy subject matter therefore can carry an effective date later than 1998‑10‑30 (up to ~2000), which is why several 1999 references were treated as prior art against this patent.


2. References cited on the face of the patent (partial, from the Google Patents/Unified Patents front matter)

Google Patents lists "Patent Art (71)" for this number. The following were confirmed in the retrieved front matter (dates are the priority/publication dates as displayed):

Citation Date Brief description
US 6262987 B1 1998‑03‑25 System and method for reducing latencies while translating Internet host-name/address bindings
US 5764906 A 1995‑11‑06 Universal electronic resource denotation, request and delivery system
GB 2317792 A 1996‑09‑17 Virtual private network for encrypted firewall
US 5511122 A 1994‑06‑02 Intermediate network authentication
WO 2000017775 A2 1998‑09‑21 (SAIC) User‑defined dynamic collaborative environments
WO 2000070458 A1 1999‑05‑16 (Invicta Networks) Method of communications and communication network intrusion protection
US 5870610 A 1996‑06‑27 Autoconfigurable method and system having automated downloading
EP 0838930 A2 1996‑10‑24 (Compaq) Pseudo network adapter for frame capture, encapsulation and encryption
US 2007/0208869 A1 2004‑10‑28 (Go Daddy) Digital identity registration
GB 2340702 A 1998‑05‑28 (Oracle) Accessing a server in a VPN protected by a firewall
US 6226748 B1 1997‑06‑11 Architecture for virtual private networks
US 6101182 A 1996‑04‑17 Universal access multimedia data network
EP 0814589 A2 1996‑06‑18 (AT&T) System and method for automated network reconfiguration
US 2004/0199608 A1 2003‑04‑03 Gathering domain‑name registration info from a registrant via a registrar's web site
US 2007/0266141 A1 2005‑04‑18 Processing taxonomic extensions on the WWW
US 5864666 A 1996‑12‑22 Web‑based administration of IP tunneling on Internet firewalls
US 7490151 B2 1998‑10‑29 Establishment of a secure communication link based on a DNS request (sibling in same family)
US 5311593 A 1992‑05‑12 (HP) Security system for a network concentrator
US 5629984 A 1995‑03‑09 System and method for data security
US 2004/0199493 A1 — Registering a stream of domain names received via a registrar's web site
JP H04363941 A 1991‑02‑17 (NTT) Eavesdropping‑prevention method in ATM communication
US 2001/0049741 A1 1999‑06‑17 (F5) Load distribution on a wide‑area network
GB 2334181 A 1998‑02‑05 (NEC) Over‑the‑air re‑programming of radio transceivers
US 5805803 A — (name‑space / directory‑style reference)

The full front page (71 items) also includes a long conventional list of earlier U.S. patents carried across the family — e.g., US 2,895,502 (Roper, 1959), US 4,405,829 (Rivest), US 4,677,434 (Fascenda), US 4,761,334 (Sagoi), US 4,885,778 (Weiss), US 4,912,762 (Lee), US 4,920,484 (Ranade), US 4,933,846 (Humphrey), US 4,952,930 (Franaszek), US 4,988,990 (Warrior), US 5,007,051 (Dolkas), US 5,070,528 (Hawe), US 5,164,988 (Matyas), US 5,204,961 (Barlow), US 5,276,735 (Boebert), US 5,303,302 (Burrows), US 5,311,593 (Carmi), US 5,329,521 (Walsh), etc. I was not able to confirm the precise membership and ordering of every one of these 71 items for this exact number, so I flag rather than assert them as the 211 front‑page list.


3. The references actually asserted against the '211 claims (§102 focus)

These matter far more than the face‑of‑patent citations, because they are the ones tested on the merits.

A. Inter partes reexamination 95/001,789 (and 95/001,856), order mailed 2012‑01‑18

Ten references were asserted, and claims 1–60 were rejected. The set (as listed in the reexamination office action) is:

Reference Date Brief description Claims / §102 posture
Solana, E. et al., "Flexible Internet Secure Transactions Based on Collaborative Domains," Lecture Notes in Computer Science, Vol. 1361, pp. 37–51 1997 Secure internet transactions using collaborative/domain‑based trust and DNS‑style lookup Asserted as §102 anticipation, alone and in combinations, esp. claim 1 and dependent claims
US 6,557,037 B1 (Provino) filed 1998‑12‑23; issued 2003‑04‑29 Assigning/returning network addresses in a virtual private network via names Asserted §102(e), alone and with RFC 2230/2504/920; Office Action rejected claims 1, 36, 60 as obvious over Provino + RFC 2230 (Ground 13)
US 6,496,867 B1 (Beser) filed 1999‑10‑18; issued 2002‑12‑17 Tunneling that hides identities of originating/terminating endpoints via a trusted third party Office Action rejected claims 1, 36, 60 under §102(e) as anticipated by Beser (Ground 21); Patent Owner argued Beser lacks encryption and never discloses a DNS "indication of secure link support"
RFC 2230 (Atkinson), "Key Exchange Delegation Record for the DNS" Nov. 1997 DNS resource record for delegating key‑exchange Anticipation/obviousness of claims 1, 36, 60 (with Provino/Beser)
RFC 2538 (Eastlake & Gudmundsson), "Storing Certificates in the DNS" Mar. 1999 DNS‑held certificates; supports DNS‑based security signaling §102(a)/(e)-style prior art against the DNS‑claim set
RFC 2401 (Kent & Atkinson), "Security Architecture for the Internet Protocol" Nov. 1998 IPsec architecture Combination art for secure‑link limitations
RFC 2065 (Eastlake, Kaufman), "Domain Name System Security Extensions" Jan. 1997 DNSSEC Combination art for authenticated DNS
RFC 920 (Postel & Reynolds), "Domain Requirements" Oct. 1984 Traditional TLD definitions Combination art (top‑level‑domain / naming limitations)
RFC 2504 (Guttman et al.), "Users' Security Handbook" Feb. 1999 End‑user security practices Combination art

Note on a label discrepancy: the reexamination document as retrieved renders the citation number as "RFC 2064" but labels the Exhibit as "RFC 2065." I am reporting the identifiers literally as they appear; the substantive DNS‑Security‑Extensions document is conventionally cited as RFC 2065. I have not auto‑corrected the document.

B. PTAB proceedings on this number

  • IPR2014‑00174 / ‑00175 (RPX Corp. v. VirnetX) — challenged claims 1, 2, 5, 6, 8, 14, 17, 19, 20, 23, 27–30, 33, 34, 36, 47, 51, 60 (‑174) and 1, 3, 15–18, 20–26, 31, 32, 35–37, 47, 51, 60 (‑175). Grounds rested on:
    • US 6,557,037 (Provino), US 6,225,993 B1, US 6,496,867 (Beser);
    • Aventail Corp., "Aventail Connect v3.01/v2.51 Administrator's Guide" and "Aventail Extranet Center v3.0 Administrator's Guide" (1996–99) — asserted as §102 anticipation of claims 1–3, 5–8, 14–60;
    • Kiuchi & Kaihara, "C‑HTTP — The Development of a Secure, Closed HTTP‑based Network on the Internet," IEEE Symp. on Network & Distributed System Security (1996);
    • Rescorla & Schiffman, "The Secure HyperText Transfer Protocol" (1996); Mockapetris, RFC 1034 (1987);
    • Dave Kosiur, Building and Managing Virtual Private Networks (Sept. 1, 1998).
      These petitions were denied (June 5, 2014) on real‑party‑in‑interest/time‑bar grounds, so the §102 merits were not reached on that record.
  • IPR2013‑00397 / ‑00398 and IPR2015‑00185 / ‑00186 also targeted 7,921,211; the record shows exhibit sets containing the Aventail manuals, Provino, Beser and RFC publications.
  • IPR2016‑00957 (Black Swamp IP, LLC v. VirnetX) — instituted Sept. 9, 2016 against 7,921,211.
  • District court: In the related E.D. Tex. cases (6:10‑cv‑00417; 6:12‑cv‑00855; 6:13‑cv‑00211), Apple asserted invalidity of the '504 and '211 patents over Kiuchi; the jury found the claims not anticipated by Kiuchi.

4. §102 anticipation candidates and the claims they map to

Reference §102 basis Claims potentially anticipated
US 6,496,867 (Beser) §102(e) (earlier effective filing) Claims 1, 36, 60 per the reexamination Office Action, Ground 21. Patent Owner's rebuttal: Beser teaches away from encryption, so no "secure communication link" and no DNS "indication" of secure‑link support.
US 6,557,037 (Provino) §102(e) Independent claims 1, 36, 60 (and dependent claims 2, 5, 6, 8, 14, 17, 19, 20, 23, 27–30, 33, 34, 47, 51) as mapped in the Cisco/Apple invalidity charts (Exhibits C3–C5).
Solana et al. (1997) §102(b) Claim 1 and its dependents (Exhibit C1/C2 charts: Solana alone, and with RFC 920/Reed/Beser).
Aventail Administrator's Guides §102(b) Claimed by petitioner as anticipating claims 1–3, 5–8, 14–60; the PTAB rejected the single‑reference premise (the exhibit merges two separate manuals), so this theory did not survive institution.
RFC 2230 / RFC 2538 / RFC 2065 / RFC 2401 / RFC 920 / RFC 2504 §102(b) (RFC 920, 2065, 2230, 2401 pre‑date 10/30/1998) or §102(a)/§103 (RFC 2504, 2538 are 1999 and post‑date the 1998 priority but pre‑date the 2000 CIP) Primarily combination/obviousness art; individually mapped to the DNS‑naming and secure‑link limitations of claim 1 et seq.
Kiuchi & Kaihara (1996) §102(b) Asserted against the FaceTime‑related claims; jury found no anticipation.
Kosiur, Building and Managing VPNs (1998) §102(b) Asserted in IPR2014‑00618 against claim 1 and dependents; proceeding terminated by settlement.

Claim 1 (independent, reproduced verbatim from the record): "A system for providing a domain name service for establishing a secure communication link, the system comprising: a domain name service system configured and arranged to be connected to a communication network, store a plurality of domain names and corresponding network addresses, receive a query for a network address, and indicate in response to the query whether the domain name service system supports establishing a secure communication link."

The §102 battleground therefore reduces to two limitations: (i) whether the reference discloses a domain‑name service that returns an indication that it supports a secure communication link (the distinguishing feature VirnetX repeatedly relied on), and (ii) whether the disclosed link is genuinely secure (encrypted).


5. Honest limitations of this report

  1. I could not verify the complete, verbatim PTO‑892 "References Cited" list for this exact grant; the list above is a partial reconstruction and should be confirmed against the patent's printed front page before being used in a filing.
  2. I could not retrieve the full claim‑by‑claim §102 charts (Exhibits C1–C8) for this patent; the claim mappings shown are drawn from the Office Action text, PTAB petition summaries, and the E.D. Tex. claim‑chart captions, not from the charts themselves.
  3. Several identifiers appear with variant spellings in the record (e.g., "Besar" for Beser; the RFC 2064 / RFC 2065 mismatch; "RFC 1920" vs "RFC 920" in one exhibit caption). I have reported them literally and flagged, not corrected, them.
  4. Where a search result contradicts my training data, I have followed the search results; where I lack high confidence, I have said so rather than inventing a citation.

Key URLs: Google Patents — https://patents.google.com/patent/US7921211/en • Unified Patents art page — https://portal.unifiedpatents.com/patents/patent/US-7921211-B2 • Reexam/PTAB record — https://www.docketalarm.com/cases/PTAB/IPR2013-00397/ • IPR2014‑00174/-00175 denial (RPX) — http://cdn.patentlyo.com/media/2016/03/VirnetXPetitionWhole.pdf • IPR2016‑00957 — https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2016-00957

Generated 9/30/2026, 11:21:24 PM

Obviousness

Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.

✓ Generated

I'll start by locating the prior-art citations associated with US7921211, since the page text provided to me does not include an explicit "Prior Art" reference table.

Let me pull the actual prior-art references listed for this patent and the claim set, so I can map references to limitations.

I have the litigation/PTAB record. Now let me get the actual claim language and the specific IPR grounds (references and §103 combinations) asserted against this patent.

Obviousness Analysis — U.S. Patent No. 7,921,211 under 35 U.S.C. § 103

0. Sourcing note (read this first)

The Google Patents page you supplied (https://patents.google.com/patent/US7921211/en) does not contain a discrete, labeled "Prior Art" citations table in the text provided to me — the fetched content includes the bibliographic data, the global litigation/PTAB docket, the CPC classification tree, and a "Definitions" block (which is specification text — Figures 1–37 narrative, not the "References Cited" list). Rather than fabricate a citation list, I reconstructed the prior-art of record for US 7,921,211 from the associated public records for this exact patent:

If the "Prior Art" section you intended is a different list, tell me which and I will re-run the mapping.


1. The claims at issue (and why claim scope drives the analysis)

US 7,921,211 B2 issued 2011-04-05, filed 2007-08-17 (Appl. No. 11/840,560), listing a 1998-10-30 priority date, with 60 claims. The IPR challenge addressed claims 1, 2, 6, 14–17, 19–23, 26–41, 43–47, and 50–60. Claim 1, as reproduced in the Board's institution decision, is a system claim of the form:

"A system for providing a domain name service for a [communication network] … comprising: a domain name service system configured and arranged to be connected to a communication network, store a plurality of domain names and corresponding network addresses, receive a query for a [network address] …"

The specification block you supplied confirms the disclosed subject matter: an SDNS that "authenticates a query for a secure computer network address," secure addresses "based on a non-standard top-level domain name, such as .scom, .sorg, .snet, … .sedu, .smil and .sint"; a DNS proxy server that "transparently creates a virtual private network in response to a domain name inquiry"; a "go secure"/one-click VPN; and application-layer encapsulation of traffic to traverse firewalls.

Important constraint on any §103 theory. The claims were narrowed in litigation:

Term Construction Effect on obviousness
"secure communication link" "a direct communication link that provides data security through encryption" (Cisco; adopted in Mitel, E.D. Tex.) Forecloses proxy-mediated (non-direct) linkage — the exact issue VirnetX pressed against Kiuchi
"domain name service" "a lookup service that returns an IP address for a requested domain name to the requester" Requires return to the requester, not merely resolution
"domain name" "a name corresponding to an IP address" Narrow
"secure name service" "a lookup service that returns a secure network address for a requested secure name" Requires the returned address itself be secure

Sources: https://docs.justia.com/cases/federal/district-courts/texas/txedce/6:2011cv00018/[127492/307](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=127492-0307)/; https://storage.courtlistener.com/recap/gov.uscourts.txed.[124653](/patent/124653).173.0.pdf; https://www.courtlistener.com/docket/[4385971/180](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=4385971-0180)/virnetx-inc-v-apple-inc/authorities/

Caveat on the priority date. Google lists 1998-10-30, but the SDNS/one-click subject matter entered through the CIP chain (09/504,783 filed 2000-02-15 → 09/558,210 filed 2000-04-26 → 10/714,849 filed 2003-11-18 → 11/840,560 filed 2007-08-17). If the SDNS claims are only entitled to a 2000 effective date, references dated 1999 (RFC 2538, RFC 2504, the Aventail Connect guides, Invicta) become available art. I cannot resolve this from the supplied record and flag it as a genuine open question.


2. Level of ordinary skill

The Board credited a "moderately high" skill level in the VirnetX family (IPR2014-00403, Paper 42 at 35), with petitioner expert testimony describing a master's degree in computer science/computer engineering plus roughly two years of experience (or equivalent). See https://ptacts.uspto.gov/ptacts/public-informations/petitions/1459025/download-documents?artifactId=eGutug6rTJoPoEBtvKa0KWudwm8A5-sgP4GDHhJE0RDVsEG5r8QmyQU. This matters because a moderately-high-skill artisan in 1998–2000 would have been conversant with DNS (RFCs 1034/1035), HTTP security (S-HTTP), IPsec (RFC 2401), and DNS security extensions.


3. The prior art of record

A. References actually applied in PTAB (the strongest §103 ground for this patent):

  • Kiuchi & Kaihara, "C-HTTP – The Development of a Secure, Closed HTTP-based Network on the Internet," IEEE Proc. SNDSS 1996 (Ex. 1002) — client-side proxy, a C-HTTP name/certification service used "instead of DNS," authentication and connection establishment.
  • Rescorla & Schiffman, "The Secure Hypertext Transfer Protocol," Internet Draft, Feb. 1996 (Ex. 1004) / RFC 2660 — S-HTTP, "secure communication mechanisms between an HTTP client-server pair," flexible cryptographic algorithms/modes/parameters.
  • Mockapetris, RFC 1034, "Domain Names – Concepts and Facilities," Nov. 1987 (Ex. 1005) — name servers, queries, recursive/iterative resolution, the DNS naming hierarchy. (RFC 1035, "Domain Names – Implementation and Specification," is the companion cited in reexam.)
  • Provino (alternative primary reference), Kosiur, Lindblad — relied on in the Board's institution decision for certain claims (see §4.F).
  • Aventail Connect v3.01/v2.51 Administrator's Guide (1999).
  • Kim, D. et al./Reed-style anonymity art is treated separately below.

B. References asserted in the inter partes reexamination of 7,921,211 (ten plus six):

  • Solana & Harms, "Flexible Internet Secure Transactions Based on Collaborative Domains," LNCS Vol. 1361, 37–51 (1997)
  • RFC 2230 (Atkinson), "Key Exchange Delegation Record for the DNS," Nov. 1997
  • RFC 2538 (Eastlake et al.), "Storing Certificates in the Domain Name System (DNS)," March 1999
  • RFC 2401 (Kent et al.), "Security Architecture for the Internet Protocol," Nov. 1998
  • RFC 2065 (Eastlake et al.), "Domain Name System Security Extensions," Jan. 1997 — note the Office Action text reads "IETF RFC 2064 … attached … as Exhibit X7 ('RFC 2065')"; I am reporting the identifier as it literally appears, without correction.
  • RFC 920 (Postel et al.), "Domain Requirements," Oct. 1984
  • RFC 2504 (Guttman et al.), "Users' Security Handbook," Feb. 1999
  • Reed, M. et al., "Proxies for Anonymous Routing," 12th Annual Computer Security Applications Conf., Dec. 9–13, 1996
  • Background/knowledge-in-the-field: Goldschlag et al., "Hiding Routing Information," Workshop on Information Hiding, Cambridge, May 1996; RFC 1035 (Mockapetris), Nov. 1987; plus four further items truncated in the excerpt I retrieved.

C. Art listed in the Unified Patents "Patent Art (71)" set (selected, with dates as listed there):
US-6262987-B1 (1998-03-25, "System and Method for Reducing Latencies While Translating Internet Host Name-address Bindings"); US-5764906-A (1995-11-06, "Universal Electronic Resource Denotation, Request and Delivery System"); GB-2317792-A (1996-09-17, "Virtual Private Network for Encrypted Firewall"); US-5511122-A (1994-06-02, "Intermediate Network Authentication"); WO-2000017775-A2 (1998-09-21, SAIC, "User-defined Dynamic Collaborative Environments"); WO-2000070458-A1 (1999-05-16, Invicta Networks, "Method of Communications and Communication Network Intrusion Protection Methods and Intrusion Attempt Detection System"); US-5870610-A (1996-06-27, autoconfigurable downloading); EP-0838930-A2 (1996-10-24, Compaq, "Pseudo Network Adapter for Frame Capture, Encapsulation and Encryption"); GB-2340702-A (1998-05-28, Oracle, "Accessing a Server in a Virtual Private Network Protected by a Firewall"); US-6226748-B1 (1997-06-11, "Architecture for Virtual Private Networks"); US-6101182-A (1996-04-17, "Universal Access Multimedia Data Network"); EP-0814589-A2 (1996-06-18, AT&T); US-5864666-A (1996-12-22, Trend Micro, "Web-based Administration of IP Tunneling on Internet Firewalls"); US-5311593-A (1992-05-12, "Security System for a Network Concentrator"); US-5629984-A (1995-03-09, "System and Method for Data Security").

Two warnings about that list. (i) US-20070208869-A1 (pub. 2004-10-28), US-20040199608-A1 (pub. 2003-04-03), US-20070266141-A1 (pub. 2005-04-18) and US-6333272-B1 (2000-10-05) post-date the 1998/2000 priority window and are almost certainly listed as forward citations, i.e., not §102/§103 art against this patent. Do not use them. (ii) US-7490151-B2 is in the same family (its title, "Establishment of a Secure Communication Link Based on a Domain Name Service (DNS) Request," mirrors the '211 disclosure) and WO-2000017775-A2 is SAIC's own earlier application — both require careful §102(e)/§102(b) analysis rather than being assumed usable.


4. §103 combinations and the motivation to combine

A. Core combination — Kiuchi + RFC 2660 (Rescorla/S-HTTP)

This is the combination the Board instituted ("claims 1, 2, 6–8, and 12–14 … obvious over Kiuchi and RFC 2660" in the sibling '151 review, and "claims 1, 2, 6, 14–17, 19–23, 26–41, 43–47, and 50–60" instituted in the '211 proceedings).

  • Kiuchi supplies: the client-side proxy, a name/certification service that answers a request "asking to resolve the hostname in the request into an IP address," evaluates "whether the hostname specifies a destination that is part of the closed network," and returns "an IP address associated with the secure hostname"; plus authentication and connection establishment.
  • RFC 2660/Rescorla supplies: "secure communication mechanisms between an HTTP client-server pair," i.e., the encryption layer that makes the resulting link a secure link.
  • Motivation (MPEP 2143(A), (C), (F)): both references are in the same field (secure HTTP over the Internet), address the same problem (eavesdropping/unauthorized access), and the Board expressly reasoned that RFC 2660 "further demonstrates that it would have been obvious … to have created a secure connection for a client and server in which the secure connection is 'between' … the client and server." Combining a secure naming/authentication service with a known secure transport yields nothing more than the predictable sum of known elements. This is the cleanest §103 theory of record.
  • Counter-argument VirnetX has pressed (and which narrows the theory): Kiuchi's proxy-mediated link is not a "direct communication link," so the combination does not meet the judicially construed "secure communication link." Any §103 theory must therefore show a direct client–server encrypted link, not merely proxy-to-proxy.

B. Kiuchi (or Provino) + RFC 1034

The Board instituted on Kiuchi or Provino + RFC 1034 for claims 20, 21, 35, 44, 45, and 59 (and proposed the same in the sibling case, contingent on a broader construction of "DNS request").

  • RFC 1034 supplies the standard DNS query/response architecture, name servers, resource records, and the hierarchical naming structure — including top-level domains.
  • Motivation (MPEP 2143(B), (D)): Kiuchi's proprietary name service performs a DNS-like function ("instead of DNS"); substituting/implementing it in the industry-standard DNS framework of RFC 1034 is a simple substitution of a known element to obtain a predictable result, and the standard is a known improvement-ready baseline. The Board noted RFC 1034 is a properly authenticated printed publication ("Distribution of this memo is unlimited").

C. DNS-security cluster — Kiuchi/RFC 1034 + RFC 2065 + RFC 2230 + RFC 2538 + Solana; and the 1998 Eastlake Internet Draft

This cluster targets the "secure domain name / secure network address / authenticated query" limitations that distinguish the '211 from a plain DNS.

  • RFC 2065 teaches DNS data-origin authentication and transaction/request authentication; RFC 2230 teaches delegating key-exchange records via DNS; RFC 2538 teaches storing certificates in the DNS; Solana teaches secure Internet transactions built on collaborative domains; the 1998 Eastlake Internet Draft (per EP 2 323 335 A3) teaches DNS security extensions.
  • Motivation (MPEP 2143(A), (C), (E)): Given a domain name service that must return a secure network address for a secure name, the finite, identified, predictable set of solutions was the then-emerging DNSSEC family. A POSITA seeking to authenticate a DNS lookup and bind a name to a cryptographic credential would have been led directly to these documents; the result (an authenticated lookup returning a secure address) is the expected output of the known technique.

D. Name-resolution and latency art — US-5764906-A + US-6262987-B1 + RFC 1034/1035

  • US-5764906-A ("Universal Electronic Resource Denotation, Request and Delivery System," 1995-11-06) discloses mapping a human-readable resource identifier to a network location; US-6262987-B1 ("System and Method for Reducing Latencies While Translating Internet Host Name-address Bindings," 1998-03-25) discloses caching/expediting hostname→address translation.
  • Motivation (MPEP 2143(C), (F)): Both address the well-known problem of name-to-address resolution performance; applying a cache/fast-translation technique to a new DNS-like service is the use of a known technique to improve a similar device in the same way, a predictable result.

E. Secure-link-across-firewall cluster — GB-2317792-A + GB-2340702-A + US-6226748-B1 + US-5864666-A + EP-0838930-A2 (+ US-5870610-A)

Targets the "establishing a secure communication link / transparent VPN creation / encapsulation through a firewall" limitations, and the specification's own Figures 36–37 (application-layer proxy tunneling via UDP/TCP/ICMP through a firewall).

  • Motivation (MPEP 2143(A), (D), (F)): GB-2317792-A ("Virtual Private Network for Encrypted Firewall"), GB-2340702-A ("Accessing a Server in a Virtual Private Network Protected by a Firewall"), US-6226748-B1 ("Architecture for Virtual Private Networks"), US-5864666-A (IP tunneling via firewalls) and EP-0838930-A2 (encapsulation/encryption adapter) all solve the recognized problem of providing encrypted connectivity through firewall/NAT boundaries. US-5870610-A (autoconfigurable download) supports the "automatic software module download/one-click" limitations. Combining these with a DNS-triggered secure link is a predictable aggregation of known techniques responding to the same market demand.

F. Address-agility / anonymity cluster — WO-2000070458-A1 (Invicta) + Reed "Proxies for Anonymous Routing" + Goldschlag "Hiding Routing Information" + US-5511122-A + WO-2000017775-A2

Targets the dynamic/secure network address and anti-traffic-analysis aspects (the "agile" half of the patent), including the possibility that the "secure network address" is not a conventional static IP address.

  • Motivation (MPEP 2143(A), (C), (E)): Reed and Goldschlag are the canonical anonymous-routing (onion/mix) references and expressly motivate hiding routing/address information; Invicta's intrusion-protection method motivates changing addresses to defeat probing; US-5511122-A (Navy) motivates intermediate network authentication. Where the claims require a secure address that is not the conventional one, these references supply it and supply the reason to use it (anonymity + attack resistance) — the very rationale the '211 specification recites.

G. Domain-registration cluster — RFC 920 + US-20040199608-A1 + US-20070208869-A1

For any claim reciting registration/ownership of a secure/unsecured name (cf. the '181 sibling's "requesting and obtaining registration of a secure/unsecured name," construed without construction).

  • Caveat: US-20040199608-A1 and US-20070208869-A1 post-date the priority window (see §3) and should not be used. RFC 920 ("Domain Requirements," Oct. 1984) alone supports that standard/non-standard TLD administration and registration were long-known; extending a registration workflow to a new non-standard TLD is a simple substitution (MPEP 2143(B)) with a predictable result.

H. Board-instituted combinations I cannot fully characterise

The Board also instituted Provino + Kosiur (claims 29–32, 53–56) and Kiuchi + Lindblad (claims 32, 56). I do not have high-confidence knowledge of the contents of Provino, Kosiur, or Lindblad from the retrieved record, and I will not invent what they teach. Their role in the institution decision is documented at the PTACTS link above; the underlying references should be pulled directly before relying on them.


5. Why a PHOSITA would have combined — the general rationales

Across A–G, the motivations are the standard KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) / MPEP 2143 rationales:

  1. Known elements combined by known methods → predictable result. A DNS-style lookup (RFC 1034/1035) + a security layer (RFC 2065/2230/2538, S-HTTP, IPsec per RFC 2401).
  2. Simple substitution. Replacing a proprietary name service (Kiuchi's C-HTTP name server) with standard DNS, or a plain name with a secure/non-standard TLD name.
  3. Known technique improving a similar device in the same way. Caching DNS bindings (US-6262987-B1), tunneling through firewalls (US-5864666-A, GB-2340702-A), and address hopping (Invicta).
  4. Finite, identified, predictable solutions / "obvious to try." For securing DNS, the DNSSEC-family documents were the identified set.
  5. Design incentives and market forces. The specification itself recites the same demands (data security + anonymity; defeating DoS at chokepoints; traversing firewalls), which is evidence of what the market was already demanding.

6. Procedural posture worth noting

  • IPR2014-00615 / -00618 (Microsoft) were instituted and consolidated; IPR2014-00616 was denied institution. Institutions on §102 Kiuchi/Provino and §103 Kiuchi + RFC 2660 / Kiuchi or Provino + RFC 1034 / Provino + Kosiur / Kiuchi + Lindblad.
  • IPR2014-00174, -00175 (RPX) and IPR2013-00397, -00398 and IPR2015-00185, -00186 are recorded as "Not Instituted – Procedural."
  • IPR2013-00378 (New Bay Capital) and IPR2014-00618 are recorded as settlement dispositions in the docket summary.
  • IPR2016-00957 reached a Final Written Decision (docket summary does not give the outcome in the fetched text).
  • On appeal, the Federal Circuit affirmed that Kiuchi anticipates the challenged claims of the '135 patent and claims 13–14 of the '151 patent (VirnetX v. Cisco, No. 22-2234 line of appeals). I did not find, in the retrieved material, a holding on the ultimate patentability of the '211 claims, so I am not asserting one.

Also relevant to how far a §103 theory reaches: VirnetX's asserted prosecution disclaimer that the secure communication link must be "direct" (used to distinguish an earlier reference) narrows the claims and correspondingly narrows the space of available obviousness combinations.


7. Bottom line

On the record of this patent, the strongest §103 case is the one the Board itself credited:

Kiuchi (C-HTTP secure closed network with a name/certification service) in view of RFC 2660 / Rescorla (S-HTTP secure transport), optionally further in view of RFC 1034 (standard DNS query/response architecture). Each reference is in the same field of secure IP/HTTP communications, solves a complementary part of the same problem, and the combination yields nothing beyond the predictable aggregation of known elements — satisfying MPEP 2143(A), (C) and (F).

Secondary, claim-specific combinations: RFC 2065 / RFC 2230 / RFC 2538 / Solana for the "secure name → secure address" and authenticated-query limitations; GB-2317792-A / GB-2340702-A / US-6226748-B1 / US-5864666-A / EP-0838930-A2 for secure-link-through-firewall and transparent-VPN limitations; Invicta WO-2000070458-A1 / Reed / Goldschlag for the address-agility and anonymity limitations; RFC 920 for name-registration limitations.

Explicit limits of this opinion: (a) the page as fetched contained no labeled "Prior Art" section, so the above is reconstructed from the patent's reexamination and PTAB records; (b) I have not verified the content of Provino, Kosiur, or Lindblad; (c) the effective priority date of the SDNS claims (1998 vs. 2000) is unresolved and materially changes which references qualify; (d) I have not read the full text of the 60 claims of the '211 patent, so the limitation-by-limitation mapping above is a framework, not a chart.

Generated 9/30/2026, 11:21:57 PM

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