US 8504697

I'll verify this against live sources before summarizing.

US 8,504,697 B2 — Verification Summary

Sources checked: Google Patents full text (supplied, authoritative), the issued patent PDF (Exhibit 1001 in IPR2014-00237), Finnegan's posted Final Written Decision in IPR2014-00238, PTAB/CAFC briefing excerpts, and VirnetX investor filings. I attempted targeted searches of CAFC 2026 dockets — see the litigation section below.

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Bibliographic data

Abstract (as issued)

A system and method connect a first network device and a second network device by initiating a secure communication link. The system includes one or more servers configured to: receive, from the first network device, a request to look up a network address of the second network device based on an identifier associated with the second network device; determine, in response to the request, whether the second network device is available for a secure communications service; and initiate a secure communication link between the first network device and the second network device based on a determination that the second network device is available for the secure communications service; wherein the secure communications service uses the secure communication link to communicate at least one of video data and audio data between the first network device and the second network device.

Independent claims in plain language

Claim 1 (method). A three‑step method performed on behalf of two network devices:

1. Intercept a request coming from the first device that asks to look up an IP address of the second device by its domain name (i.e., stand in the path of the DNS lookup rather than answering it normally);
2. In response to that request, determine whether the second device is available for a secure communications service (i.e., is the destination enrolled/capable of a secure connection?);
3. Initiate a secure communication link between the two devices when the answer is yes;
   where the secure communications service then carries video and/or audio data between the two devices over that link.

In short: intercept the name lookup, check whether the named peer supports secure communications, and if so bring up the secure link that carries the media session.

Claim 16 (system). The apparatus counterpart of claim 1 — one or more servers configured to receive the network‑address lookup request keyed to an identifier of the second device, determine whether the second device is available for the secure communications service, and initiate the secure communication link, with the same video/audio limitation.

Selected dependent claims (context, not independent): claim 2 — encryption of the video/audio data; claim 3 — the secure link is a virtual private network link; claim 10 — "intercepting" consists of receiving the request; claim 13 — communication using the secure service occurs via the secure link.

Uncertainty flag: the record I retrieved (Apple's POPR) cites only claims 1 and 16 when addressing "each of the independent claims," but one expert declaration groups claim terms as "Claims 1‑3, 11‑13, 16‑17, and 24‑27," which is consistent with either a long dependent chain or a third independent claim. I did not verify the full printed claim set claim‑by‑claim, so treat "two independent claims" as high‑confidence but not certain.

Litigation and post‑grant history

• District court: asserted against Apple in VirnetX Inc. v. Apple, Inc., No. 6:13‑cv‑00581 (E.D. Tex.) and in No. 6:12‑cv‑00855 (E.D. Tex.). VirnetX publicly announced it was adding the then‑newly granted '697 patent to its Apple suit (Aug. 2013).
• PTAB: challenged in IPR2014‑00237 and IPR2014‑00238 (Petitioner Apple Inc.). The Final Written Decision in IPR2014‑00238 found claims 1–3, 8–11, 14–17, 22–25, and 28–30 anticipated by Wesinger (US 5,898,830) under §102, and claims 4–7 and 18–21 obvious over Wesinger + RFC 2543. Claim constructions included "intercepting" = "receiving a request pertaining to a first entity at another entity."
• Federal Circuit: VirnetX Inc. v. Apple Inc., Nos. 2015‑1934 / 2015‑1935, 2016 WL 7174130 (Fed. Cir. Dec. 9, 2016) (non‑precedential) affirmed the PTAB, finding claims 1–11, 14–25, and 28–30 of the '697 patent unpatentable. VirnetX filed a petition for en banc rehearing on January 9, 2017.
• CAFC 2026 dockets: I found no 2026 Federal Circuit docket activity naming US 8,504,697. Google Patents lists family‑level litigation links to CAFC cases 19‑1050 and 21‑1672, but those are VirnetX/Apple appeals involving other patents in the same family, not the '697 patent specifically. I could not query the CAFC docket system directly from these searches, so I cannot rule out a filing that has not been indexed.

Explicit uncertainties

1. I could not confirm whether a certificate of cancellation under 35 U.S.C. §318(b) issued for the affirmed claims, nor which claims (if any) remained after the 2016–2017 appellate process. Claims 12, 13, 26, and 27 do not appear in the FWD challenge tables I retrieved, which suggests they were never challenged — but I did not verify this.
2. The patent is recorded as expired for failure to pay maintenance fees, and its 20‑year term ran to 2019‑10‑29 in any event, so any surviving claims are unenforceable today.
3. The claim‑1 language quoted above is taken from the issued patent as reproduced in PTAB briefing (Petitioner's demonstratives, Ex. 1001), not from a primary USPTO claim listing I retrieved directly.

Nothing in the searches contradicted the supplied full patent text, so the authoritative full text was used as the primary basis for the claim and abstract summaries above.

I'll research litigation involving US patent 8504697 across patent litigation databases and court sources.

Let me dig into the specific case numbers and jurisdictions from the patent record.

Litigation Involving U.S. Patent No. 8,504,697

Patent at issue: U.S. 8,504,697 B2 — "System and Method Employing an Agile Network Protocol for Secure Communications Using Secure Domain Names." Assignee: VirnetX, Inc. Priority date 1998-10-30; granted 2013-08-06; status: Expired – Fee Related (anticipated expiration 2019-10-29).

Per the Google Patents record (https://patents.google.com/patent/[US8504697](/patent/US8504697)/en), the patent is tied to the following litigation/PTAB matters. I've separated matters where the '697 patent itself was the subject from appeals that the database lists as "family" matters.

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1. VirnetX Inc. et al. v. Apple Inc. — E.D. Tex.

• Plaintiff: VirnetX Inc. (with Leidos, Inc. fka Science Applications International Corp. as co-plaintiff in related actions)
• Defendant: Apple Inc.
• Jurisdiction: U.S. District Court for the Eastern District of Texas (Tyler Division); assigned Judge Leonard Davis
• Case No.: 6:13-cv-00581
• Filing date: 08/05/2013 (per RPX Insight); closed 08/29/2013
• Status: The '697 patent was added by amended complaint on 08/27/2013 alleging willful infringement, seeking damages and injunctive relief (see VirnetX 10-K/10-Q disclosures, ir.virnetx.com, and Computerworld report "VirnetX adds newly granted patent to lawsuit against Apple"). This action was short-lived and was swept into VirnetX Inc. v. Apple Inc., No. 6:12-cv-00855 (E.D. Tex.) (the "Apple II" case), which is where the '697 allegations ultimately resided before the patent was invalidated.
• ⚠️ Note on conflicting dates: The original Apple II complaint was filed 11/06/2012 (No. 6:12-cv-00855) against four other patents (6,502,135; 7,418,504; 7,921,211; 7,490,151). The '697 was added later. The 6:13-cv-00581 docket appears to be the vehicle by which the newly granted '697 was pleaded. Some databases treat these as one consolidated matter.

Outcome: The '697 patent was never tried to a verdict — its claims were cancelled in the Patent Office before it could be adjudicated in district court (see §3–§4 below).

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2. Apple Inc. v. VirnetX Inc. — PTAB Inter Partes Reviews

• Petitioner: Apple Inc.
• Patent Owner: VirnetX Inc.
• Jurisdiction: U.S. Patent & Trademark Office, Patent Trial & Appeal Board
• Case Nos.: IPR2014-00237 and IPR2014-00238
• Filing date (petitions): 12/06/2013
• Institution: 05/14/2014
• Final Written Decisions: 05/11/2015 (Paper 41 in each) — both found claims 1–11, 14–25, and 28–30 of the '697 patent unpatentable (Grounds: §102 anticipation and §103 obviousness over Wesinger (US 5,898,830) and RFC 2543 (SIP)).
• Status: Claims cancelled. IPR2014-00238 (Wesinger + RFC 2543) is the ground the Federal Circuit ultimately relied upon; IPR2014-00237 was the alternative ground.
• Sources: Docket Alarm IPR2014-00238 Final Written Decision, Paper 41 (05-11-2015); Google Patents PTAB links (https://portal.unifiedpatents.com/ptab/case/IPR2014-00237 and /IPR2014-00238).

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3. VirnetX Inc. v. Apple Inc. — U.S. Court of Appeals for the Federal Circuit

• Appellant: VirnetX Inc.
• Appellee: Apple Inc.
• Case Nos.: 2015-1934 and 2015-1935 (consolidated)
• Appeal filed: 07/10/2015 (from the PTAB final written decisions in IPR2014-00237/-238)
• Oral argument: 11/07/2016
• Decision: 12/09/2016 — VirnetX Inc. v. Apple Inc., 665 F. App'x 880 (Fed. Cir. 2016) (non-precedential). The court affirmed the PTAB's unpatentability findings based on IPR2014-00238, with Judge O'Malley dissenting (would have reversed for inadequate evidentiary record).
• Status: Final; claims held unpatentable. The Google Patents litigation link for this appeal is CAFC case 19-1050 in the family list; however the specific '697 appeal is 2015-1934/-1935.

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4. Inter Partes Reexamination — USPTO

• Certificate: Inter Partes Reexamination Certificate dated 02/22/2018, cancelling claims 1–11, 14–25, and 28–30 of the '697 patent.
• This is the document that removed the '697 patent from the asserted group in the -855 action. (Cited in Apple's trial exhibit list, E.D. Tex. No. 6:12-cv-00855, Dkt. 964, as DTX-0179 / DTX-0755 / DTX-0756.)

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5. Family-Related Appeals Listed on the Patent Record (NOT separate '697 suits)

The Google Patents page for US 8,504,697 lists two CAFC matters and one global litigation family. These concern related VirnetX patents/family matters, and the '697 patent's claims were already cancelled by the time they proceeded:

• CAFC No. 19-1050 — VirnetX Inc. v. Apple Inc. (Apple II appeal; patents 6,502,135; 7,490,151; 7,418,504; 7,921,211). Link: https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/19-1050
• CAFC No. 21-1672 — related VirnetX/Apple appeal (mandate 2023). Link: https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/21-1672
• Darts-IP family 32303805 ("First worldwide family litigation filed"): https://patents.darts-ip.com/?family=32303805

⚠️ Caveat: I could not confirm from the search results that CAFC 19-1050 or 21-1672 directly adjudicated the '697 patent (they appear to address sibling patents '135, '151, '504, '211). Their appearance on the '697 record reflects family/consolidation reporting, not a direct '697 holding.

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Summary Table

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Bottom line

The only direct adjudications of US 8,504,697 were:

1. The district court infringement action VirnetX Inc. v. Apple Inc. (E.D. Tex. No. 6:13-cv-00581 / consolidated with 6:12-cv-00855), where the patent was asserted against Apple but resolved without a jury verdict on the '697; and
2. The Apple-initiated PTAB IPRs (IPR2014-00237 and -00238) plus the resulting Federal Circuit appeal (2015-1934/-1935), which resulted in the claims being held unpatentable and ultimately cancelled by inter partes reexamination certificate on 02/22/2018.

No other defendants or jurisdictions asserting the '697 were identified in the sources searched. Note that VirnetX's well-known litigation against Cisco, Microsoft, Mitel, Aastra, NEC, Siemens, and Avaya involved other VirnetX patents (e.g., 6,502,135; 7,490,151; 7,418,504; 7,921,211), not the '697.

Sources: Google Patents (https://patents.google.com/patent/US8504697/en); RPX Insight (https://insight.rpxcorp.com/litigation/txedce-[146266](/patent/146266)-virnetx-v-apple); Docket Alarm PTAB IPR2014-00237/-238; CourtListener 665 F. App'x 880; VirnetX investor disclosures (ir.virnetx.com); Computerworld (08/2013).

If you need PACER docket-level detail (e.g., exact complaint/counterclaim dates in 6:13-cv-00581), say so and I can note that a PACER pull would be required to confirm the docket entries beyond the aggregated sources above.

I'll start by pulling the structured data I have and then run targeted searches on the specific proceeding numbers that appear in the patent record.

Good — the record shows two IPRs, not the "none on file" default. Let me pin down petitioners, panels, grounds, and the appeal.

Let me confirm the appeal disposition, the § 103 portion of the '238 FWD, and the small set of claims that were never challenged.

Data-integrity flag (read first)

The "PTAB proceedings on file" block states the ODP API returns no AIA trial proceedings for US 8,504,697. That is wrong, and I am departing from the stated default. Three independent sources in the record contradict it:

1. The patent's own Google Patents litigation section lists PTAB case IPR2014-00237 (Final Written Decision) and PTAB case IPR2014-00238 (Final Written Decision).
2. The Inter Partes Review Certificate, US 8,504,697 K1, issued 2018-02-22 expressly recites "Trial Numbers: IPR2014-00237 filed Dec. 6, 2013; IPR2014-00238 filed Dec. 6, 2013" and cancels claims 1–11, 14–25, and 28–30 under 35 U.S.C. § 318(b). (certificate)
3. Both Final Written Decisions are publicly available as Paper 41 dated 2015-05-11.

Treat the ODP "no proceedings" result as stale/mis-indexed for this patent, not as an absence of PTAB activity.

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Proceedings overview

Total: 2 AIA trials — both Inter Partes Reviews, both filed by Apple Inc. on 2013-12-06, both resulting in Final Written Decisions on 2015-05-11 invalidating every challenged claim, both affirmed by the Federal Circuit on 2016-12-09, and both effectuated in an IPR certificate dated 2018-02-22 that canceled claims 1–11, 14–25, and 28–30. Breakdown: 0 active / 2 claims-invalidated / 0 sustained / 0 settled / 0 institution-denied.

Bottom line for a defendant: US 8,504,697 is a carcass, not a hardened patent. Twenty-seven of its thirty claims were canceled in 2015 (FWD) and 2018 (certificate), and the surviving claims 12, 13, 26 and 27 were never challenged, never construed by the Board, and never asserted. A demand letter citing claim 1 or claim 16 is citing a canceled claim.

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IPR2014-00238 — Apple Inc. v. VirnetX Inc.

(Placed first because this is the FWD the Federal Circuit actually affirmed — the operative invalidity rationale for the '697 patent.)

• Type: Inter Partes Review
• Filed: 2013-12-06
• Status: Final Written Decision — Unpatentable (claims canceled; reflected in the 2018-02-22 IPR certificate). Plain English: patent owner lost outright, appeal exhausted.
• Judge panel: Michael P. Tierney, Karl D. Easthom, and Stephen C. Siu, Administrative Patent Judges (same panel sat in both trials and issued a joint rehearing decision covering both). The opinion author for this particular FWD is not confirmed in the sources retrieved — do not assume.
• Petition grounds (as instituted):
  • Claims 1–3, 8–11, 14–17, 22–25, and 28–30 — anticipated by Wesinger (US 5,898,830, Ex. 1008) under § 102.
  • Claims 4–7 and 18–21 — obvious over Wesinger in view of RFC 2543 (SIP, Ex. 1012) under § 103.
  • VirnetX's preliminary response also shows the petition originally pressed Kiuchi and an "Aventail" exhibit set; the Board instituted only the Wesinger grounds.
• Institution decision: Instituted 2014-05-14 (Paper 15). VirnetX moved for rehearing on § 312(a)(3)/§ 42.104(b)(4) grounds; the Board denied it by decision dated 2014-06-30 (Paper 24), holding the petition "is not a model of clarity, but on the specific facts of this case… meets the requirements of § 42.104(b)(4), albeit minimally." (Paper 24)
• Final Written Decision (2015-05-11, Paper 41): all challenged claims held unpatentable. The FWD states: "For at least the foregoing reasons, we find that Petitioner has demonstrated that claims 1–3, 8–11, 14–17, 22–25, and 28–30 are anticipated by Wesinger under 35 U.S.C. § 102." The § 103 ground over Wesinger + RFC 2543 disposed of the remaining instituted claims 4–7 and 18–21 (consistent with the certificate cancelling the full set 1–11, 14–25, 28–30). The FWD declined to construe "secure communication link," "virtual private network," "intercepting," and "determining in response to the request" because VirnetX did not show the constructions bore on the outcome — a decision that later cost VirnetX on appeal.
• Settlement / termination: None. Tried to FWD.
• Appeal: Yes. Consolidated with IPR2014-00237 as VirnetX Inc. v. Apple Inc., Nos. 2015-1934, 2015-1935 (Fed. Cir.). Oral argument 2016-11-07; decision 2016-12-09, reported at 665 F. App'x 880 (nonprecedential). The court affirmed (the opinion states: "because we affirm the PTAB's conclusions in VirnetX II, we do not address the PTAB's determinations in VirnetX I"). Judge O'Malley dissented, arguing the Board's factual findings rested on an inadequate record absent expert testimony. (CourtListener opinion) VirnetX filed a petition for rehearing en banc on 2017-01-09 (per Apple's updated mandatory notices); the disposition of that petition is not confirmed in the sources I retrieved — flagging rather than guessing.
• Defensive value: The Wesinger/RFC 2543 invalidation of claims 1–11, 14–25, and 28–30 is final, judicially affirmed, and certified. Any infringement theory built on claims 1 or 16 of the '697 patent is contrary to a § 318(b) certificate; pressing it invites Rule 11 exposure.

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IPR2014-00237 — Apple Inc. v. VirnetX Inc.

• Type: Inter Partes Review
• Filed: 2013-12-06
• Status: Final Written Decision — Unpatentable (claims canceled; reflected in the 2018-02-22 IPR certificate). Alternative ground never reached on appeal.
• Judge panel: Michael P. Tierney, Karl D. Easthom, and Stephen C. Siu, Administrative Patent Judges; Easthom authored the Final Written Decision.
• Petition grounds (as instituted):
  • Claims 1–11, 14–25, and 28–30 — anticipated by Beser (US 6,496,867 B1, Ex. 1009) under § 102.
  • Claims 1–11, 14–25, and 28–30 — obvious over Beser in view of RFC 2401 (IPsec architecture, Ex. 1010) under § 103.
  • A separate RFC 2543 § 102 ground proposed by Apple was not instituted (redundancy), so institution was partial as to grounds even though it covered all challenged claims. (Institution Decision, Paper 15)
• Institution decision: Instituted 2014-05-14 on all challenged claims. VirnetX's rehearing request was denied on 2014-06-30.
• Final Written Decision (2015-05-11, Paper 41): "we determine that Petitioner has shown by a preponderance of the evidence that claims 1–11, 14–25, and 28–30 of the '697 patent are unpatentable." The panel found Beser anticipates claims 1 and 16 (independents), and that Beser in view of RFC 2401 renders obvious claims including the encryption-dependent claims 2 and 24. Claim-construction point that decided the case: the Board refused to read encryption into "secure communication link," construing it as "a transmission path that restricts access to data, addresses, or other information on the path, generally using obfuscation methods to hide information on the path, including, but not limited to, one or more of anonymity, authentication, or encryption," relying on VirnetX, Inc. v. Cisco Systems, Inc., 767 F.3d 1308, 1317–19 (Fed. Cir. 2014). (FWD PDF)
• Settlement / termination: None. Tried to FWD.
• Appeal: Consolidated into Nos. 2015-1934/-1935; the Federal Circuit affirmed on the IPR2014-00238 rationale and expressly declined to reach this FWD's determinations (Gleave alternative-grounds practice). So the Beser rationale is unreviewed — but it is an independent, already-issued, certified invalidation.
• Defensive value: Redundant belt-and-suspenders. Even if someone attacked the CAFC's reliance on the -00238 rationale, the -00237 Beser invalidation stands as an unreviewed-but-certified alternative. Practically, the '697 claims are dead twice over.

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Strategic summary

Claim-level status of US 8,504,697. Both IPRs challenged the identical set — claims 1–11, 14–25, and 28–30 — and that entire set is CANCELED, first by the two 2015-05-11 FWDs and formally by the 2018-02-22 IPR certificate ("Claims 1-11, 14-25 and 28-30 are cancelled"). Independent claim 1 (method) and independent claim 16 (system) are gone, as is every claim that depends from them or from claims 14 and 28. The SUSTAINED set is empty: the Board did not hold a single claim patentable in either trial — there were no surviving claims from the challenged set. The UNTESTED set is claims 12, 13, 26, and 27, which were never challenged in either petition, never construed by the Board, and (per the litigation record) never asserted. Do not let anyone tell you those claims have been adjudicated as valid; they have been adjudicated as nothing. Note also that Google Patents lists the patent's legal status as "Expired – Fee Related," with an anticipated expiration of 2019-10-29 — the term has run in addition to the claim cancellations. (Legal status labels are the source's characterization, not a legal conclusion; verify maintenance-fee history before relying on it.)

Estoppel landscape. Under 35 U.S.C. § 315(e)(2), Apple Inc. — the petitioner in both trials — and its privies/real parties in interest are estopped in any district court or ITC proceeding from asserting invalidity on any ground they raised or reasonably could have raised in IPR2014-00237 or -00238. That sweeps in Beser, RFC 2401, Wesinger, RFC 2543, and the references the petitions actually deployed (Kiuchi, "Aventail," RFC 1034) plus any combination a skilled petitioner would have foreseen. For a defendant not in privity with Apple, no statutory estoppel applies, and the full field of prior art — including the '697 specification's own cited references (Haig, Chaum's mixes, ZKS, onion routing, Ioannidis, etc.) — remains available. But this is largely academic: § 315(e) estoppel is a defense to an invalidity theory, and 27 of 30 claims are already canceled. The only claims on which a fresh IPR could even be filed are 12, 13, 26, and 27 — and with the term expired, the practical value of attacking them for future conduct is nil (the value would be in a past-damages window).

Pattern signals. (1) Same petitioner, multiple patents: Apple was the serial petitioner against the entire VirnetX family — IPR2014-00237/-00238 ('697), IPR2014-00403/-00404 ('274), IPR2014-00481/-00482 ('180), IPR2016-00331/-00332 ('696), and more — plus pre-AIA inter partes reexaminations (Control Nos. 95/001,679, 95/001,682, 95/001,697, 95/001,714, 95/001,949). The '697 IPRs were the opening shots of a coordinated Apple campaign, not isolated filings. (2) Patent owner fought hard on appeal: VirnetX appealed every adverse FWD, sought panel and en banc rehearing, and litigated for years. (3) Defensive aggregators: Unified Patents appears in the record as the PTAB petitioner string associated with this patent number's Google Patents "litigation" metadata, and Mangrove Partners Master Fund / Black Swamp, LLC later financed IPRs against related VirnetX patents ('135, '151). Whether Unified was ever a real party in interest in the '697 trials is not something I can confirm — Apple Inc. is the named petitioner in both, and I am not going to guess at the RPI chain. (4) Related-patent cascade: the '697 patent sits in a Larson et al. family with '135, '504, '151, '211, '181, '696 and dozens more; most of that family's asserted claims have been canceled in PTAB or reexamination proceedings. Treat any VirnetX assertion from this family as facing a thick wall of prior PTAB and Federal Circuit adjudications.

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Recommended next steps

1. If you have received a demand citing US 8,504,697, claims 1–11, 14–25 or 28–30: stop, and say so. Cite the Inter Partes Review Certificate US 8,504,697 K1 (2018-02-22) — "Claims 1-11, 14-25 and 28-30 are cancelled" (certificate PDF) — and the two FWDs: IPR2014-00237 Paper 41 and IPR2014-00238 Paper 41, both dated 2015-05-11. For the appellate kill shot: VirnetX Inc. v. Apple Inc., Nos. 2015-1934, 2015-1935 (Fed. Cir. Dec. 9, 2016), 665 F. App'x 880 (CourtListener).
2. If a demand quotes claims 12, 13, 26 or 27, those claims are untested — inspect them against the specification and the Cisco construction of "secure communication link" (767 F.3d 1308, 1317–19), which the -00237 panel adopted. But confirm the maintenance-fee and expiration history first (Google Patents shows "Expired – Fee Related," anticipated expiration 2019-10-29); if the term lapsed, your exposure is limited to a past-damages window, if any.
3. No active proceedings to monitor. There is no live PTAB trial on this patent — no institution deadline, no oral hearing, no statutory one-year FWD due date to track. Any new IPR on claims 12/13/26/27 would have to be filed by someone else; given the expired term, that is unlikely.
4. Pull the primary documents from official sources before filing anything: the Board's FWDs and the certificate are at USPTO PTAB E2E / PatentCenter for US 8,504,697, and the certificate is recorded in the patent's file wrapper. The Docket Alarm case pages (IPR2014-00237, IPR2014-00238) aggregate the full paper trail (Papers 1, 12, 15, 19, 24, 30, 33, 40, 41).

Uncertainties I am deliberately not papering over: (a) the en banc rehearing petition of 2017-01-09 was filed per Apple's mandatory notices, but I could not confirm its denial or any subsequent Supreme Court petition from the sources retrieved; (b) the opinion author for the IPR2014-00238 FWD; (c) whether Unified Patents or any other entity was a real party in interest behind the two Apple petitions; (d) the exact dependent-claim parentage of claims 12, 13, 26 and 27. Verify each against the file wrapper before relying on it.

I'll research the assignment record for US 8,504,697 across USPTO Assignment Center, Google Patents legal events, and SEC filings.

Let me search for the specific reel/frame records and the inventor/assignment details.

I found key chain-of-title data. Let me verify the reel/frame records and correspondent details specifically for the '697 patent.

Assignment Record — U.S. Patent No. 8,504,697 B2

Verification link: https://assignmentcenter.uspto.gov/ (search by patent number 8504697; mirrored at https://assignment.uspto.gov/patent/index.html)

Sourcing caveat, stated up front. I do not have a live query session against the USPTO Assignment Center, so the reel/frame data below is reconstructed from secondary sources that reproduce the USPTO assignment records verbatim: (i) a 37 CFR 3.73(b) Statement filed in sibling application 11/840,560 (reproduced in PTAB exhibits), which sets out the two-link chain of title with reel/frame numbers; (ii) Google Patents legal events for the '697; and (iii) the PlainSite USPTO-assignment mirror. Where I could not confirm a field (execution date, correspondent, or a '697-specific reel/frame), I say so rather than guess. The two operative reel/frame entries (019722/0321 and 019722/0525) are stated on the record in the 3.73(b) statement and are reliable.

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Inventors

Named-inventor pattern notes:

• All four are listed as the inventors of record on the '697 face and are the assignors on the recorded inventor-to-SAIC assignment (Reel 019722/0321).
• Douglas Charles Schmidt (Severna Park, MD) is a co-inventor on sibling family members (e.g., EP 1,755,315; EP 1,542,429; US 8,868,705; US 9,860,283) but is not named on the '697. This is a family-member variation, not an inventorship defect: the '697 claims trace to a different continuation branch.
• No evidence of inventor departure from SAIC within 12 months of filing was found. This is a "no fire-sale tell" result — the inventors did not leave to form a competing entity; the portfolio changed hands at the corporate level, not via inventor migration. (Note this is an absence-of-evidence finding; I did not locate employment-history records beyond the patents themselves.)

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Original assignee

On the face of the issued patent: VirnetX, Inc., Zephyr Cove, NV. Google Patents lists Original Assignee = Current Assignee = VirnetX Inc.

Historically, the original assignee was SAIC. The inventors assigned to Science Applications International Corporation first (Reel 019722/0321), and SAIC then conveyed the rights to VirnetX (Reel 019722/0525). Because that conveyance predates the '697's 2013-08-06 issuance, VirnetX appears as assignee on the printed patent. Anyone doing diligence should treat SAIC as the true original owner/assignee.

• SAIC — Fortune 500 U.S. defense, intelligence, and enterprise-IT services contractor headquartered in McLean, VA. It is a services company; it did not ship a commercial product embodying the TARP/agile-network claims. Current status: reorganized, not dissolved. In 2013 SAIC renamed itself Leidos Holdings, Inc.; the "Science Applications International Corporation" name was spun off to a new government-services company. The patent's former owner is today Leidos, Inc. (fka Science Applications International Corporation), which still appears as co-plaintiff/appellee on this family (Fed. Cir. brief: "SAIC was recently renamed Leidos, Inc. as part of a corporate reorganization"). No bankruptcy has ever been filed by SAIC/Leidos.
• VirnetX, Inc. — Delaware corporation incorporated August 2005; became publicly traded via a reverse merger with PASW, Inc. in July 2007 (NASDAQ: VHC). At the time it acquired this family it had no products in commerce; its business model is patent licensing and enforcement. It later (2022) launched VirnetX One / War Room / Matrix products, but those do not practice the '697 claims, which were cancelled in 2018. Status: operating public company.

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Assignment timeline

⚠️ Two recordation events exist for the same underlying transaction, at different times. Flagged explicitly:

1. Reel 019722/0321 and 019722/0525 — cited as an already-recorded chain of title in a 37 CFR 3.73(b) statement filed in application 11/840,560 (filed 2007-08-17). These records therefore pre-date 2008.
2. Google Patents legal events for the '697 itself show both links recorded 2012-01-28 — i.e., re-recorded against the new continuation application 13/339,257 (filed 2011-12-28), roughly one month after filing.
3. A third, later recordation of the same SAIC→VirnetX conveyance exists at Reel 50383/669 (executed 2006-12-21, recorded 2019-09-16) for later family continuation 15/185,760.

These are not three separate transfers — they are the same 2006 conveyance recorded repeatedly as new continuations were filed. Do not read them as a cascading chain.

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• Execution date not confirmed (assignment of inventors' interest appears to have been executed ~1999–2000 with the priority applications; the USB recordation is the 019722/0321 entry) / recorded on or before 2007-08 — Reel 019722 / Frame 0321

  • Conveyance: Assignment of Assignors' Interest
  • Assignor: Victor Larson; Robert Dunham Short, III; Edmond Colby Munger; Michael Williamson
  • Assignee: Science Applications International Corporation
  • Correspondent: Not confirmed in the sources retrieved.
  • Context: Original employment/obligation assignment — the founding transfer of the entire SAIC agile-network family into SAIC.

• Executed 2006-11-02 (Amendment No. 1 effective date; a related record — Reel 50383/669 for app 15/185,760 — shows the assignment paperwork "executed December 21, 2006") / recorded on or before 2007-08 — Reel 019722 / Frame 0525

  • Conveyance: Assignment
  • Assignor: Science Applications International Corporation
  • Assignee: VirnetX, Inc. (Delaware)
  • Correspondent: Not confirmed for 019722/0525.
  • Context: Transfer-to-asserter / monetization. SAIC conveyed all right, title and interest to a newly formed licensing entity in exchange for royalties (15% of in-field revenues; 50% of out-of-field license revenues, capped at $35,000,000) plus 25–35% of litigation recoveries. Documented in VirnetX's 10-K: Amendment No. 1 "conveyed all right, title, and interest in the SAIC Patent Rights to VirnetX."

• Executed 2006-12-21 / recorded 2019-09-16 — Reel 50383 / Frame 0669 (family recordation for app 15/185,760 — listed here because it is the same conveyance and shows the correspondent pattern)

  • Conveyance: Assignment of Assignors Interest
  • Assignor: Science Applications International Corporation (listed as "Corporationn" in the PlainSite transcription)
  • Assignee: VirnetX, Inc., 5615 Scotts Valley Drive, Suite 110, Scotts Valley, CA 95066
  • Correspondent: Lee Hayes, PLLC, 601 W. Riverside Ave., Ste 1400, Spokane, WA 99201. ⚠️ Recurrence flag: Lee & Hayes, P.C. (James D. Stein, Atlanta, GA; Customer No. 29150) is also the prosecution correspondence firm of record for later family continuation 15/811,350 — see §3 below.
  • Context: Confirmatory / cleanup recordation — a 2006-executed document recorded 13 years later against a late continuation. A 13-year gap between execution and recordation is a housekeeping pattern, not a new transfer.

• Recorded 2012-01-28 — Reel/Frame not independently confirmed for the '697 specifically — two entries, same date (per Google Patents legal events)

  • Conveyance: Reassignment (two records)
  • Assignor → Assignee (1): Larson; Munger; Williamson; Short → Science Applications International Corporation
  • Assignor → Assignee (2): Science Applications International Corporation → VirnetX, Inc.
  • Context: Re-recordation of the same two-link chain against continuation application 13/339,257. Not a new transfer.

• Security interest (unconfirmed recordation): VirnetX's 10-K states that VirnetX "granted SAIC a security interest in some of our intellectual property, including the patents and patent applications we obtained from SAIC." I could not confirm a recorded Security Agreement reel/frame. If one exists it would be a distinct conveyance type on this chain; treat as unverified rather than absent.

No further assignments are on record. The chain terminates at VirnetX, Inc.; there is no transfer to Acacia, Marathon, IV, or any defensive aggregator.

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Timeline diagram

timeline
    title Ownership of US 8504697
    1998 : Priority application filed
    1999 : Inventors assign to SAIC
    2005 : VirnetX incorporated in Delaware
    2006 : SAIC conveys family to VirnetX
         : Amendment No 1 executed
    2007 : VirnetX sues Microsoft
         : Reverse merger PASW and VirnetX
    2012 : Continuation filed as 13339257
         : Chain re-recorded against 697
    2013 : 697 patent issued
         : Asserted against Apple
    2016 : Federal Circuit affirms invalidity
    2018 : Claims cancelled on reexam
    2019 : Patent expires

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NPE / troll-pattern signals

1. Shell-entity transfer — not present (in the literal sense). The assignee is VirnetX, Inc. — a named, publicly traded Delaware corporation with SEC reporting obligations, not a single-member anonymous LLC with a "Holdings/Ventures/Licensing" suffix at a registered-agent address. The literal tells (suffix, registered-agent address, single-purpose LLC) are absent. But the substance of the signal is present in a different form: at transfer, the acquiring entity had no product in commerce and its entire business plan was licensing/enforcement of the acquired family. Do not call it a shell; do call it a non-practicing acquirer.

2. Known asserter in the chain — PRESENT. VirnetX is not on the classic enumerated list (Acacia, Marathon, IV, IPNav, Wi-LAN, Conversant/Mosaid, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg). However, it is squarely a high-frequency plaintiff tracked by both Unified Patents and RPX — evidenced by the fact that the '697 record itself carries Unified Patents PTAB portal entries for IPR2014-00237 and IPR2014-00238 (https://portal.unifiedpatents.com/ptab/case/IPR2014-00237 and /IPR2014-00238) and a Unified Patents litigation entry. VirnetX asserted the SAIC family against Microsoft (2007), Cisco, Apple, NEC and Aastra (6:10-cv-00417; 6:12-cv-00855; 6:13-cv-00581). Signal satisfied on the "high-frequency plaintiff surfaced by Unified/RPX" limb.

3. Repeat correspondent across the chain — UNclear / insufficient data. The chain has only two operative links, and I did not confirm the correspondent of record for either Reel 019722/0321 or Reel 019722/0525. I do observe that Lee Hayes, PLLC (Spokane, WA) is the correspondent on the 2019 cleanup recordation (Reel 50383/669) and that Lee & Hayes, P.C. (James D. Stein, Atlanta, GA, Customer No. 29150) is the prosecution correspondence firm for later family continuation 15/811,350. That is recurrence across applications in the family, not recurrence across links in this chain, so it does not satisfy the signal as defined. A single appearance is not a finding — I decline to score this as present without the missing correspondents.

4. Cascading transfers — not present. There is one transfer through one acquiring entity: inventors → SAIC → VirnetX. There are no chained LLCs, no shared-principal relays, and no sub-24-month sequence of distinct transfers. The multiple recordation dates (2007-ish, 2012-01-28, 2019-09-16) reflect re-recordation of the same 2006 conveyance against new continuations, which superficially resembles a cascade but is not one.

5. Pre-litigation transfer — PRESENT at the family/transaction level; NOT present for the '697-specific record. The SAIC→VirnetX conveyance took effect 2006-11-02 and VirnetX sued Microsoft on 2007-02-15 — approximately 3.5 months later, inside the 6-month window. The arrangement was then explicitly tuned for litigation: Amendment No. 2, executed 2008-03-12, recites that SAIC "relinquish[es] its exclusive license … outside the Field of Use" and that the parties act "to facilitate VirnetX's enforcement of the SAIC Patent Rights against Microsoft," curing Microsoft's threatened indispensable-party/standing defense. That is a documented, litigation-enabling chain of title. Caveat for the '697 specifically: the re-recordation against the '697 application is dated 2012-01-28, which is ~19 months before the '697 was asserted against Apple (amended complaint 2013-08-27) — outside the 6-month window. The pre-litigation character belongs to the 2006–2008 transaction, not to the 2012 recordation.

6. Bankruptcy fire-sale — not present. SAIC never filed Chapter 7/11. Its 2013 event was a tax-free spin-off and rename to Leidos Holdings, Inc., not a distress sale. No 363 sale, no bankruptcy auction.

7. Privateering — PRESENT (partial / substance). SAIC, a large operating defense-IT contractor, conveyed the family to VirnetX, a dedicated licensing/enforcement vehicle, for royalties plus 25–35% of litigation recoveries, and SAIC then appeared as a named co-plaintiff in the enforcement suits ("VirnetX Inc. and Science Applications Int'l Corp. v. Cisco Systems, Inc., Apple Inc., Aastra …, NEC …, No. 6:10-cv-00417"). The strict privateering definition — NPE asserts at the operating company's behest against its competitors — is partially met: SAIC retained a non-exclusive license and co-litigated, rather than directing litigation covertly. Score as present in substance, not textbook.

8. Defensive aggregator — not present. The chain terminates at VirnetX, Inc., an active asserter. There is no transfer to RPX, AST, LOT Network, Unified Patents, or OIN. The patent has not been neutralized by a defensive buyer.

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Verdict

NPE — high confidence.

Two or more strong signals are present and evidence-backed: (1) the family was conveyed by operating company SAIC to VirnetX effective 2006-11-02 (Reel 019722/0525) for royalties up to $35,000,000 plus 25–35% of litigation recoveries, with Amendment No. 2 (2008-03-12) executed expressly "to facilitate VirnetX's enforcement of the SAIC Patent Rights against Microsoft" — a structural transfer-to-asserter with a pre-litigation 3.5-month gap (signal 5 present, signal 7 present in substance); and (2) the current assignee VirnetX, Inc. is a high-frequency patent plaintiff surfaced by Unified Patents and RPX, having asserted this family against Microsoft, Cisco, Apple, NEC and Aastra (signal 2 present). The classic shell-LLC tells are absent — VirnetX is a public Delaware corporation, not a nominal LLC — so this is an NPE finding based on conduct and chain structure, not on naming.

Material caveat that changes the practical posture: the '697's asserted claims (1–11, 14–25, 28–30) were cancelled by inter partes reexamination certificate dated 2018-02-22, and the patent's status is Expired – Fee Related with anticipated expiration 2019-10-29. The '697 is therefore no longer enforceable, notwithstanding that the ownership chain remains a textbook NPE acquisition structure.

Contradictions / open items to flag:

• Duplicate recordation: Google Patents positions the chain at 2012-01-28 for the '697, but the same reel numbers (019722/0321, /0525) were already of record in a filing made in August 2007 (37 CFR 3.73(b) statement, app 11/840,560). Same transaction, at least three recordation dates (≈2007, 2012-01-28, 2019-09-16). This should not be read as successive transfers.
• Unverified correspondent on both operative reels (019722/0321 and /0525) — a PACER/Assignment Center pull is required to complete the repeat-correspondent analysis (signal 3).
• Unverified security agreement — VirnetX's 10-K confirms SAIC held a security interest, but I found no recorded Security Agreement reel/frame.
• The Google Patents record for this patent lists IPR2014-00237/-00238 without naming a petitioner (only Unified Patents portal links); my earlier litigation section names Apple Inc. as petitioner. Treat the petitioner identification as sourced from the prior section, not from the Google record.

I'll research the specific prior-art citations for US 8,504,697. The supplied full text was truncated before the "References Cited" section, so I need to retrieve that directly.

Let me pull the actual citation list from the patent record and USPTO/Justia.

I have the key IPR references. Now I need the actual face-of-patent "References Cited" list for the '697 patent. Let me retrieve it.

Scope, method, and an explicit limitation

I ran the requested database lookups on the literal number 8504697 and confirmed it resolves to the VirnetX '697 patent — not its sibling 8,504,696 ("'696"), which shares an identical title. They were granted the same day (Aug. 6, 2013) and are routinely confused. Everything below is about US 8,504,697 B2 only.

Limitation I must flag up front: the authoritative full text supplied to me was truncated in the middle of the "checkpoint scheme" discussion, i.e. before the printed References Cited / front-page citation block. I could not retrieve the complete face-of-patent "U.S. Patent Documents" list for the '697 patent within my search budget. So rather than reconstruct that list from memory (which would risk fabricating citations), I am reporting the prior art that is documented in the record to have disposed of this patent — the PTAB ground that actually cancelled its claims, plus the art cited in prosecution of the family. Where I cannot verify a citation, I say so.

This distinction matters here: for a patent whose claims were cancelled, the material prior art is not the boilerplate background citations on the cover; it is the art the tribunal relied on.

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1. The dispositive § 102 reference — Wesinger

Full citation: U.S. Patent No. 5,898,830 to Wesinger, Jr. et al., entitled "Firewall Providing Enhanced Network Security and User Transparency," issued April 27, 1999 (Exhibit 1008 in the IPRs).

Dates / § 102 posture: The '697 patent claims priority to Oct. 30, 1998 and is governed by pre-AIA § 102 (the application was filed before March 16, 2013 — a point both the PTAB and the Federal Circuit expressly noted). Wesinger issued after the Oct. 30, 1998 priority date, so it is not § 102(b) art. It qualifies as pre-AIA § 102(e) art — a U.S. patent granted on an application effectively filed before the applicant's invention. The PTAB, in assessing what a person of ordinary skill would have gleaned from Wesinger, referred to "when the inventor filed the application leading to Wesinger in 1996." ⚠️ I was not able to independently verify the exact filing date printed on Wesinger's face, and I note the CAFC opinion's "1996" reference may reflect an earlier application in the Wesinger chain rather than the '830 filing itself. Treat the exact filing date as unverified; the 1996 characterization is what the record states.

Brief description of the disclosure (as the tribunals read it):
Wesinger describes a firewall/proxy that transparently intercepts a client's connection request containing a host/domain name, uses a DNS/DDNS module to map that name to the IP address of a "virtual host," then consults a configuration table to decide whether the requested connection is allowed or disallowed and whether special processing such as SSL encryption is required. When a secure connection is authorized, the firewall establishes an encrypted channel — which Wesinger describes as creating a virtual private network in which "two remote machines communicate securely through cyberspace."

Which claims it anticipates under 35 U.S.C. § 102:

Claims 1–3, 8–11, 14–17, 22–25, and 28–30 — found anticipated by Wesinger under § 102 in the Final Written Decision of IPR2014-00238 (Paper 41, May 11, 2015), and affirmed in VirnetX Inc. v. Apple Inc., 665 F. App'x 880 (Fed. Cir. Dec. 9, 2016).

The claim-mapping the Board and court adopted, element by element:

The Federal Circuit's holding turned on two points worth recording because they define the effective scope of this art: (i) anticipation "need not satisfy an ipsissimis verbis test" (In re Gleave), so Wesinger's "allowed" reads on the claim's "available"; and (ii) a genus disclosure of "computer" anticipates the species "notebook computer" (claims 9 and 23), so Wesinger's generic "computer" anticipates the mobile/notebook dependent claims.

Bottom line: Wesinger alone, under § 102, is the single most relevant piece of prior art for the '697 patent — it anticipated the independent claims and most dependents, and it is the ground the Federal Circuit affirmed.

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2. The § 103 combination reference — RFC 2543 (not § 102)

Full citation: M. Handley, H. Schulzrinne, E. Schooler, J. Rosenberg, "SIP: Session Initiation Protocol," Network Working Group, Request for Comments: 2543, Bell Labs, March 1999.

Description: The SIP standard defining session initiation/signaling for multimedia (voice and video) sessions over IP.

Claim effect: RFC 2543 was not used for anticipation. It was combined with Wesinger under § 103 to render claims 4–7 and 18–21 obvious (IPR2014-00238 FWD, affirmed). ⚠️ Note the date tension: RFC 2543 (March 1999) postdates the Oct. 30, 1998 priority date, so its use in an IPR ground implies Apple relied on it only in an obviousness posture on the record before the Board; I did not retrieve the Board's specific prior-art-date rationale for this reference, so I flag this rather than assert a § 102(b) date.

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3. Art cited during family prosecution

The '697 patent is a continuation in the VirnetX/SAIC "agile network protocol" family. In prosecution of the closely related applications, the examiner cited:

• U.S. Patent No. 5,898,830 (Wesinger) — the same reference, rejected under § 102 / § 103, and overcome only by amending claims to add the "intercepting … a request to look up an Internet Protocol (IP) address corresponding to a domain name …" limitation. (The examiner's reasons-for-allowance statement, cited in the PTAB petition record.)
• "Kiuchi" — cited alongside Wesinger in the examiner's reasons for allowance. ⚠️ I could not retrieve Kiuchi's full citation (number, title, dates) within my search budget, and I will not guess at it. If you need it, I can pull the specific Office Action.

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4. Family members that are frequently mis-listed as "prior art"

Many citations that appear on VirnetX patents of this family are the applicant's own earlier patents — these are not prior art under § 102 against the '697 patent (common inventive entity / same family), and should not be treated as such. Examples appearing in the related VirnetX continuations' citation lists include:

• US 7,490,151 — "Establishment of a secure communication link based on a domain name service (DNS) request" (Munger et al.)
• US 7,418,504 — "Agile network protocol for secure communications using secure domain names" (Larson et al.)
• US 7,933,990, US 7,945,654, US 8,943,201 — same-family continuations

⚠️ Caveat: I retrieved this list from a sibling VirnetX patent page (the continuation that became US 8,943,201), not from the '697 face itself. I therefore present it as illustrative of the type of citation the family carries, not as a verified transcription of the '697 front page.

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5. Summary table — prior art actually material to US 8,504,697

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6. Two things you should also know before relying on this

1. Claims 12, 13, 26, and 27 do not appear in any IPR challenge table I retrieved — the petitions challenged 1–11, 14–25, and 28–30. Those four claims were therefore apparently never adjudicated on the merits. (Consistent with the uncertainty flagged in the earlier summary section of this analysis; I could not confirm which claims, if any, survived as enforceable.)
2. The patent is dead. It is recorded as Expired – Fee Related, with a 20-year term running to 2019-10-29, and the challenged claims were cancelled. So "which claim does reference X anticipate" is a wholly historical/defensive question here — there is no live claim to invalidate today.

⚠️ Contradiction check with prior sections: none found. The IPR and appellate record I re-retrieved here is consistent with the litigation summary already generated (same grounds, same claim sets, same case numbers). The only new caveat is the one I raise above: I could not retrieve the literal printed "References Cited" block of US 8,504,697, so any list of cover-page citations should be treated as unverified until pulled directly from USPTO PatentCenter or the issued PDF.

Sources: Google Patents, https://patents.google.com/patent/US8504697/en (family/litigation links); Finnegan's posted FWD, IPR2014-00238, https://www.finnegan.com/a/web/[114969](/patent/114969)/2G4qRF/ipr2014-00238-final-written-decision-35-usc-c2a7-318a-and-3.pdf; Docket Alarm, https://www.docketalarm.com/cases/PTAB/IPR2014-00238/; VirnetX Inc. v. Apple Inc., 665 F. App'x 880 (Fed. Cir. 2016), https://www.courtlistener.com/opinion/[4328770](/patent/4328770)/virnetx-inc-v-apple-inc/; PTAB petition record re prosecution history of the related '557/'705 applications, https://ptacts.uspto.gov/ptacts/public-informations/petitions/[1461650](/patent/1461650)/download-documents.

If you want, I can attempt a second pass aimed specifically at the printed front-page "References Cited" list (that requires pulling the issued PDF or the PatentCenter "References Cited" tab, which my earlier searches did not surface).

I'll ground the obviousness analysis in the actual prior-art record for this patent before analyzing.

Let me pull the parallel PTAB ground (IPR2014-00237) and the treatment of the video/audio limitation.

Obviousness Analysis — U.S. Patent No. 8,504,697 B2

Under 35 U.S.C. § 103

Method note on the "Prior Art section of this page." The Google Patents record supplied for US 8,504,697 does not carry a populated "Cited Prior Art" table. Its prior-art metadata consists of: the keyword set (network device; packets; secure; packet; tarp), the assumed prior-art date (1998‑10‑30), two "Priority claimed from" documents (US 09/429,643 → US 7,010,604 and US 09/504,783 → US 6,502,135), and the "Definitions" block extracted from the description. I therefore used (a) the admitted background art recited in the '697 specification itself, and (b) the third-party references actually applied against the '697 claims in the PTAB/CAFC record, which I re-verified by search. URLs are listed at the end.

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1. Threshold issues that drive the whole § 103 analysis

(a) The two "priority claimed from" documents are NOT prior art. US 7,010,604 and US 6,502,135 are same-family, same-inventor documents in the '697's own priority chain. They cannot be used for § 102 or § 103 against the '697 claims. Treat the Google Patents "external-priority" rows as provenance, not art.

(b) The effective filing date of the challenged claims is an open question and it materially changes the § 103 art set. The '697 issued from application 13/339,257 (filed 2011‑12‑28) as a continuation in a chain reaching back to 1998. But the DNS‑proxy/VPN subject matter that the claims recite was added later in the chain. The Board's willingness to use RFC 2543 (March 1999) — a printed publication, not a U.S. application — in a § 103 ground implies the Board did not treat claim 1 as entitled to 1998‑10‑30; the realistic candidates are 1999‑10‑29 (09/429,643) or 2000‑04‑26 (09/558,210). I could not verify from the retrieved record which date the Board applied. Flagged as an open item. If the operative date is in 1999–2000, the § 102(b) art field expands considerably (including RFC 2543 itself as a statutory bar).

(c) "Intercepting" is broad. The Board construed "intercepting a request" as "receiving a request pertaining to a first entity at another entity" (IPR2014‑00238 FWD). That construction, more than any technical point, is what makes the interception element easy to meet.

(d) "Virtual private network communication link" is broad. In IPR2014‑00237 the Board construed it as "a transmission path that restricts access to data, addresses, or other information on the path, generally using obfuscation methods to hide information on the path, including, but not limited to, one or more of anonymity, authentication, or encryption," which "includes a portion of a public network." In IPR2014‑00238 the Board declined to construe the term because it was not outcome‑determinative. Either way, claims 3 and 17 (VPN link) read on art that discloses address hiding without encryption.

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2. Level of ordinary skill (Graham factor 3)

Both sides' records converge on a moderately high skill level: a master's degree in computer science or computer engineering plus roughly two years of networking experience with exposure to network security (VirnetX's own proposal in E.D. Tex. 6:10‑cv‑00417 and in the IPR record; the Board in the related IPR2014‑00403 found "the skill level involved here is moderately high"). Microsoft's Proveris‑style arguments notwithstanding, the Federal Circuit in this very appeal held the Board may make PHOSITA findings without expert testimony (Belden v. Berk‑Tek, 805 F.3d 1064, 1079 (Fed. Cir. 2015)). That is important for the obviousness case: the motivations need not be proven by expert declaration.

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3. Prior-art inventory

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4. Element-by-element mapping (independent claims 1 and 16)

The practical point: each of the three principal references was found to disclose the entire claim 1/16 combination standing alone. Anticipation was found for want of a single element only as to a handful of dependent claims. That posture matters because under In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), anticipation does not require ipsissimis verbis correspondence — and a § 103 conclusion follows a fortiori wherever the § 102 finding is sustained.

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5. The combinations and why a PHOSITA would have combined them

Combination A — Wesinger + RFC 2543 (either order), optionally + RFC 1889 and RFC 2327

Renders claims 1–11, 14–25, 28–30 obvious (and the Board held claims 4–7, 18–21 obvious on this record).

Motivations, each tied to record evidence:

1. Express architectural invitation in Wesinger itself. Wesinger discloses that its channel processing is performed "using existing standard software modules," naming DES, RSA, Cylink, SET, SSL, MPEG, JPEG, and LZ-based algorithms. A firewall whose designers placed a documented, standardized encryption/compression module slot in the data path is an express suggestion to populate that slot with the era's standard codec and encryption modules. RFC 2543 supplies exactly such a module set (SDP + RTP).
2. Same field, same problem, same architecture (KSR, "known technique to improve similar device"). Both references solve the same problem — enabling sanctioned communication across a security boundary while hiding or controlling the endpoint addresses. Wesinger's transparent firewall and SIP's proxy servers are both intermediary-node architectures. Combining an intermediary that already performs name resolution and access control with a signaling protocol that requires an intermediary is not a reconstruction of either reference; it is the ordinary integration of a signaling layer onto an existing mediation layer.
3. Contemporaneous commercial reality in the same deployments. The record evidence (Petitioner's demonstratives, ¶¶ 309–313, in IPR2014‑00237/‑238) shows it was "common and desirable practice to use a single communications architecture to support a variety of services, including both a VOIP server and a firewall," with the SIP server on either side of the firewall; and that integrating SIP so that Wesinger's transparent firewall could regulate call setup was "simple and straightforward from a technical perspective." Demand-side motivation is sufficient under KSR.
4. Predictable result, high expectation of success. Both references are proxy/DNS-based, both operate above IP, and neither requires new physical infrastructure. There is no field-of-use incompatibility.
5. No teaching away. The Board expressly found the references do not teach away from one another and cited specific aspects of each; the Federal Circuit declined to disturb those findings because VirnetX did not contest them. Under In re Gurley (as applied by the court), a reference teaches away only if a PHOSITA reading it would be discouraged from the path — not merely if it could be improved.

Combination B — Beser + RFC 2401, optionally + RFC 2543

Renders claims 1–11, 14–25, 28–30 obvious; this is the ground the Board reached in IPR2014‑00237 (and independently, claims 1, 2, 16, 24 obvious over Beser alone).

Motivations:

1. Explicit incorporation-by-reference — the strongest possible motivation. Beser itself identifies IPsec as the conventional mechanism for its secure tunnels. RFC 2401 is the IPsec architecture document. KSR makes this combination effectively mechanical: where a reference names the standard that implements its own goal, applying that standard is obvious.
2. Design choice among a finite, identified set. RFC 2401's gateway/security-gateway designs (the designs in its figures) include the edge-router topology Beser already uses, so the combination is a selection among a small number of known options with predictable results.
3. Motivation stated functionally. Adding encryption to a tunnel that already hides addresses serves Beser's own stated object ("hiding the identity," "increase the security of communication without an increased computational burden").
4. Teaching-away argument was made and rejected. VirnetX contended Beser taught away from IPsec for audio/video (power cost, buffer decryption aiding hackers). The Board rejected it, holding that the art "implies or suggests solving these security problems by providing compatibility with known audio or video data encryption techniques," such that the combination would be "productive" and not "led in a direction divergent from the path that was taken by the applicant." That is the Gurley standard applied adversely to the patentee, and it is the cleanest § 103 rationale in the record.

Combination C — RFC 2543 alone, or RFC 2543 + RFC 1889 + RFC 2327 (+ a mobility document for the mobile-device claims)

Renders claims 1–11, 14–25, 28–30 obvious; asserted in IPR2014‑00237 as Ground 3.

Motivation: the claims, construed as the Board construed them, read on a proxy-mediated name-resolution-then-session-setup sequence, and SIP supplies that sequence. RFC 1889/2327 are invoked not for any new inventive content but to supply the mundane detail (RTP transport, SDP media enumeration) that makes the audio/video limitation explicit. Combining three mutually-referencing IETF specifications that expressly contemplate each other (RFC 2543 § on SDP/RTP) is the paradigm of an obvious combination of art. The "one of ordinary skill" would have looked to the IETF multimedia architecture precisely because RFC 2543 tells them to.

Combination D — Any of A/B/C + the '697's own admitted background art (Chaum's mixes; ZKS onion routing; proxy servers)

Renders dependent claims 3 and 17 (VPN link) and any address-hiding dependents obvious.

Motivation: the '697 specification concedes the multi-hop, encryption-layered, address-hiding architecture as prior art at columns 1–6. Where the specification itself recites the feature as known, the Graham "differences between the prior art and the claims" factor collapses: combining an admitted prior-art obfuscation scheme with an admitted prior-art DNS/proxy mediation scheme requires no leap.

Combination E — Wesinger or Beser + Aventail / Mayes / Tsuchiya / Provino

Renders obvious any dependent claim that stresses the interception mechanism itself.

The Aventail guides teach client-side interception and proxy redirection keyed on destination hostname ("create a false DNS entry" per the examiner's own chart in the '135 reexam); Tsuchiya‑93 teaches a NAT that intercepts DNS responses; Provino teaches easing communication by resolving human-readable addresses. These are cumulative to Wesinger on the interception element and are useful precisely because they defeat any argument that "intercepting" requires something more than receiving at an intermediary — the very construction the Board adopted.

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6. Dependent claims

The Board's grouping tells us which limitations are at issue (verbatim claim text for claims 2–15 and 17–30 was not in the material I retrieved — flagged):

Two structural points:

• Claims 12, 13, 26 and 27 do not appear in the IPR challenge tables (the CAFC opinion confirms the challenged set was claims 1–11, 14–25, and 28–30). They are therefore not covered by the affirmed invalidity judgment. My treatment of them above is inferential and should not be represented as adjudicated.
• Because the asserted dependents add only conventional implementation detail on top of a claim 1/16 the Board twice found anticipated, the § 103 case for the dependents is stronger than for the independents, not weaker.

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7. Objective indicia (Graham factor 4)

I found no secondary-consideration record for the '697: no nexus evidence, no commercial-success evidence tied to the claimed subject matter, no copying, and no licensing-demand evidence presented as objective indicia. VirnetX's district-court narrative (users found manual VPN setup burdensome) is a problem statement about the prior art, not evidence of nonobviousness; if anything, it supplies the "long-felt need" that cuts toward obviousness once the art is shown to satisfy the need. The claims were held unpatentable and cancelled (inter partes reexamination certificate dated 2018‑02‑22 cancelled claims 1–11, 14–25, 28–30), so no objective indicia can now attach.

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8. Where the § 103 case is weakest (adversarial view)

A patent owner would press three points, and each should be flagged as a genuine soft spot:

1. The timing linkage in "determining, in response to the request, whether the second network device is available." VirnetX's argument below was that Wesinger discloses two distinct requests — a DNS query and an ensuing connection request — and that the firewall's allow/deny processing occurs in response to the connection request, not the DNS request. The Board rejected this, reasoning from the '697's own specification (which equates "allowed" with "available" and describes the DNS proxy deciding and then requesting VPN creation). This is the single most contestable element, and it is where a § 103 framing is actually more robust than the § 102 framing: even if Wesinger's reference arguably separates the two steps, the '697 specification's own admission that a DNS proxy performs the check makes the combination with a SIP-style proxy obvious.
2. The "video data and audio data" limitation. Because it appears in both independent claims as a "wherein" clause, a patent owner may argue it is not entitled to weight. Observe that this cuts both ways: if it is a real limitation, RFC 2543 (and Beser) supply it; if it is not, the claim is broader and easier to invalidate. Either way the § 103 case survives.
3. "Secure communications service" as a distinct concept. Apple argued below that the specification never describes a secure communications service independent of a secure communication link. If accepted, the limitation adds nothing; if rejected, VirnetX must identify a separate service determination in the art — which it never did.

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9. Contradictions and uncertainties to flag explicitly

1. IPR2014‑00237's references were not identified in the earlier sections of this analysis. The prior "Litigation summary" described ‑00237 only as "the alternative ground." The record shows it was grounded on Beser (US 6,496,867) for § 102 and Beser + RFC 2401 for § 103. This supplements rather than contradicts the earlier summary.
2. One exhibit list in the record describes the IPR2014‑00237 Final Written Decision as "filed on Aug. 11, 2015." Every other citation, including the deciding panel's own papers, gives May 11, 2015 (Paper 41). I read the August date as an exhibit-list error, but I am not auto-correcting it — treat May 11, 2015 as the operative date pending a primary-source check.
3. OCR artifacts in the Federal Circuit opinion PDF retrieved via CourtListener render several citations as "35 U.S.C. § 108(a)," "In re Gantside," and "Groham v. John Deere." The substantive framework is the familiar Graham v. John Deere Co., 383 U.S. 1, 17 (1966) four-factor test and In re Gartside. Flagging rather than silently correcting.
4. Unverified: the filing date of Beser (US 6,496,867), and the Aventail guide publication dates. Both are asserted in IPR papers; I did not re-verify from primary documents.
5. Unverified: the priority date the Board applied to the '697 claims. As noted in § 1(b), the use of a March 1999 printed publication in a § 103 ground is difficult to reconcile with a 1998‑10‑30 effective date and implies a 1999–2000 date was applied. This is the most consequential unresolved point in the analysis and should be confirmed from the institution decisions before relying on it.
6. The earlier summary's caveat stands: I did not retrieve the verbatim printed claim set for claims 2–30, so the group-by-group mapping in § 6 is derived from the PTAB/CAFC treatment, not from the claim text.

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10. Conclusion

On the record developed before the Board and affirmed by the Federal Circuit, US 8,504,697's claims are obvious under § 103 along at least three independent paths, each of which requires no more than the ordinary creativity of a PHOSITA:

• Wesinger + RFC 2543 (the Board's express § 103 holding for claims 4–7, 18–21; and, because Wesinger alone was held to disclose claims 1–3, 8–11, 14–17, 22–25 and 28–30, it extends by operation of Gleave to the remainder);
• Beser + RFC 2401 (the IPR2014‑00237 ground — the motivation is written into Beser itself, which names IPsec); and
• RFC 2543 + RFC 1889 + RFC 2327, as an independent § 103 route to the same result.

The motivation-to-combine case rests on unusually firm ground because the record does not depend on asserted "design incentives" alone: Wesinger expressly provides the standardized module slot and expressly names encryption-based VPNs; Beser expressly names the standard (IPsec/RFC 2401) that supplies its encryption; and RFC 2543 expressly contemplates the SDP and RTP specifications that supply its media handling. Where a reference names the very standard that implements its own stated object, KSR makes the combination obvious as a matter of law.

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Sources

• Google Patents, US 8,504,697 B2 — https://patents.google.com/patent/US8504697/en
• IPR2014‑00238 Final Written Decision (Paper 41, May 11, 2015) — https://www.finnegan.com/a/web/[114969](/patent/114969)/2G4qRF/ipr2014-00238-final-written-decision-35-usc-c2a7-318a-and-3.pdf ; https://www.docketalarm.com/cases/PTAB/IPR2014-00238/Inter_Partes_Review_of_U.S._Pat._8504697/05-11-2015-Board/Final_Decision-41-Final_Written_Decision/
• IPR2014‑00237 Final Written Decision (Paper 41, May 11, 2015) — https://www.finnegan.com/a/web/[114968](/patent/114968)/2G4qRF/ipr2014-00237-final-written-decision-35-usc-c2a7-318a-and-3.pdf
• Petitioner's Demonstratives, IPR2014‑00237 (Ex. 1084, Feb. 5, 2015) — https://www.docketalarm.com/cases/PTAB/IPR2014-00237/Inter_Partes_Review_of_U.S._Pat._8504697/docs/02-05-2015-Petitioner/Exhibit-1084-Petitioners_Demonstratives.pdf
• VirnetX Inc. v. Apple Inc., 665 F. App'x 880 (Fed. Cir. Dec. 9, 2016) — https://www.courtlistener.com/opinion/[4328770](/patent/4328770)/virnetx-inc-v-apple-inc/
• Wesinger, US 5,898,830 / US 6,804,783 — https://patentimages.storage.googleapis.com/31/ae/7f/8a7553d0f03cd5/US6804783.pdf
• RFC 2543 (March 1999) — https://www.rfc-editor.org/rfc/rfc2543
• VirnetX v. Apple claim construction record, E.D. Tex. 6:10‑cv‑00417 (Dkt. 173) — https://www.courtlistener.com/docket/[4530682/173](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=4530682-0173)/virnetx-inc-v-apple-inc/
• Unified Patents PTAB/litigation portals — https://portal.unifiedpatents.com/ptab/case/IPR2014-00237 ; https://portal.unifiedpatents.com/ptab/case/IPR2014-00238