Trials@uspto.gov Paper No. 10 Paper No. 18
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`571-272-7822
`Date Entered: September 16, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`
`VIRNETX, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00486
`Patent 8,051,181 B2
`____________
`
`Before TONI R. SCHEINER, MICHAEL P. TIERNEY, and
`KARL D. EASTHOM, Administrative Patent Judges.
`
`SCHEINER, Administrative Patent Judge.
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`
`
`DECISION
`
`Denying Petitioner’s Motion for Joinder
`and Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122
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`

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`IPR2014-00486
`Patent 8,051,181 B2
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`I. INTRODUCTION
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`Petitioner, Apple Inc. (“Apple”), filed a Petition (Paper 1, “Pet.”) on
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`March 10, 2014, requesting inter partes review of claims 1-29 of U.S. Patent
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`No. 8,051,181 B2 (“the ’181 patent”) under 35 U.S.C. §§ 311-319. Concurrently,
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`Apple filed a Motion for Joinder (Paper 3, “Mot.”) requesting consideration of the
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`Petition with its petitions in Cases IPR2014-00483 and IPR2014-00484
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`(challenging U.S. Patent No. 7,987,274 (“the ’274 patent”)), and petitions in
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`Cases IPR2014-00403 and IPR2014-00404, filed by Microsoft Corporation (also
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`challenging the ’274 patent).1 Specifically, Apple “moves to join any proceedings
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`based on these petitions in a single proceeding.” Mot. 1.
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`Patent Owner, VirnetX Inc. (“VirnetX”) filed an opposition to Petitioner’s
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`Motion (Paper 6, “Opp.”), and a Preliminary Response (Paper 15, “Prelim.
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`Resp.”). Apple filed a Reply in support of its Motion (Paper 9, “Pet. Reply”).
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`For the reasons that follow, Apple’s Motion for Joinder is denied, the
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`Petition for inter partes review is denied as untimely, and no trial is instituted.
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`A. Related Proceedings
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`The ’181 patent was asserted against Apple in VirnetX Inc. v. Apple Inc.,
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`No. 11-cv-00563-LED (E.D. Tex.). Pet. 2; Paper 5, 8. The ’181 patent also is the
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`subject of inter partes reexamination Control No. 95/001,949. Pet. 2. In addition,
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`Apple filed a separate Petition requesting inter partes review of claims 1–29 of the
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`’181 patent—IPR2014-00485.
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`1 Inter partes reviews were instituted in Cases IPR2014-00403 and IPR2014-00404
`on July 31, 2014.
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`2
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`

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`IPR2014-00486
`Patent 8,051,181 B2
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`B. The ’181 Patent
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`
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`The ’181 patent is directed to “a method for establishing a secure
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`communication link between a first computer and a second computer over a
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`computer network, such as the Internet.” Ex. 1025, 6:37–39.
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`C. Illustrative Claim
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`Claims 1, 2, 24, 26, 28, and 29 of the challenged claims are independent.
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`Claim 2 of the ’181 patent is illustrative, and is reproduced below:
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`A method of using a first device to communicate
`2.
`with a second device having a secure name, the method
`comprising:
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`from the first device, sending a message to a
`secure name service, the message requesting a network
`address associated with the secure name of the second
`device;
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`at the first device, receiving a message containing
`the network address associated with the secure name of
`the second device; and
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`from the first device, sending a message to the
`network address associated with the secure name of the
`second device using a secure communication link.
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`Ex. 1025, 55:42–52.
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`Apple relies on the following prior art:
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`D. The Prior Art
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`Beser et al. US 6,496,867 B1 Dec. 17, 2002
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`(Ex. 1031).
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`Takahiro Kiuchi and Shigekoto Kaihara, C-HTTP – The Development
`of a Secure, Closed HTTP-based Network on the Internet,
`Proceedings of the Symposium on Network and Distributed System
`Security, IEEE, 1996 (“Kiuchi”) (Ex. 1004).
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`3
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`

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`IPR2014-00486
`Patent 8,051,181 B2
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`S. Kent et al., Security Architecture for the Internet Protocol, Network
`Working Group, Request For Comments: 2401 1–66 (Nov. 1998)
`(“RFC 2401”) (Ex. 1032).
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`M. Handley et al., SIP: Session Initiation Protocol, Network Working
`Group, Request For Comments: 2543 1–153 (Mar. 1999) (“RFC
`2543”) (Ex. 1033).
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`E. The Asserted Grounds of Unpatentability
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`
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`Apple asserts the challenged claims are unpatentable based on the following
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`grounds. Pet. 13–59.
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`Basis
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`Reference(s)
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`Beser
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`Beser and RFC 2401
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`Beser and Kiuchi
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`Claims
`Challenged
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`1–29
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`1–29
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`3, 4, 23
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`§ 102
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`§ 103
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`§ 103
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`§ 103
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`§ 102
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`Beser and RFC 2543
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`22, 24, 27
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`Kiuchi
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`1–6, 8, 9, 13–19,
`21–29
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`II. ANALYSIS
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`A. Timeliness of the Petition
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`
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`Section 315(b) of Title 35 of the United States Code is as follows:
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`(b) PATENT OWNER’S ACTION.—An inter partes review may not
`be instituted if the petition requesting the proceeding is filed more
`than 1 year after the date on which the petitioner . . . is served with a
`complaint alleging infringement of the patent. The time limitation set
`forth in the preceding sentence shall not apply to a request for joinder
`under subsection (c).
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`4
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`

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`IPR2014-00486
`Patent 8,051,181 B2
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`Apple acknowledges it was served with a complaint for infringement of the
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`’181 patent on November 1, 2011—more than one year before the present Petition
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`was filed. Pet. 1; Mot. 2. Nevertheless, Apple argues that its Petition is timely and
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`the one-year time bar does not apply because the Petition was accompanied by a
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`motion to join the instant proceeding with the previously instituted proceedings
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`involving the ’274 patent—which petitions were filed within the one year time
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`limit. Pet. 1; Mot. 2.
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`In other words, Apple’s Petition challenging the ’181 patent would be
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`untimely under § 315(b), absent joinder with a proceeding challenging the
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`’274 patent. See Samsung Elecs. Co. v. Va. Innovation Scis., Inc., Case IPR2014-
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`00557, slip op. at 15 (PTAB June 13, 2014) (Paper 10) (“Petitioner was served
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`with a complaint asserting infringement of the ’398 Patent more than one year
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`before filing this Petition. Thus, absent joinder of this proceeding with IPR2013-
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`000571, the Petition would be barred.” (footnote omitted)).
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`B. Joinder
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`The statutory provision governing joinder of inter partes review proceedings
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`is 35 U.S.C. § 315(c), which reads as follows:
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`(c) JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a response,
`determines warrants the institution of an inter partes review under
`section 314.
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`Apple argues that joinder is warranted because the ’181 and ’274 patents are
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`“very closely related” and “raise a set of overlapping issues that are most
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`efficiently addressed in one inter partes proceeding.” Mot. 1. Essentially, Apple
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`5
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`IPR2014-00486
`Patent 8,051,181 B2
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`argues that independent “claim 2 of the ’181 patent and claim 1 of the ’274
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`patent . . . recite highly similar steps” (id. at 6), and that VirnetX “conceded the
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`’181 and ’274 patent claims are not patentably distinct” (id. at 9), as evidenced by
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`reciprocal terminal disclaimers filed in the ’181 and ’274 patents in response to
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`non-statutory obviousness-type double patenting rejections (id. at 10). Apple
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`argues that “[t]he ’274 and ’181 patents also have a nearly identical disclosure . . .
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`and their claims have the same effective filing date” so “there will be no distinct
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`issues of applicability of the prior art to the claims in the ’274 and ’181 patents,
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`and consistent interpretations will be used for the claim terms” (id. at 11).
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`Apple further argues that “[t]he petitions against the ’181 patent . . . rely on
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`the same four primary references” relied on in the petitions against the ’274 patent.
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`Mot. 13. Apple argues the -00485, -00486, -00483, -00484, -00403, and -00404
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`petitions “present substantially overlapping grounds” (id.), as shown in the
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`following table:
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`Mot. 12.
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`6
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`IPR2014-00486
`Patent 8,051,181 B2
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`Apple acknowledges that the claims of the two patents differ in scope—i.e.,
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`the claims in the ’181 patent are broader than the claims in the ’274 patent. Pet.
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`Reply 4. Apple also acknowledges “as [the ’181] patent has different claims,
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`different explanations are provided as to why the ’181 claims are unpatentable over
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`those four references.” Mot. 13. However, in mitigation of this, Apple argues “if
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`the Board finds the ’274 claims unpatentable over certain prior art, that same prior
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`art necessarily will render the broader ’181 patent claims unpatentable” (Pet.
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`Reply 4).
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`VirnetX argues that “terminal disclaimers are not an admission that claims
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`are patentably indistinct” (Opp. 7), and it “never ‘conceded’ that the claims of the
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`’181 and ’274 patents are patentably indistinct’” (id. at 8). Moreover, VirnetX
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`points out that joining Apple’s -00483, -00484, -00485, and -00486 petitions with
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`Microsoft’s -00403 and -00404 petitions would “add[] to Microsoft’s proceedings
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`. . . six additional prior art references [not shown in the table above], nineteen new
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`grounds of unpatentability, three new declarations totaling over 660 pages, and one
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`declarant.” Id. at 1. VirnetX also argues that “Apple’s twenty-nine additional
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`claims involve new claim terms and claim construction issues . . . not raised in
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`Microsoft’s petitions” (id. at 8), and the “unpatentability analyses required to
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`address all of the new references and grounds of rejection introduced by Apple will
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`have a significant impact on the proceeding” (id. at 9).
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`We have considered Apple’s arguments in support of joinder and VirnetX’s
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`arguments in opposition, and are not persuaded that joinder of proceedings
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`involving claims of differing scope in two distinct patents is warranted or justified
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`on the facts presented. As discussed above, joinder of two or more proceedings for
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`inter partes review is discretionary. See 35 U.S.C. § 315(c). We decline to
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`exercise that discretion to join these proceedings.
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`7
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`IPR2014-00486
`Patent 8,051,181 B2
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`III. CONCLUSION
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`We deny the Motion for Joinder and, therefore, deny the Petition because it
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`was not filed within the time limit imposed by 35 U.S.C. § 315(b).
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`IV. ORDER
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`In consideration of the foregoing, it is ORDERED that Petitioner’s motion
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`for joinder is denied; and
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`FURTHER ORDERED that the Petition challenging the patentability of
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`claims 1–29 of U.S. Patent No. 8,051,181 is denied and no trial is instituted.
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`8
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`

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`IPR2014-00486
`Patent 8,051,181 B2
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`PETITIONER:
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`Jeffrey Kushan
`jkushan@sidley.com
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`Joseph Micallef
`jmicallef@sidley.com
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`PATENT OWNER:
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`Joseph Palys
`josephpalys@paulhastings.com
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`Jason Stach
`Jason.stach@finnegan.com
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`Naveen Modi
`naveenmodi@paulhastings.com
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`9