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`Paper No.
`Filed: October 23, 2015
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`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: naveenmodi@paulhastings.com
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`Filed on behalf of: VirnetX Inc.
`By:
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`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: josephpalys@paulhastings.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
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`v.
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`VIRNETX INC.
`Patent Owner
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`Case IPR2015-00866
`Patent 8,458,341
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`Patent Owner’s Opposition to Petitioner’s Motion to Submit
`Supplemental Information Pursuant to 37 C.F.R. § 42.123(a)
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`Case No. IPR2015-00866
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`Table of Contents
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`I.
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`Introduction ...................................................................................................... 1
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`II. Argument ......................................................................................................... 1
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`III. Conclusion ....................................................................................................... 4
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`i
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`Case No. IPR2015-00866
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
`IPR2013-00369, Paper No. 37 (Feb. 5, 2014) ...................................................... 2
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`Redline Detection, LLC v. Star Envirotech, Inc.,
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`IPR2013-00106, Paper No. 35 (Sept. 11, 2013) ........................................... 1, 2, 4
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`Valeo North America, Inc. v. Magna Electronics, Inc.,
`IPR2014-01204, Paper No. 26 (Apr. 10, 2015) .................................................... 2
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`VTech Communications, Inc. v. Shperix Inc.,
`IPR2014-01431, Paper No. 21 (Apr. 7, 2015) .................................................. 2, 3
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`Federal Rules
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`37 C.F.R. § 42.123(a) ......................................................................................... 1, 2, 3
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`ii
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`I.
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`Introduction
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`Patent Owner VirnetX Inc. respectfully requests that the Board deny
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`Petitioner Apple Inc.’s motion to supplement its original Petition with six
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`supplemental exhibits purporting to show that RFC 2401 is a prior art printed
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`publication. The Board’s case law under 37 C.F.R. § 42.123(a) is not so broad as
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`to allow for the submission of exhibits that a petitioner purposefully chose to
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`withhold from its original petition, as the Petitioner has done here. Thus,
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`Petitioner’s motion should be denied.
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`II. Argument
`37 C.F.R. § 42.123(a) requires a moving party to show that “(1) A request
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`for the authorization to file a motion to submit supplemental information is made
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`within one month of the date the trial is instituted” and “(2) The supplemental
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`information must be relevant to a claim for which the trial has been instituted.” 37
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`C.F.R. § 42.123(a). The Board has held that “nothing in 37 C.F.R. § 42.123
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`requires that a request to submit supplemental information satisfying these two
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`criteria automatically be granted no matter the circumstance.” Redline Detection,
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`LLC v. Star Envirotech, Inc., IPR2013-00106, Paper No. 35 at 3 (Sept. 11, 2013)
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`(citation omitted). And contrary to Petitioner’s claim that the Board does not
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`consider whether a petitioner could have reasonably obtained the supplemental
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`information earlier under Section 42.123(a) (see Mot. at 2), the Board has taken
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`this fact into consideration.
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`In VTech Communications, Inc. v. Shperix Inc., the Board addressed the
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`petitioner’s motion under Section 42.123(a), but still noted that “Petitioner did not
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`explain sufficiently why Petitioner could not have reasonably submitted such
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`evidence with its Petition, as required by 35 U.S.C. § 312(a) and 37 C.F.R.
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`§ 42.104(b).” IPR2014-01431, Paper No. 21 at 3 (Apr. 7, 2015). Likewise, in
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`Palo Alto Networks, Inc. v. Juniper Networks, Inc. and Valeo North America, Inc.
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`v. Magna Electronics, Inc., both relied on by Petitioner, the Board noted that there
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`was no evidence that the petitioners intentionally withheld the information. Palo
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`Alto, IPR2013-00369, Paper No. 37 at 4 (Feb. 5, 2014); Valeo, IPR2014-01204,
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`Paper No. 26 at 4 (Apr. 10, 2015).
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`Here, the information shows that the Petitioner was in possession of the
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`majority of the supplemental information well prior to the filing of its original
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`Petition and thus must have knowingly omitted them. (See, e.g., Mot. at
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`Attachment A.) As the Board has found, “[t]he intentional delay in obtaining or
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`presenting information to the Board is not in the interest of the efficient
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`administration of the Office, nor does it further the ability of the Office to complete
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`IPR proceedings in a timely manner.” Redline, IPR2013-00106, Paper No. 35 at 4-
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`5. Section 42.123(a) is not a back door to enter information that Petitioner could
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`2
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`and should have included in its original petition. To allow it to be used in such a
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`manner would be inconsistent with the Board’s statutory mandate to provide “just,
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`speedy, and inexpensive resolution of every proceeding.”
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`Section 42.123(a) also should not be used “to bolster the challenges
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`presented originally in the petition, based on feedback gleaned from the decision
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`on institution or patent owner’s preliminary response.” Vtech, IPR2014-01431,
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`Paper No. 21 at 3 (citations omitted). Though Petitioner could have submitted its
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`exhibits with its Petition, Petitioner chose only to make the naked assertion that
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`“RFC 2401 (Ex. 1008) was published in November 1998,” relying solely on a date
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`on the face of RFC 2401. (Pet. at 24.) Recognizing its mistake based on Patent
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`Owner’s Preliminary Response, Petitioner now improperly attempts to bolster the
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`challenges presented in its Petition with almost 250 pages of exhibits. The sheer
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`volume of pages Petitioner seeks to introduce is prejudicial to Patent Owner.
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`Reviewing all of these pages imposes a great burden on Patent Owner and weighs
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`against the interests of justice. Accordingly, the Board should deny Petitioner’s
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`attempt to submit its voluminous supplemental information after institution that
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`should have been submitted with its Petition.1
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`1 Petitioner’s motion should also be denied because Petitioner has not shown that
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`all of its supplemental information is relevant to a reference upon which trial is
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`instituted, much less to a claim for which trial is instituted, as Section 42.123(a)(2)
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`3
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`III. Conclusion
`For these reasons, Patent Owner respectfully requests that the Board deny
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`Case No. IPR2015-00866
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`Petitioner’s motion to submit supplemental information.
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`Dated: October 23, 2015
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`Respectfully submitted,
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`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
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`Counsel for VirnetX Inc.
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`requires. See Redline, IPR2013-00106, Paper No. 35 at 6. For example, Exhibits
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`1060 and 1061 relate to a different version of RFC 2401 than that relied upon by
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`Petitioner in its Petition.
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`4
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`Case No. IPR2015-00866
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 23rd day of October 2015, a copy of the
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`foregoing Patent Owner’s Opposition
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`to Petitioner’s Motion
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`to Submit
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`Supplemental Evidence Pursuant to 37 C.F.R. § 42.123(a) was served by electronic
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`mail upon the following:
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`Counsel for Apple Inc.:
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`Dated: October 23, 2015
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`iprnotices@sidley.com
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
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`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
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`Counsel for VirnetX Inc.