throbber
Case No. IPR2015-00866
`
`
`
`Paper No.
`Filed: October 23, 2015
`
`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
`
`
`Filed on behalf of: VirnetX Inc.
`By:
`
`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
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2015-00866
`Patent 8,458,341
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Opposition to Petitioner’s Motion to Submit
`Supplemental Information Pursuant to 37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`

`
`
`
`
`
`Case No. IPR2015-00866
`
`Table of Contents
`
`I.
`
`Introduction ...................................................................................................... 1
`
`II. Argument ......................................................................................................... 1
`
`III. Conclusion ....................................................................................................... 4
`
`
`
`i
`
`

`
`
`
`
`
`Case No. IPR2015-00866
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
`IPR2013-00369, Paper No. 37 (Feb. 5, 2014) ...................................................... 2
`
`Redline Detection, LLC v. Star Envirotech, Inc.,
`
`IPR2013-00106, Paper No. 35 (Sept. 11, 2013) ........................................... 1, 2, 4
`
`Valeo North America, Inc. v. Magna Electronics, Inc.,
`IPR2014-01204, Paper No. 26 (Apr. 10, 2015) .................................................... 2
`
`VTech Communications, Inc. v. Shperix Inc.,
`IPR2014-01431, Paper No. 21 (Apr. 7, 2015) .................................................. 2, 3
`
`
`
`Federal Rules
`
`
`37 C.F.R. § 42.123(a) ......................................................................................... 1, 2, 3
`
`ii
`
`

`
`
`
`I.
`
`Introduction
`
`
`
`Case No. IPR2015-00866
`
`Patent Owner VirnetX Inc. respectfully requests that the Board deny
`
`Petitioner Apple Inc.’s motion to supplement its original Petition with six
`
`supplemental exhibits purporting to show that RFC 2401 is a prior art printed
`
`publication. The Board’s case law under 37 C.F.R. § 42.123(a) is not so broad as
`
`to allow for the submission of exhibits that a petitioner purposefully chose to
`
`withhold from its original petition, as the Petitioner has done here. Thus,
`
`Petitioner’s motion should be denied.
`
`II. Argument
`37 C.F.R. § 42.123(a) requires a moving party to show that “(1) A request
`
`for the authorization to file a motion to submit supplemental information is made
`
`within one month of the date the trial is instituted” and “(2) The supplemental
`
`information must be relevant to a claim for which the trial has been instituted.” 37
`
`C.F.R. § 42.123(a). The Board has held that “nothing in 37 C.F.R. § 42.123
`
`requires that a request to submit supplemental information satisfying these two
`
`criteria automatically be granted no matter the circumstance.” Redline Detection,
`
`LLC v. Star Envirotech, Inc., IPR2013-00106, Paper No. 35 at 3 (Sept. 11, 2013)
`
`(citation omitted). And contrary to Petitioner’s claim that the Board does not
`
`consider whether a petitioner could have reasonably obtained the supplemental
`
`
`
`

`
`
`information earlier under Section 42.123(a) (see Mot. at 2), the Board has taken
`
`Case No. IPR2015-00866
`
`this fact into consideration.
`
`In VTech Communications, Inc. v. Shperix Inc., the Board addressed the
`
`petitioner’s motion under Section 42.123(a), but still noted that “Petitioner did not
`
`explain sufficiently why Petitioner could not have reasonably submitted such
`
`evidence with its Petition, as required by 35 U.S.C. § 312(a) and 37 C.F.R.
`
`§ 42.104(b).” IPR2014-01431, Paper No. 21 at 3 (Apr. 7, 2015). Likewise, in
`
`Palo Alto Networks, Inc. v. Juniper Networks, Inc. and Valeo North America, Inc.
`
`v. Magna Electronics, Inc., both relied on by Petitioner, the Board noted that there
`
`was no evidence that the petitioners intentionally withheld the information. Palo
`
`Alto, IPR2013-00369, Paper No. 37 at 4 (Feb. 5, 2014); Valeo, IPR2014-01204,
`
`Paper No. 26 at 4 (Apr. 10, 2015).
`
`Here, the information shows that the Petitioner was in possession of the
`
`majority of the supplemental information well prior to the filing of its original
`
`Petition and thus must have knowingly omitted them. (See, e.g., Mot. at
`
`Attachment A.) As the Board has found, “[t]he intentional delay in obtaining or
`
`presenting information to the Board is not in the interest of the efficient
`
`administration of the Office, nor does it further the ability of the Office to complete
`
`IPR proceedings in a timely manner.” Redline, IPR2013-00106, Paper No. 35 at 4-
`
`5. Section 42.123(a) is not a back door to enter information that Petitioner could
`
`2
`
`

`
`
`and should have included in its original petition. To allow it to be used in such a
`
`Case No. IPR2015-00866
`
`manner would be inconsistent with the Board’s statutory mandate to provide “just,
`
`speedy, and inexpensive resolution of every proceeding.”
`
`Section 42.123(a) also should not be used “to bolster the challenges
`
`presented originally in the petition, based on feedback gleaned from the decision
`
`on institution or patent owner’s preliminary response.” Vtech, IPR2014-01431,
`
`Paper No. 21 at 3 (citations omitted). Though Petitioner could have submitted its
`
`exhibits with its Petition, Petitioner chose only to make the naked assertion that
`
`“RFC 2401 (Ex. 1008) was published in November 1998,” relying solely on a date
`
`on the face of RFC 2401. (Pet. at 24.) Recognizing its mistake based on Patent
`
`Owner’s Preliminary Response, Petitioner now improperly attempts to bolster the
`
`challenges presented in its Petition with almost 250 pages of exhibits. The sheer
`
`volume of pages Petitioner seeks to introduce is prejudicial to Patent Owner.
`
`Reviewing all of these pages imposes a great burden on Patent Owner and weighs
`
`against the interests of justice. Accordingly, the Board should deny Petitioner’s
`
`attempt to submit its voluminous supplemental information after institution that
`
`should have been submitted with its Petition.1
`
`1 Petitioner’s motion should also be denied because Petitioner has not shown that
`
`all of its supplemental information is relevant to a reference upon which trial is
`
`instituted, much less to a claim for which trial is instituted, as Section 42.123(a)(2)
`
`3
`
`

`
`
`III. Conclusion
`For these reasons, Patent Owner respectfully requests that the Board deny
`
`Case No. IPR2015-00866
`
`Petitioner’s motion to submit supplemental information.
`
`
`
`Dated: October 23, 2015
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
`
`Counsel for VirnetX Inc.
`
`
`
`
`requires. See Redline, IPR2013-00106, Paper No. 35 at 6. For example, Exhibits
`
`1060 and 1061 relate to a different version of RFC 2401 than that relied upon by
`
`Petitioner in its Petition.
`
`4
`
`

`
`
`
`
`
`Case No. IPR2015-00866
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 23rd day of October 2015, a copy of the
`
`foregoing Patent Owner’s Opposition
`
`to Petitioner’s Motion
`
`to Submit
`
`Supplemental Evidence Pursuant to 37 C.F.R. § 42.123(a) was served by electronic
`
`
`
`mail upon the following:
`
`
`
`Counsel for Apple Inc.:
`
`
`Dated: October 23, 2015
`
`iprnotices@sidley.com
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`
`
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
`
`Counsel for VirnetX Inc.

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket