`Trials@uspto.gov
`571-272-7822
`
`Date Entered: November 2, 2015
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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 IPR2015-00810 (Patent 8,868,705 B2)
`Case IPR2015-00811 (Patent 8,868,705 B2)
`Case IPR2015-00812 (Patent 8,850,009 B2)
`Case IPR2015-00866 (Patent 8,458,342 B2)
`Case IPR2015-00868 (Patent 8,516,131 B2)
`Case IPR2015-00870 (Patent 8,560,705 B2)
` Case IPR2015-00871 (Patent 8,560,705 B2)1
`_______________
`
`
`
`Before KARL D. EASTHOM, JENNIFER S. BISK, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(a)(1)
`
`
`1 This Decision addresses issues that are identical in all cases. We exercise
`our discretion to issue one Decision to be filed in each case. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`
`
`
`IPR2015-00810 (Patent 8,868,705) IPR2015-00811 (Patent 8,868,705)
`IPR2015-00812 (Patent 8,850,009) IPR2015-00866 (Patent 8,458,342)
`IPR2015-00868 (Patent 8,516,131) IPR2015-00870 (Patent 8,560,705)
`IPR2015-00871 (Patent 8,560,705)
`
`
`
`I. INTRODUCTION
`
`
`
`Petitioner, Apple Inc., filed a Motion to Submit Supplemental
`
`Information Pursuant to 37 C.F.R. § 42.123(a). Paper 17 (“Motion” or
`
`“Mot.”).2 Patent Owner, VirnetX Inc., opposed the Motion. Paper 19
`
`(“Opposition” or “Opp.”). The Motion requests that supplemental
`
`information, represented by Exhibits 1057 to 1065 in IPR2015-00811 and -
`
`00871 and Exhibits 1060 to 1065 in IPR2015-00810, -00812, -00866, -
`
`00868, and -00871, be made of record in the respective proceedings. Mot. 1
`
`n1.
`
`Petitioner asserts Exhibits 1057 to 1059 are relevant to the public
`
`availability of Aventail Connect (Exhibits 1009–1011) and Exhibits 1060–
`
`1065 are relevant to the public availability of RFC 2401 (Ex. 1008). Mot. 1.
`
`Accordingly, Petitioner asserts that Aventail Connect and RFC 2401 were
`
`publicly available prior to the effective filing date of, in CBM2015-00811,
`
`US Patent 8,868,705 (the “’705 patent”). Id. Petitioner asserts public
`
`availability is an issue raised by Patent Owner in its Preliminary Response
`
`(Paper 6, 1–6, “Prelim. Resp.”) and Request for Rehearing (Paper 12, 3–4).
`
`Id. at 4.
`
`For the reasons set forth below, the Motion is granted.
`
`II. DISCUSSION
`
`Pursuant to 37 C.F.R. § 42.123 (a), after institution of trial, a
`
`petitioner may request authorization to file a motion to submit supplemental
`
`information. The rule states:
`
`
`2
` Unless otherwise noted, we refer to the papers in IPR2015-00811, which
`includes all supplemental information under consideration in all cases.
`
`2
`
`
`
`
`IPR2015-00810 (Patent 8,868,705) IPR2015-00811 (Patent 8,868,705)
`IPR2015-00812 (Patent 8,850,009) IPR2015-00866 (Patent 8,458,342)
`IPR2015-00868 (Patent 8,516,131) IPR2015-00870 (Patent 8,560,705)
`IPR2015-00871 (Patent 8,560,705)
`
`
`
`§ 42.123 Filing of supplemental information.
`
`
`
`(a) Motion to submit supplemental information. Once a
`trial has been instituted, a party may file a motion to submit
`supplemental information in accordance with the following
`requirements:
`
`(1) A request for the authorization to file a motion to
`submit supplemental information is made within one month of
`the date for which the trial has been instituted.
`
`(2) The supplemental information must be relevant to a
`claim for which the trial has been instituted.
`
`Although Petitioner met the threshold requirements recited in
`
`subparts (a)(1) and (2) of 37 C.F.R. § 42.123(a) and was authorized
`
`via email to file a motion to submit supplemental information,
`
`authorization does not guarantee that the motion will be granted. The
`
`burden of proof remains with Petitioner to establish that it is entitled
`
`to the requested relief. 37 C.F.R. § 42.20(c). In construing our Rules,
`
`we are guided by our mandate “to secure the just, speedy, and
`
`inexpensive resolution” to this proceeding. See 37 CF.R. § 42.1(b).
`
`A. Exhibits 1057–1059 (Aventail Connect Exhibits)
`
`Exhibits 1022, 1023, and 1043 were filed with the Petition and
`
`relate to public availability of Aventail Connect. Mot. 5 n.2. For
`
`example, Exhibit 1023, the Declaration of Chris Hopen (“Hopen
`
`Declaration”), describes the availability of Aventail Connect. Id. at 5
`
`(citing Ex. 1023 ¶¶ 13–16)). Prior to the filing of the Motion, Patent
`
`Owner objected to Exhibits 1022, 1023, and 1043 (“First Objection,”
`
`3
`
`
`
`
`IPR2015-00810 (Patent 8,868,705) IPR2015-00811 (Patent 8,868,705)
`IPR2015-00812 (Patent 8,850,009) IPR2015-00866 (Patent 8,458,342)
`IPR2015-00868 (Patent 8,516,131) IPR2015-00870 (Patent 8,560,705)
`IPR2015-00871 (Patent 8,560,705)
`
`
`Paper 11, 1).3 In response to the First Objection, Petitioner served
`
`
`
`Exhibits 1057–1059 as supplemental evidence under 37 C.F.R.
`
`§ 42.64(b)(2). Id. 5 n.2.
`
`Petitioner contends Exhibits 1057–1059 contain testimony from
`
`Mr. Hopen that corroborates the reliability of Exhibits 1022, 1023,
`
`and 1043 and are supplemental information. Mot. 5 n.2 (citing Valeo
`
`North Am., Inc. v. Magna Elects., Inc., IPR2014-01204, Paper 26 at 5
`
`(PTAB Apr. 10, 2015)). Specifically, Exhibit 1057 is a rough
`
`transcript of Mr. Hopen’s deposition in the related District Court
`
`litigation and Exhibit 1058 is an exhibit from that deposition. Id. at 6
`
`(citing Ex. 1057, 4–6, 191; Ex. 1058, i (marked as deposition exhibit
`
`“P4”)). Exhibit 1059 is a transcript of part of the trial in the related
`
`District Court litigation. Id. at 8. Petitioner asserts that Exhibits
`
`1057–1059 support its contention that Aventail Connect is prior art to
`
`the challenged claims. Mot. 8.
`
`Patent Owner argues that all of the exhibits offered as
`
`supplemental information prejudicial, amount to almost 900 pages.
`
`Opp. 1, 3. Patent Owner also points out that “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.” Id. at 2 (citing Mot., Attachment A). Patent Owner
`
`argues that the “intentional delay” in obtaining or presenting
`
`
`3 Patent Owner objected on the grounds that the exhibits are: (1) not relevant
`to the grounds upon which trial was instituted; and (2) inadmissible hearsay.
`Paper 11, 1.
`
`
`4
`
`
`
`
`IPR2015-00810 (Patent 8,868,705) IPR2015-00811 (Patent 8,868,705)
`IPR2015-00812 (Patent 8,850,009) IPR2015-00866 (Patent 8,458,342)
`IPR2015-00868 (Patent 8,516,131) IPR2015-00870 (Patent 8,560,705)
`IPR2015-00871 (Patent 8,560,705)
`
`
`information does not “further the ability of the Office to complete IPR
`
`
`
`proceedings in a timely manner.” Id. at 2–3. Patent Owner concludes
`
`all of the exhibits Petitioner seeks to make of record as supplemental
`
`information should have been filed with the Petition. Id. at 3–4.
`
`Preliminarily, that Exhibits 1057–1059 have been served as
`
`supplemental evidence does not preclude those same exhibits from
`
`being supplemental information. “Nothing in the Board’s rules
`
`prohibits a party from filing, as supplemental information, evidence
`
`which also is responsive to evidentiary objections.” Valeo, Paper 26,
`
`at 5.
`
`Under 37 C.F.R. § 42.123(a), unlike 37 C.F.R. § 42.123(b),
`
`Petitioner need not “show why the supplemental information
`
`reasonably could not have been obtained earlier.” While Petitioner
`
`does not allege the delay was unintentional, Petitioner argues that it is
`
`not relevant to the analysis under 37 C.F.R. § 42.123(a) that the
`
`supplemental information “could not have been obtained earlier.” See
`
`Mot. 2. Patent Owner asserts the delay was “intentional” without any
`
`evidence or authority that, even if the delay was intentional, we
`
`should preclude the supplemental information. Thus, we are not
`
`persuaded by Patent Owner’s argument regarding “intentional delay.”
`
`We are not persuaded that there is any undue prejudice to
`
`Patent Owner by allowing the supplemental information as part of the
`
`record in this proceeding. Patent Owner’s prejudice argument relies
`
`on the volume of the exhibits, almost 900 pages. However, based on
`
`the quoted portions of the exhibits in the Motion the volume of
`
`5
`
`
`
`
`IPR2015-00810 (Patent 8,868,705) IPR2015-00811 (Patent 8,868,705)
`IPR2015-00812 (Patent 8,850,009) IPR2015-00866 (Patent 8,458,342)
`IPR2015-00868 (Patent 8,516,131) IPR2015-00870 (Patent 8,560,705)
`IPR2015-00871 (Patent 8,560,705)
`
`
`relevant is evidence relating to whether Aventail Connect was
`
`
`
`publicly available is limited to a few pages. See Mot. 6–8. Thus,
`
`while we take at face value4 that the exhibits include many pages, the
`
`need to review and respond to them should be circumscribed by the
`
`limited issue on which the exhibits are proffered.5 Petitioner also
`
`alleges, and Patent Owner does not dispute, there is no prejudice to
`
`Patent Owner because Patent Owner has investigated and even had
`
`possession of some of the exhibits from the related litigation. Mot.
`
`12–13.
`
`Consideration of all of the supplemental information (Exhibits
`
`1057—1065) will not change the grounds of unpatentability. See
`
`Mot. 11–12. The evidence is proffered solely on the limited issue of
`
`whether Aventail Connect was publicly available prior to the effective
`
`date. No new issues are added.
`
`Neither will submission of Exhibits 1057–1059 likely interfere
`
`with the speed or efficiency of trial. See Mot. 13. As noted above,
`
`the exhibits in question are corroboration of evidence already of
`
`record, specifically the Hopen Declaration. Indeed, all of the exhibits
`
`relate to previous testimony of Mr. Hopen. Patent Owner’s Response
`
`is not due until December 11, 2015, and given the nature of the
`
`
`4 Petitioner served but has not filed the supplemental information. Mot. 13,
`n.4.
`5 Upon the filing of this Decision, we suggest Petitioner remove any pages in
`the exhibits that are not relevant to whether Aventail Connect was publicly
`available prior to the effective date prior to filing the exhibits.
`
`6
`
`
`
`
`IPR2015-00810 (Patent 8,868,705) IPR2015-00811 (Patent 8,868,705)
`IPR2015-00812 (Patent 8,850,009) IPR2015-00866 (Patent 8,458,342)
`IPR2015-00868 (Patent 8,516,131) IPR2015-00870 (Patent 8,560,705)
`IPR2015-00871 (Patent 8,560,705)
`
`
`exhibits it would seem unlikely an additional deposition of Mr. Hopen
`
`
`
`will be necessary.
`
`Petitioner may submit Exhibits 1057–1059 as supplemental
`
`information.
`
`B. Exhibits 1060–1065 (RFC 2401 Exhibits)
`
`In the Institution Decision, we determined preliminarily that
`
`Petitioner has made a threshold showing that RFC 2401, which
`
`displays a date of November 1998, constitutes a prior art printed
`
`publication. Dec. 10–11. Accordingly, we considered the disclosure
`
`of RFC 2401 for the purposes of the Institution Decision. Petitioner
`
`seeks to submit supplemental information (Exhibits 1060–1065) to
`
`prove that RFC 2401 was publicly available prior to effective date of
`
`the patents at issue.
`
`The exhibits include testimony by Sandy Ginoza, a
`
`representative of the Internet Engineering Task Force (“IETF”), and
`
`additional documentation. Mot. 1. Exhibits 1060 and 1063 are
`
`respectively a declaration and deposition of Ms. Ginoza, acting as a
`
`designated representative of the IETF, testifying that RFC 2401 was
`
`publicly available in November 1998 produced during a trial before
`
`the International Trade Commission (ITC). Mot. 9, 10. Exhibit 1061
`
`is a Bates stamped copy of RFC 2401 produced in the ITC. Id.
`
`Exhibit 1062 is a redline comparison of RFC 2401 from Exhibit 1061
`
`in the ITC to Exhibit 1008 submitted here allegedly showing no
`
`substantive differences between the two. Id. at 9–10. Exhibit 1064 is
`
`an article from InfoWorld magazine and Exhibit 1065 is an article
`
`7
`
`
`
`
`IPR2015-00810 (Patent 8,868,705) IPR2015-00811 (Patent 8,868,705)
`IPR2015-00812 (Patent 8,850,009) IPR2015-00866 (Patent 8,458,342)
`IPR2015-00868 (Patent 8,516,131) IPR2015-00870 (Patent 8,560,705)
`IPR2015-00871 (Patent 8,560,705)
`
`
`from NetworkWorld magazine which state that it was “known that
`
`
`
`RFCs, and RFC 2401 specifically, were publicly available through the
`
`Internet, such as through the IETF’s website.” Id. at 11.
`
`Petitioner does not make any argument beyond those made
`
`above in connection with Exhibits 1057–1059. Similarly, Patent
`
`Owner makes no argument specific to Exhibits 1060–1065. Patent
`
`Owner’s arguments were all addressed above in II.A.
`
`Petitioner may submit Exhibits 1060–1065 as supplemental
`
`information.
`
`III. SUMMARY AND CONCLUSION
`
`We are persuaded that all of the supplemental information
`
`(Exhibits 1057–1065) proffered by Petitioner under 37 C.F.R.
`
`§ 42.123 (a) relates to the public accessibility of Aventail Connect and
`
`RFC 2401, the references upon which trial was instituted in these
`
`various proceedings. The supplemental information provides
`
`additional evidence that the prior art for each of the instituted grounds
`
`are indeed prior art and does not change “the grounds of
`
`unpatentability authorized in this proceeding” or “the evidence
`
`initially presented in the Petition to support those grounds of
`
`unpatentability.” Palo Alto Networks, Inc v. Juniper Networks, Inc.,
`
`IPR2013-00369, Paper 37 at 3 (PTAB Feb. 5, 2014).
`
` Petitioner has established that all of the supplemental
`
`information should be filed and considered as part of the trial in the
`
`respective proceedings.
`
`8
`
`
`
`
`IPR2015-00810 (Patent 8,868,705) IPR2015-00811 (Patent 8,868,705)
`IPR2015-00812 (Patent 8,850,009) IPR2015-00866 (Patent 8,458,342)
`IPR2015-00868 (Patent 8,516,131) IPR2015-00870 (Patent 8,560,705)
`IPR2015-00871 (Patent 8,560,705)
`
`
`
`IV. ORDER
`
`
`
`ORDERED that Petitioner’s Motion to Submit Supplemental
`
`Information under 37 C.F.R. § 42.123 (a) is granted as follows:
`
`(1) Exhibits 1057–1065 may be filed in IPR2015-00811 and IPR2015-
`
`00871;
`
`(2) Exhibits 1060–1065 may be filed in IPR2015-00810, IPR2015-
`
`00812, IPR2015-00866, IPR2015-00868, and IPR2015-00870;
`
`FURTHER ORDERED that a copy of this Decision shall be filed in
`
`IPR2015-00810, IPR2015-00811, IPR2015-00812, IR2015-00866,
`
`IPR2015-00868, IPR2015-00870, and IPR2015-00871.
`
`
`
`9
`
`
`
`
`IPR2015-00810 (Patent 8,868,705) IPR2015-00811 (Patent 8,868,705)
`IPR2015-00812 (Patent 8,850,009) IPR2015-00866 (Patent 8,458,342)
`IPR2015-00868 (Patent 8,516,131) IPR2015-00870 (Patent 8,560,705)
`IPR2015-00871 (Patent 8,560,705)
`
`
`
`
`
`
`
`For Petitioner:
`
`Jeffrey Kushan
`Thomas A. Broughan, III
`SIDLEY AUSTIN LLP
`IPRNotices@sidley.com
`tbroughan@sidley.com
`
`For Patent Owner:
`
`Joseph Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`Jason Stach
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`jason.stach@finnegan
`
`
`10