Trials@uspto.gov
`571.272.7822
`
`Paper No. 13
`
` Filed: January 25, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00063
`Patent 7,490,151 B2
`____________
`
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I.
`
`INTRODUCTION
`
`Apple, Inc. (“Petitioner”) filed a Petition (“Pet.”) on October 26, 2015
`
`(Paper 1) requesting inter partes review of claims 1, 2, 6–8, and 12–14 of
`
`U.S. Patent No. 7,490,151 (“the ’151 Patent,” Ex. 1001). Along with the
`
`
`571.272.7822
`
`Paper No. 13
`
` Filed: January 25, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00063
`Patent 7,490,151 B2
`____________
`
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I.
`
`INTRODUCTION
`
`Apple, Inc. (“Petitioner”) filed a Petition (“Pet.”) on October 26, 2015
`
`(Paper 1) requesting inter partes review of claims 1, 2, 6–8, and 12–14 of
`
`U.S. Patent No. 7,490,151 (“the ’151 Patent,” Ex. 1001). Along with the
`
`
`
`IPR2016-00063
`Patent 7,490,151 B2
`
`
`Petition, Petitioner filed a Motion for Joinder (Paper 2, “Mot.”) with
`
`
`
`IPR2015-01047, The Mangrove Partners Master Fund, Ltd. v. VirnetX Inc.,
`
`a pending inter partes review involving the ’151 patent.
`
`VirnetX Inc. (“Patent Owner”) filed a Preliminary Response (Paper 10,
`
`“Prelim. Resp.”) and an Opposition to the Motion for Joinder (Paper 9,
`
`“Opp.”) on January 8, 2016. Petitioner filed a Reply to Patent Owner’s
`
`Opposition to the Motion for Joinder on January 15, 2016 (Paper 12, “Reply”).
`
`For the reasons described below, we institute an inter partes review of all the
`
`challenged claims and grant Petitioner’s Motion for Joinder.
`
`
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same grounds as those on
`
`which we instituted review in the IPR2015-01047. On October 7, 2015, we
`
`instituted a trial in the IPR2015-01047 matter on the following grounds:
`
`Reference(s)
`
`Kiuchi1
`Kiuchi and RFC 10342
`Kiuchi and Rescorla3
`Kiuchi and RFC 1034 and
`Rescorla
`
`
`Basis
`
`§ 102
`§ 103
`§ 103
`§ 103
`
`Claims challenged
`
`1, 2, 6–8, and 12–14
`1, 2, 6–8, and 12–14
`1, 2, 6–8, and 12–14
`1, 2, 6–8, and 12–14
`
`1
`
`
` 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 64–75
`(1996) (Ex. 1002, “Kiuchi”).
`2 P. Mockapetris, Domain Names – Concepts and Facilities, Network
`Working Group, Request for Comments: 1034 (1987) (Ex. 1005,
`“RFC1034”).
`3 E. Rescorla and A. Schiffman, The Secure HyperText Transfer Protocol,
`Internet Draft (Feb. 1996) (Ex. 1004, “Rescorla”).
`
`2
`
`
`
`
`IPR2016-00063
`Patent 7,490,151 B2
`
`
`The Mangrove Partners Master Fund, Ltd. v. VirnetX Inc., Case IPR2015-
`
`
`
`01047, slip. op. at 12 (PTAB October 7, 2015) (Paper 11) (’1047 Decision);
`
`See also IPR2015-01047, slip. op. at 1–2 (PTAB December 10, 2015) (Paper
`
`24) (’1047 Errata).
`
`In view of the identity of the challenge in the instant Petition and in the
`
`petition in IPR2015-01047, we institute an inter partes review in this
`
`proceeding on the same grounds as those on which we instituted inter partes
`
`review in IPR2015-01047.
`
`
`
`III. GRANT OF MOTION FOR JOINDER
`
`An inter partes review may be joined with another inter partes
`
`review, subject to the provisions of 35 U.S.C. § 315(c), which governs
`
`joinder of inter partes review proceedings:
`
`(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 313 or the expiration of the time for
`filing such a response, determines warrants the institution of an
`inter partes review under section 314.
`
`As the moving party, Petitioner bears the burden of proving that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`
`should: (1) set for the reasons joinder is appropriate; (2) identify any new
`
`grounds of unpatentability asserted in the petition; and (3) explain what
`
`impact (if any) joinder would have on the trial schedule for the existing
`
`review.
`
`The Petition in this proceeding has been accorded a filing date of
`
`October 26, 2015 (Paper 4), which satisfies the joinder requirement of being
`
`3
`
`
`
`
`IPR2016-00063
`Patent 7,490,151 B2
`
`
`filed within one month of our instituting a trial in IPR2015-01047 (i.e.,
`
`
`
`within one month of October 7, 2015). 37 C.F.R. § 42.122.
`
`Patent Owner argues that Petitioner’s Motion for Joinder “is barred by
`
`35 U.S.C. § 315(b) . . . [b]ecause [Petitioner’s] untimeliness precludes
`
`institution under § 315(b) [and so] it also precludes joinder under § 315(c).”
`
`Opp. 4. However, 35 U.S.C. § 315(b) states that “[t]he time limit . . . shall
`
`not apply to a request for joinder.” 35 U.S.C. § 315(b). Hence, if a party
`
`filing a time-barred petition requests joinder, the one-year time bar “shall not
`
`apply.” This is confirmed by the Board’s rules, which provide that a petition
`
`requesting inter partes review may not be “filed more than one year after the
`
`date on which the petitioner, the petitioner’s real party-in-interest, or a privy
`
`of the petitioner is served with a complaint alleging infringement of the
`
`patent,” but the one-year time limit “shall not apply when the petition is
`
`accompanied by a request for joinder.” 37 C.F.R. §§ 42.101(b), 42.122(b);
`
`see also IPR2013-00109, Paper 15 and IPR2013-00256, Paper 10
`
`(permitting joinder of a party beyond the one-year window). The Board’s
`
`rules do not conflict with the language of the statute as Patent Owner
`
`suggests.
`
`We have considered Patent Owner’s arguments regarding an alternate
`
`interpretation of the statute. See, e.g., Opp. 4–8. However, we do not find
`
`these arguments persuasive for at least the reasons set forth by Petitioner.
`
`See, e.g., Reply 2–3.
`
`Patent Owner also argues that “joining . . . will have an impact on the
`
`’047 proceeding.” Opp. 8. In particular, Patent Owner argues that the
`
`“petition raises additional issues and evidence.” Opp. 8. Patent Owner does
`
`not provide details about any specific “additional issue” that is allegedly
`
`4
`
`
`
`
`IPR2016-00063
`Patent 7,490,151 B2
`
`
`raised. However, Petitioner states that Petitioner has filed “additional
`
`
`
`evidence confirming that RFC 1034 and Rescorla are printed publications
`
`that were publicly available before the earliest effective filing date of the
`
`challenged claims.” Pet. 54. Hence, Patent Owner appears to argue that the
`
`Petition in this matter raises the “additional issue” of whether RFC 1034 or
`
`Rescorla is a printed publication that was publicly available before the
`
`earliest effective filing date of the challenged claims.
`
`We note that Patent Owner previously argued that “the burden is on
`
`Petitioner to establish that RFC 1034 and Rescorla . . . . were ‘sufficiently
`
`accessible to the public interested in the art’” but that Petitioner allegedly
`
`failed to do so. IPR2015-01047, Prelim. Resp. 18. In other words, the issue
`
`of whether RFC 1034 and Rescorla are printed publications that were
`
`publicly available before the earliest effective filing date of the challenged
`
`claims was previously raised by Patent Owner. Thus, this issue cannot be an
`
`“additional issue” raised subsequently by Petitioner. In any event, even
`
`assuming that this issue is an “additional issue” raised by Petitioner, Patent
`
`Owner does not explain sufficiently how this “additional issue” would
`
`impact this proceeding adversely or how an impact, if any, would preclude
`
`joinder.
`
`Patent Owner requests that in the event that Petitioner’s Motion for
`
`Joinder is granted, the Scheduling Order in IPR2015-01047 should be
`
`adopted, that Mangrove “will be responsible for the preparation and filing of
`
`any papers,” that “Mangrove will conduct the deposition of any VirnetX
`
`witness,” that “Mangrove will be responsible for any redirect of its expert,”
`
`and that “Mangrove will conduct all oral arguments.” Opp. 10.
`
`5
`
`
`
`
`IPR2016-00063
`Patent 7,490,151 B2
`
`
`
`As a Petitioner in IPR2015-01047, Apple, Inc. shall adhere to the
`
`
`
`existing schedule of IPR2015-01047. All filings by Apple, Inc. in IPR2015-
`
`01047 shall be consolidated with the filings of the other petitioner, unless the
`
`filing involves an issue unique to Apple, Inc. or states a point of
`
`disagreement related to the consolidated filing. In such circumstances,
`
`Apple, Inc. may make a separate filing of no more than five pages, without
`
`prior authorization of the Board. The page limits set forth in 37 C.F.R.
`
`§ 42.24 will apply to all consolidated filings.
`
`Apple, Inc. is bound by any discovery agreements, including
`
`deposition arrangements, between Patent Owner and the IPR2015-01047
`
`petitioner and shall not seek any discovery beyond that sought by the
`
`IPR2015-01047 petitioner. Patent Owner shall not be required to provide
`
`any additional discovery or deposition time as a result of joinder. The
`
`IPR2015-01047 petitioner shall designate attorneys to conduct the cross-
`
`examination of any witness produced by Patent Owner and the redirect
`
`examination of any other witness, within the timeframes set forth in
`
`37 C.F.R. § 42.53(c) or agreed to by Patent Owner and the IPR2015-01047
`
`petitioner. No individual petitioner will receive any additional cross-
`
`examination or redirect examination time. Moreover, if an oral hearing is
`
`requested and scheduled, the IPR2015-01047 petitioner shall designate
`
`attorney(s) to present at the oral hearing in a consolidated argument.
`
`The Board expects Apple, Inc. and Patent Owner to resolve any
`
`disputes between them and/or with the IPR2015-01047 Petitioner and to
`
`contact the Board only if such matters cannot be resolved.
`
`6
`
`
`
`
`
`
`IPR2016-00063
`Patent 7,490,151 B2
`
`IV. ORDER
`
`For the reasons given, it is
`
`
`
`
`
`
`
`
`
`ORDERED that Petitioner’s Motion for Joinder is granted;
`
`FURTHER ORDERED that IPR2016-00063 is instituted and joined
`
`with IPR2015-01047;
`
`FURTHER ORDERED that the grounds on which IPR2015-01047
`
`was instituted are unchanged and no other grounds are included in the joined
`
`proceeding;
`
`FURTHER ORDERED that the Scheduling Order entered in
`
`IPR2015-01047 (Paper 12) as modified by the Order changing due date 1
`
`(Paper 20) remain unchanged and shall govern the schedule of the joined
`
`proceedings;
`
`FURTHER ORDERED that, throughout the joined proceeding,
`
`Mangrove will file papers, except for motions that do not involve the other
`
`party, as a single, consolidated filing; that the filing party (Mangrove) will
`
`identify each such filing as a Consolidated Filing;
`
`FURTHER ORDERED that any separate filing by Apple, Inc. in
`
`IPR2015-01047 must not exceed five pages, without prior authorization of
`
`the Board;
`
`FURTHER ORDERED that Apple, Inc. is bound by any discovery
`
`agreements between Patent Owner and the other petitioner in IPR2015-
`
`01047 and that Apple, Inc. shall not seek any discovery beyond that sought
`
`by the other petitioner in IPR2015-01047;
`
`FURTHER ORDERED that all petitioners in IPR2015-01047 shall
`
`collectively designate attorney(s) to conduct the cross-examination of any
`
`witness produced by Patent Owner and the redirect examination of any other
`
`7
`
`
`
`
`IPR2016-00063
`Patent 7,490,151 B2
`
`
`witness; within the timeframes set forth in 37 C.F.R. § 42.53(c) or agreed to
`
`
`
`by the parties;
`
`FURTHER ORDERED that all petitioners in IPR2015-01047 shall
`
`collectively designate attorney(s) to present at the oral hearing, if requested
`
`and scheduled, in a consolidated argument;
`
`FURTHER ORDERED that IPR2016-00063 is terminated under
`
`37 C.F.R. § 42.72 and all further filings in the joined proceedings are to be
`
`made in IPR2015-01047;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`
`into the record of IPR2015-01047; and
`
`FURTHER ORDERED that the case caption in IPR2015-01047 shall
`
`be changed to reflect joinder with this proceeding in accordance with the
`
`attached example.
`
`
`
`
`
`8
`
`
`
`
`
`
`
`
`IPR2016-00063
`Patent 7,490,151 B2
`
`
`
`
`For PETITIONER:
`
`Abraham Kasdan
`James T. Bailey,
`WIGGIN AND DANA LLP
`akasdan@wiggin.com
`jtb@jtbaileylaw.com
`
`Jeffrey P. Kushan
`Thomas A. Broughan, III
`Scott M. Border
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`tbroughan@sidley.com
`sborder@sidley.com
`
`For PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`
`9
`
`
`
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`Paper No. 13
`Filed: January 25, 2016
`
`
`
`Example Case Caption for Joined Proceeding
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD. and APPLE, INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2015-010474
`Patent 7,490,151 B2
`____________
`
`
`
`
`
`
`
`
`
`4 Apple, Inc., who filed a petition in IPR2016-00063, has been joined as a
`Petitioner in the instant proceeding.
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