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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION INTERNATIONAL
`CORPORATION,
`Patent Owner
`
`Patent No. 7,490,151
`Issued: Feb. 10, 2009
`Filed: Sep. 30, 2002
`Inventors: Edmund C. Munger, et al
`Title: Establishment of a Secure Communication Link Based Domain Name
`Service (DNS) Request
`____________________
`
`Inter Partes Review No. IPR2013-00354
`__________________________________________________________________
`
`PETITIONER’S UPDATE REGARDING THE CO-PENDING
`REEXAMINATION PROCEEDINGS
`
`
`
`
`
`Paper No. 23
`
`
`
`
`
`IPR2013-00354 – Update re: Reexamination Proceedings
`
`Pursuant to the Order issued by the Panel on August 14, 2013 in Paper No.
`
`11, Petitioner Apple Inc. (“Petitioner”) files this update regarding the status of co-
`
`pending reexamination proceedings concerning the patents that are the subject of
`
`IPR petitions filed by Apple.1
`
`U.S. Patent No. 6,502,135 (IPR2013-00348 & -00349)
`
`• Related Proceedings: The ’135 patent is the subject of merged inter
`partes reexamination control Nos. 95/001,682 (filed by Petitioner) and
`95/001,679 (filed by Cisco).
`• Status of the claims: All claims presently stand rejected under 35 U.S.C.
`§ 102 or § 103.
`• Last Office Action: March 11, 2013: Non-Final Action.
`• Status of Proceeding: Patent Owner and Requestor each have filed
`comments on the March 11, 2013 Non-Final Action. The case is
`awaiting further action by the Examiner.
`• Changes Since Petitioner’s December 11, 2013 Status Report:
`o No change in the reexamination.
`o On December 19, 2013, Petitioner filed its reply brief with the
`Federal Circuit in appeal no. 2013-1489, which is an appeal of the
`decision of the Eastern District of Texas in No. 6:10-cv-00417-
`LED.
`
`1 Petitioner is filing a substantively identical document in each of the seven IPR
`
`proceedings: IPR2013-00348, IPR2013-00349, IPR2013-00354, IPR2013-00393,
`
`IPR2013-00394, IPR2013-00397, and IPR2013-00398.
`
`1
`
`
`
`
`IPR2013-00354 – Update re: Reexamination Proceedings
`
`
`
`U.S. Patent No. 7,490,151 (IPR2013-00354)
`
`• Related Proceedings: The ’151 patent is the subject of merged inter
`partes reexamination control Nos.: 95/001,697 (filed by Petitioner)
`and 95/001,714 (filed by Cisco).
`• Status of the Claims: All claims stand rejected under 35 U.S.C. § 102
`or § 103.
`• Last Office Action: April 20, 2012: Non-Final Action.
`• Status of Proceeding: Patent Owner and Requestor each have filed
`comments on the April 20, 2012 Non-Final Action. The case is
`awaiting further action by the Examiner.
`• Changes Since Petitioner’s December 11, 2013 Status Report:
`o No change in the reexamination.
`o On December 19, 2013, Petitioner filed its reply brief with the
`Federal Circuit in appeal no. 2013-1489, which is an appeal of
`the decision of the Eastern District of Texas in No. 6:10-cv-
`00417-LED.
`
`
`
`U.S. Patent No. 7,418,504 (IPR2013-00393 & -00394)
`
`• Related Proceeding: The ’504 patent is the subject of inter partes
`reexamination control No. 95/001,788 (filed by Petitioner).
`• Status of the Claims: All claims stand rejected under 35 U.S.C. § 102
`or § 103.
`• Last Office Action: June 25, 2013: Right of Appeal Notice.
`
`2
`
`
`
`
`IPR2013-00354 – Update re: Reexamination Proceedings
`
`• Status of Proceeding: Patent Owner filed a notice of appeal on July
`25, 2013. After being granted three extensions of time, Patent Owner
`filed its appeal brief on December 26, 2013.
`• Changes Since Petitioner’s December 11, 2013 Status Report:
`o On December 12, 2013, the Office denied Patent Owner’s
`petition to the Director to enter the Supplemental Declaration of
`Angelos Keromytis.
`o On December 19, 2013, Petitioner filed its reply brief with the
`Federal Circuit in appeal no. 2013-1489, which is an appeal of
`the decision of the Eastern District of Texas in No. 6:10-cv-
`00417-LED.
`o On December 20, 2013, Patent Owner filed two more petitions.
`The first sought Reconsideration of the Office’s denial of Patent
`Owner’s petition to enter the Supplemental Declaration of
`Angelos Keromytis. The second sought Reconsideration of
`Review of the decision denying Patent Owner’s petition to
`reopen the prosecution.
`o On December 20, 2013, the Office denied Patent Owner’s
`fourth petition (filed December 6, 2013) for an extension of
`time to file its appeal brief.
`o On December 26, 2013, Patent Owner filed a 73-page appeal
`brief along with a petition to waive the 30-page limit for appeal
`briefs.
`o On January 3, 2014, Petitioner filed an opposition to Patent
`Owner’s petition to waive the page limits of its appeal brief.
`
`
`
`3
`
`
`
`
`IPR2013-00354 – Update re: Reexamination Proceedings
`
`U.S. Patent No. 7,921,211 (IPR2013-00397 & -00398)
`
`• Related Proceeding: The ’211 patent is the subject of inter partes
`reexamination control No. 95/001,789 (filed by Petitioner).
`• Status of the Claims: All claims stand rejected under 35 U.S.C. § 102
`or § 103.
`• Last Office Action: June 26, 2013: Right of Appeal Notice.
`• Status of Proceeding: Patent Owner filed a notice of appeal on July
`25, 2013. After being granted three extensions of time, Patent Owner
`filed its appeal brief on December 26, 2013.
`• Changes Since Petitioner’s December 11, 2013 Status Report:
`o On December 12, 2013, the Office denied Patent Owner’s
`petition to the Director to enter the Supplemental Declaration of
`Angelos Keromytis.
`o On December 19, 2013, Petitioner filed its reply brief with the
`Federal Circuit in appeal no. 2013-1489, which is an appeal of
`the decision of the Eastern District of Texas in No. 6:10-cv-
`00417-LED.
`o On December 20, 2013, Patent Owner filed two more petitions.
`The first sought Reconsideration of the Office’s denial of Patent
`Owner’s petition to enter the Supplemental Declaration of
`Angelos Keromytis. The second sought Reconsideration of
`Review of the decision denying Patent Owner’s petition to
`reopen the prosecution.
`o On December 23, 2013, the Office denied Patent Owner’s
`fourth petition (filed December 6, 2013) for an extension of
`time to file its appeal brief.
`
`4
`
`
`
`
`IPR2013-00354 – Update re: Reexamination Proceedings
`
`o On December 26, 2013, Patent Owner filed a 76-page appeal
`brief along with a petition to waive the 30-page limit for appeal
`briefs.
`o On January 3, 2014, Petitioner filed an opposition to Patent
`Owner’s petition to waive the page limits of its appeal brief.
`
`
`
`Dated: January 6, 2014
`
`
`
`
`
`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan (Reg No. 43,401)
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`
`
`5
`
`
`
`
`IPR2013-00354 – Update re: Reexamination Proceedings
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 6th day of January 2014, a copy of this Update
`
`Regarding the Reexamination Proceedings, has been served in its entirety by e-
`
`mail on the following counsel of record for patent owner:
`
`Joseph E. Palys
`Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
`Phone: (571) 203-2700
`Fax: (202) 408-4400
`E-mail: joseph.palys@finnegan.com
`
`Naveen Modi
`Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4065
`Facsimile: 202-408-4400
`E-mail: naveen.modi@finnegan.com
`
`
`Dated: January 6, 2014
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Attorney for Petitioner
`
`
`
`
`
`
`
`
`Page 1
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