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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. 17
`
`
`
`
`
`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 August 28, 2013 Status Report:
`o No change in the reexamination.
`o On October 17, 2013, Petitioner filed its opening brief with the
`Federal Circuit appeal no. 2013-1489, which is an appeal of the
`decision of the Eastern District of Texas in No. 6:10-cv-00417-
`
`
`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
`
`LED. Patent Owner’s responsive brief is due November 15, 2013,
`and Petitioner’s reply brief is due December 2, 2013.
`o On October 18, 2013, Petitioner in IPR2013-00375 requested leave
`to file a motion to terminate that proceeding. On October 21, 2013
`Petitioner Apple communicated its opposition to termination of the
`proceeding, and on the same date Patent Owner communicated its
`support of termination. A phone conference with the Board has
`been scheduled for Tuesday, October 29 in connection with
`Petitioner New Bay Capital’s communication.
`
`
`
`U.S. Patent No. 7,490,151 (IPR2013-00354)
`
`• Related Proceedings: The ’151 patent is the subject of merged inter
`partes reexamination control Nos.: 95/001,714 (filed by Petitioner)
`and 95/001,697 (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 August 28, 2013 Status Report:
`o No change in the reexamination.
`o On October 17, 2013, Petitioner filed its opening brief with the
`Federal Circuit appeal no. 2013-1489, which is an appeal of the
`decision of the Eastern District of Texas in No. 6:10-cv-00417-
`
`2
`
`
`
`
`IPR2013-00354 – Update re: Reexamination Proceedings
`
`LED. Patent Owner’s responsive brief is due November 15,
`2013, and Petitioner’s reply brief is due December 2, 2013.
`o On October 18, 2013, Petitioner in IPR2013-00376 requested
`leave to file a motion to terminate that proceeding. On October
`21, 2013 Petitioner Apple communicated its opposition to
`termination of the proceeding, and on the same date Patent
`Owner communicated its support of termination. A phone
`conference with the Board has been scheduled for Tuesday,
`October 29 in connection with Petitioner New Bay Capital’s
`communication.
`
`
`
`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.
`• Status of Proceeding: Patent Owner filed a notice of appeal on July
`25, 2013. Patent Owner requested and the office granted Patent
`Owner a one-month extension of time, to October 25, 2013, for filing
`its appeal brief.
`• Changes Since Petitioner’s August 28, 2013 Status Report:
`o On October 11, 2013, Patent Owner requested an indefinite
`extension of time to file its appeal brief, asking to file its brief
`three weeks after the Director enters decisions on (a) Patent
`Owner’s petition to enter into the record a supplemental
`
`3
`
`
`
`
`IPR2013-00354 – Update re: Reexamination Proceedings
`
`declaration the Examiner already excluded as untimely, and (b)
`Patent Owner’s April 12, 2013 petition to the Director to review
`the decision not to reopen prosecution. Petitioner Apple has
`filed oppositions to both petitions.
`o On October 17, 2013, Petitioner filed its opening brief with the
`Federal Circuit appeal no. 2013-1489, which is an appeal of the
`decision of the Eastern District of Texas in No. 6:10-cv-00417-
`LED. Patent Owner’s responsive brief is due November 15,
`2013, and Petitioner’s reply brief is due December 2, 2013.
`o On October 18, 2013, Petitioner in IPR2013-00377 requested
`leave to file a motion to terminate that proceeding. On October
`21, 2013 Petitioner Apple communicated its opposition to
`termination of the proceeding, and on the same date Patent
`Owner communicated its support of termination. A phone
`conference with the Board has been scheduled for Tuesday,
`October 29 in connection with Petitioner New Bay Capital’s
`communication.
`o On October 23, 2013, the office granted Patent Owner a one-
`month extension of time for filing its appeal brief. Patent
`Owner’s appeal brief is now presently due on November 25,
`2013.
`
`
`
`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).
`
`4
`
`
`
`
`IPR2013-00354 – Update re: Reexamination Proceedings
`
`• 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. Patent Owner requested and the office granted Patent
`Owner a one-month extension of time for filing its appeal brief.
`Patent Owner’s appeal brief presently is due on October 25, 2013.
`• Changes Since Petitioner’s August 28, 2013 Status Report:
`o On October 11, 2013, Patent Owner requested an indefinite
`extension of time to file its appeal brief, asking to file its brief
`three weeks after the Director enters decisions on (a) Patent
`Owner’s petition to enter into the record a supplemental
`declaration the Examiner already excluded as untimely, and (b)
`Patent Owner’s April 12, 2013 petition to the Director to review
`the decision not to reopen prosecution. Petitioner Apple has
`filed oppositions to both petitions.
`o On October 17, 2013, Petitioner filed its opening brief with the
`Federal Circuit appeal no. 2013-1489, which is an appeal of the
`decision of the Eastern District of Texas in No. 6:10-cv-00417-
`LED. Patent Owner’s responsive brief is due November 15,
`2013, and Petitioner’s reply brief is due December 2, 2013.
`o On October 18, 2013, Petitioner in IPR2013-00378 requested
`leave to file a motion to terminate that proceeding. On October
`21, 2013 Petitioner Apple communicated its opposition to
`termination of the proceeding, and on the same date Patent
`Owner communicated its support of termination. A phone
`conference with the Board has been scheduled for Tuesday,
`5
`
`
`
`
`IPR2013-00354 – Update re: Reexamination Proceedings
`
`October 29 in connection with Petitioner New Bay Capital’s
`communication.
`
`
`
`Dated: October 23, 2013
`
`
`
`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
`
`
`6
`
`
`
`
`IPR2013-00354 – Update re: Reexamination Proceedings
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 23rd day of October 2013, 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
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Attorney for Petitioner
`
`
`Dated: October 23, 2013
`
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`Page 1
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