UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
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`NEW BAY CAPITAL, LLC,
`Petitioner,
`v.
`
`VIRNETX, INC.
`Patent Owner.
`____________
`
`Case IPR2013-00375
`Patent 6,502,135
`____________
`
`NEW BAY CAPITAL’S OPPOSITION TO MOTION FOR JOINDER
`FILED BY THIRD PARTY APPLE INC.
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
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`NEW BAY CAPITAL, LLC,
`Petitioner,
`v.
`
`VIRNETX, INC.
`Patent Owner.
`____________
`
`Case IPR2013-00375
`Patent 6,502,135
`____________
`
`NEW BAY CAPITAL’S OPPOSITION TO MOTION FOR JOINDER
`FILED BY THIRD PARTY APPLE INC.
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`I.
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`FACTUAL BACKGROUND
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`A. New Bay Capital Seeks a Just, Speedy and Inexpensive Review of
`the ‘135 Patent
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`New Bay Capital, LLC (“New Bay”) has petitioned for inter partes review of
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`U.S. Patent No. 6,502,135 (the ‘135 Patent). The petition has been strictly tailored
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`to comply with the policy behind inter partes reviews – to provide a just, speedy
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`and inexpensive review of a patent. 37 C.F.R. §42.1(b). The petition has been
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`limited to a challenge of claims 1, 3, 7 and 8. The prior art to be considered has
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`been limited to two references Kiuchi and Dalton. Three separate grounds were
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`presented applying the references to the challenged claims to establish
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`unpatentabililty.
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`B. Apple Seeks to Add its Two Inter Partes Reviews to this
`Proceeding
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`Apple has filed two inter partes reviews against the ‘135 Patent. Due to the
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`questionable timeliness of these inter partes reviews, Apple seeks to join them with
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`New Bay’s IPR. Even though Apple offers to limit the grounds of its IPR’s to be
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`joined, the size of the joinder is huge. In IPR2013-00348, Apple still insists on
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`presenting the following five remaining grounds:
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`(i) Claims 1-10, 12-15, and 18 are anticipated under § 102(e) by U.S.
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`Patent No. 6,496,867 to Beser et al. (Beser) (Ex. 1009);
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`(ii) Claims 1-10, 12-15, and 18 are obvious under § 103 based on Beser
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`1
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`Case IPR2013-00375
`Patent 6,502,135
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`(Ex. 1009) in view of RFC 2401 (Ex. 1010);
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`(iii) Claims 3, 5, 8, 10, 12, and 18 are obvious under § 103 based on
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`Beser (Ex. 1009) in view of Blum (Ex. 1011);
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`(iv) Claims 3, 5, 8, 10, and 18 are obvious under § 103 based on Beser
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`(Ex. 1009) in view of RFC 2401 (Ex. 1010) and Blum (Ex. 1011);
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`(v) Claims 18 and 5 are obvious under § 103 based on Beser (Ex. 1009)
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`in view of RFC 2401 (Ex. 1010) and Aventail (Ex. 1007).
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`In IPR2013-00349, Apple intends to present the following three
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`remaining grounds:
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`(i) Claims 1-10, 12-15, and 18 are anticipated under § 102(b) by Aventail
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`Connect v 3.01/2.5 Administrator’s Guide (“Aventail”) (Ex. 1007);
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`(ii) Claims 4, 5 and 18 are obvious under § 103 based on Aventail (Ex.
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`1007) in view of RFC 1035 (Ex. 1017);
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`(iii) Claims 6, 14 and 15 are obvious under § 103 based on Aventail (Ex.
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`1007) in view of Reed (Ex. 1014).
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`In support of its inter partes reviews, Apple submits a total of 65 exhibits including
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`the declarations of Michael A. Fratto, Chris A. Hopen and James Chester.
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`In addition to Apple’s two IPR’s, Apple is also availing itself of the
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`resources of the PTO with its extensive challenge to the ‘135 patent in an ongoing
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`2
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`Case IPR2013-00375
`Patent 6,502,135
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`inter partes reexamination. All claims of the ‘135 patent currently stand rejected in
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`the reexamination no. 95/001,682.
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`II. Grounds for Joinder
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`The Board has considered some or all of the following when deciding on
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`joinder of IPR proceedings1:
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`1. Whether the proceedings involve the same parties.
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`2. Whether the proceedings involve the same patent.
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`3. Whether the proceedings involve the same prior art.
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`4. Whether there is a discernible prejudice to either party.
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`5. Whether joinder will unduly delay the resolution of either proceeding.
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`6. Whether joinder will help “secure the just, speedy, and inexpensive
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`resolution” of the proceedings.
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`The New Bay IPR and the Apple IPR’s should not be joined because the
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`proceedings involve different parties with no relation to one another, the
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`proceedings involve different claim challenges based on different prior art, joinder
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`would be extremely prejudicial to New Bay in terms of delay and cost and dilution
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`of its position due to the sheer size and complexity of the Apple IPR’s, joinder will
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`certainly delay resolution of New Bay’s IPR, and joinder will not help to “secure
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`the just, speedy, and inexpensive resolution” of the proceedings.
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`1 See, for example, Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15.
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`3
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`Case IPR2013-00375
`Patent 6,502,135
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`III. Joinder Would Add Significant Complexity, Delay and Cost to New
`Bay’s IPR
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`A. Joinder Would Add Numerous Substantive Issues
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`While Apple’s two IPR’s include challenges to claims 1, 3, 7 and 8
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`challenged by New Bay, they do so on different grounds using different prior art,
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`and therefore joinder would not reduce the number of grounds to be addressed by
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`the Board. No efficiency would be gained by joining the proceedings.
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`Furthermore, the Apple IPR’s add challenges to patent claims which are not
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`at issue in the New Bay IPR. The additional patent claims which will need to be
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`addressed if joined include claims 2, 4, 5, 6, 9, 10, 12, 13, 14, 15 and 18. These
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`claims present many new concepts and limitations that are not the subject of the
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`New Bay IPR. Indeed, two new independent claims 10 and 13 will need to be
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`addressed if joined. The dependent claims add many further new limitations
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`including at least the following:
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`“steps (2) and (3) are performed at a DNS server separate from the client
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`computer” claim 2
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`“whether the client computer is authorized to establish a VPN with the
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`target” claim 4
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`“non secure target computers” claim 5
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`“creating an IP address hopping scheme” claim 6;
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`4
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`Case IPR2013-00375
`Patent 6,502,135
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`“whether the client computer is authorized to establish the VPN target
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`computer” claim 9
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`“sufficient security privileges” claim 12;
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`“a central computer that maintains a plurality of authentication tables”
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`claim 13;
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`“at least one field in a series of data packets is periodically changed
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`according to a known sequence” claim 14;
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`“the step of comparing”; “a table of valid IP addresses maintained in a
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`table in the second computer” claim 15.
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`The references asserted in the Apple IPR’s all raise new substantive issues.
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`There is absolutely no overlap and no efficiency to be gained by joining these
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`issues with those of the New Bay IPR. The challenges asserted by Apple make no
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`use of Kiuchi or Dalton. The prior art references asserted by Apple are all new and
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`raise new issues. The references include the following:
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`U.S.Patent No. 6,496,867 (Beser);
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`RFC2401, November 1998;
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`U.S.Patent No. 6,182,141 (Blum)
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`Aventail Connect v 3.01/2.5 Administrator’s Guide;
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`RFC1035, November 1987; and
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`5
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`Case IPR2013-00375
`Patent 6,502,135
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`Reed, “Anonymous Connections and Onion Routing”, IEEE Journal on
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`Selected Areas in Communications, vol. 16, no. 4, May 1998.
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`These new references are cited by Apple in eight new grounds attacking the
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`claims. There is no overlap between these eight grounds and the three grounds
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`raised by New Bay. The chart below illustrates the expansion proposed by Apple’s
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`joinder motion. The issues raised by the present New Bay IPR are shown in green.
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`The additional grounds and claims that would be imposed by the Apple IPR’s are
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`shown in red.
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`1 2 3 4 5 6 7 8 9 10 12 13 14
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` 15 18
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`‘135 claims->
`Kiuchi
`Anticipation
`Kiuchi
`Antic’n/Obvious
`Dalton
`Kiuchi
`Beser
`
`Beser,
`RFC2401
`Beser,
`Blum
`Beser, RFC2401,
`Blum
`Beser, RFC2401,
`Aventail
`Aventail
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`Aventail,
`RFC1035
`Aventail,
`Reed
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`6
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`Case IPR2013-00375
`Patent 6,502,135
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`The Aventail reference adds further complications by adding the issue of
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`whether it constitutes a printed publication. The propriety of treating Aventail as a
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`prior art reference has been challenged by VirnetX in the inter partes
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`reexamination 95/001,682. VirnetX wrote, “With respect to Aventail, the Request
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`submitted uncorroborated declarations from three individuals whom Patent owner
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`has no opportunity to depose in this matter, and which were not incorporated or
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`relied on by the Office Action.” (Patent Owner’s Response to Office Action of
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`February 15, 2012, p. 14) “Patent Owner does not agree with the statements and
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`assertions made within those declarations, and reserves the opportunity to
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`challenge their correctness should the Examiner rely on them in subsequent
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`proceedings.” (Id., p. 14, n.6)
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`B. Joinder Would Expand and Complicate Discovery
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`In keeping with the Board’s interest in delivering an inexpensive resolution
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`to an IPR, discovery is strictly limited. 37 C.F.R. §42.51(b). Nevertheless, cross
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`examination of affidavit testimony is routine discovery. The two Apple IPR’s
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`would add the testimony of three new witnesses - Michael A. Fratto, Chris A.
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`Hopen and James Chester. Additional testimony from VirnetX witness(es) would
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`also be expected. These witnesses will be asked to address all of the new issues
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`mentioned above that would be imposed by the Apple IPR’s. To the extent, they
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`will be addressing aspects of claims 1, 3, 7, and 8 being challenged in the New Bay
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`7
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`Case IPR2013-00375
`Patent 6,502,135
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`IPR, New Bay would need to be present at the depositions to allow for further
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`cross examination, as needed. The added difficulties of scheduling, preparing for
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`and attending these depositions would significantly bog down and significantly
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`increase the cost of prosecuting the instant New Bay IPR.
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`Moreover, the addition of Apple, an unrelated third party, will complicate
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`depositions and discovery. Unlike more suitable joinder situations in which an
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`identical petition is filed or a co-defendant in a litigation seeks to participate, here
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`Apple does not share any such affiliation with New Bay. To the extent, Apple
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`takes positions to coordinate with its positions taken in litigation, New Bay faces
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`no such similar constraints. These differences among the parties may lead to
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`unprecedented three-way discovery and claim construction disputes.
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`C. Joinder Would Severely Impact Scheduling
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`Given the limited number of claims challenged and the mere use of two prior
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`art references, New Bay had reasonable hopes of a shortened schedule or a regular
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`schedule coordinated with co-pending IPR2013-00376 directed to divisional Patent
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`No.7,490,151. Similarities between the challenge to the ‘135 patent and the ‘151
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`patent would allow for judicial efficiencies. However, in view of the added claims,
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`the new claim elements, the new prior art references, the additional party and the
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`additional witnesses, joinder of the Apple IPR’s would impose heavy burdens on
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`8
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`Case IPR2013-00375
`Patent 6,502,135
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`the Board and New Bay preventing a speedy and inexpensive resolution of New
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`Bay’s pair of inter partes reviews.
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`Rather than seeking consolidation and increased efficiency, Apple foresees
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`limiting the participation of each petitioner to the grounds presented in its
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`respective petitions. Given that both petitioners challenge claims 1, 3, 7 and 8,
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`statements by witnesses and parties regarding these claims have the potential for
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`influencing the other party’s grounds for challenging the claims. Thus, with
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`multiple filings relative to claims 1, 3, 7 and 8 by the proposed three parties, the
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`discovery burdens and burdens of reviewing numerous filings greatly increases by
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`joining Apple’s two disparate inter partes reviews to the New Bay IPR. A joined
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`IPR will not be more efficient but rather more cumbersome and costly. New Bay
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`would be greatly prejudiced by the proposed joinder.
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`IV. Conclusion
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`For all the foregoing reasons, Apple’s motion for joinder should be denied
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`and the Board should proceed to an orderly and timely consideration of New Bay’s
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`IPR simply challenging claims 1, 3, 7 and 8 in view of Kiuchi and Dalton.
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`Dated: August 28, 2013
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` Respectfully submitted,
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`
` /Robert M. Asher, #30,445/
`Robert M. Asher, Reg. No. 30,445
` Jeffrey T. Klayman, Reg. No. 39,250
` Sunstein Kann Murphy & Timbers LLP
`th Floor
` 125 Summer Street, 11
`
`
`
`9
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`
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`Case IPR2013-00375
`Patent 6,502,135
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`03959/05001 1949057.1
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`
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` Boston, MA 02110-1618
`(617) 443-9292
`Attorneys for Petitioner, New Bay Capital,
`LLC.
`
`10
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`
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`CERTIFICATE OF SERVICE
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` I hereby certify that on this 28th day of August 2013, the foregoing NEW BAY
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`CAPITAL’S OPPOSITION TO MOTION FOR JOINDER FILED BY THIRD
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`PARTY APPLE INC. was served as agreed via email to counsel of record for patent
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`owner:
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`Joseph Palys
`
`Naveen Modi
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Joseph.Palys@finnegan.com
`Naveen.modi@finnegan.com
`
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`and to counsel for Apple:
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`Jeffrey P. Kushan
`Joseph Micallef
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`jmicallef@sidley.com
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`Dated: August 28, 2013 /Robert M. Asher, #30,445/
`Robert M. Asher
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`Reg. No. 30,445
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