`
`Paper No.
`Filed: October 4, 2013
`
`
`Filed on behalf of: VirnetX Inc.
`By:
`Joseph E. Palys
`
`Naveen Modi
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
`Telephone: 571-203-2700
`Facsimile: 202-408-4400
`E-mail: joseph.palys@finnegan.com
`
` naveen.modi@finnegan.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2013-00398
`Patent 7,921,211
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 7,921,211
`
`
`
`
`
`
`
`

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`Case No. IPR2013-00398
`
`Table of Contents
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review ......................................................................................... 3
`
`A.
`
`The Petition Must Be Denied Under 35 U.S.C. § 315(b) ..................... 4
`
`1.
`
`2.
`
`3.
`
`4.
`
`Procedural History Relevant to § 315(b) .................................... 5
`
`The Plain Meaning of § 315(b) and the Board’s
`Precedent Bar the Petition ........................................................... 6
`
`The Legislative History Confirms that the Petition Is
`Barred .......................................................................................... 9
`
`Denying the Petition Is Not Unjust ...........................................11
`
`B.
`
`C.
`
`The Petition Fails to Comply with 37 C.F.R. § 42.104(b)(4) .............12
`
`The Board Should Not Institute Based on the Petition’s
`Redundant Grounds .............................................................................13
`
`III. The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected .........................................................................................................18
`
`A. Overview of the ’211 Patent ................................................................20
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`“Domain Name” (Claims 1, 2, 15-18, 20, 21, 24-26, 35-37, 39,
`40, 42, 44, 45, 48-50, 59, and 60) .......................................................23
`
`“Top-Level Domain Name” (Claims 2-4 and 37) ...............................25
`
`“Domain Name Service” (Claims 1 and 60) .......................................27
`
`“Domain Name Service System” (Claims 1, 5, 7, 8, 14-17, 19-
`24, 27, 33, 35, 36, 41, 48, 51, 57, 59, and 60) .....................................29
`
`“Secure Communication Link” (Claims 1, 9, 10, 16-18, 22, 24,
`26-29, 33, 35, 36, 40-42, 46, 48, 50-53, 57, 59, and 60) .....................32
`
`G.
`
`The “Indication” Phrases (Claims 1, 17, 24, 36, 41, 48, and 60) ........36
`
`
`
`i
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`Case No. IPR2013-00398
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`H.
`
`I.
`
`“Transparently” (Claims 27 and 51) ...................................................38
`
`“Secure Name” (Claims 25 and 49) ....................................................39
`
`IV.
`
`If Trial Is Instituted, VirnetX Requests an 18-Month Schedule ...................42
`
`V.
`
`Conclusion .....................................................................................................43
`
`
`
`
`
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`ii
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`Case No. IPR2013-00398
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`Table of Authorities
`
`
`FEDERAL CASES
`Conn. Nat’l Bank v. Germain,
`503 U.S. 249 (1992) .............................................................................................. 9
`
`Page(s)
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001 (Jan. 9, 2013) Paper No. 15 ................................................ 19, 34
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 33
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) ............................................................................ 19
`
`LaRose Indus., LLC v. Capriola Corp.,
`IPR2013-00120 (July 22, 2013) Paper No. 20 ............................................. 14, 18
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003 (Oct. 25, 2012) Paper No. 7 ................................... 4, 14, 17, 18
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093 (Apr. 29, 2013) Paper No. 28 ............................................. 19, 34
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 19
`
`Universal Remote Control, Inc. v. Universal Elecs., Inc.,
`IPR2013-00168 (Aug. 26, 2013) Paper No. 9 .......................................... 4, 5, 8, 9
`
`Xilinx, Inc. v. Intellectual Ventures I LLC,
`IPR2013-00112 (June 27, 2013) Paper No. 14 ................................................... 34
`
`ZTE Corp. & ZTE (USA) Inc. v. ContentGuard Holdings Inc.,
`IPR2013-00134 (June 19, 2013) Paper No. 12 ................................................... 34
`
`FEDERAL STATUTES
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 315(b) ............................................................................................passim
`
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`Case No. IPR2013-00398
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`35 U.S.C. § 316(a)(1) ............................................................................................... 40
`
`FEDERAL REGULATIONS
`
`37 C.F.R. § 42.100(b) .............................................................................................. 18
`
`37 C.F.R. § 42.100(c) ............................................................................................... 40
`
`37 C.F.R. § 42.104(b)(4) ................................................................................ 3, 12, 13
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`OTHER AUTHORITIES
`
`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) .................................................. 9-11
`
`Meeting of the H. Comm. on Judiciary, Transcript of Markup of H.R. 1249
`(Apr. 14, 2011) .................................................................................................... 10
`
`
`
`
`
`
`
`
`
`iv
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`Case No. IPR2013-00398
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`I.
`
`Introduction
`
`Patent Owner VirnetX Inc. (“VirnetX” or “Patent Owner”) respectfully
`
`submits this Preliminary Response in accordance with 35 U.S.C. § 313 and
`
`37 C.F.R. § 42.107, responding to the Petition for Inter Partes Review (Paper
`
`No. 4, the “Petition”) filed by Apple Inc. (“Apple”).
`
`This Petition is one of seven inter partes reviews requested by Apple against
`
`VirnetX’s patents. In these inter partes reviews, Apple seeks its fourth opportunity
`
`to challenge the validity of U.S. Patent No. 7,921,211 (“the ’211 patent”). Apple’s
`
`first opportunity arose in litigation, where Apple and Cisco Systems, Inc. (“Cisco”)
`
`each challenged the validity of the ’211 patent in the Eastern District of Texas.
`
`The Apple and Cisco cases were tried before separate juries, and both juries upheld
`
`the validity of the asserted ’211 patent claims. (Ex. 2002, Jury Verdict Form
`
`Against Apple in VirnetX, Inc. v. Apple Inc., Case No. 6:10-CV-417 (E.D. Tex.
`
`Nov. 6, 2012) (“the ’417 Litigation”); Ex. 2006, Jury Verdict Form as to Cisco in
`
`the ’417 Litigation (E.D. Tex. Mar. 14, 2013).) The court later entered final
`
`judgments upholding the validity of the ’211 patent. (Ex. 2007, Final Judgment
`
`Against Apple in the ’417 Litigation (E.D. Tex. Feb. 28, 2013); Ex. 2008, Final
`
`Judgment as to Cisco in the ’417 Litigation (E.D. Tex. Mar. 19, 2013).)
`
`
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`1
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`Case No. IPR2013-00398
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`Apple mounted its second validity challenge by requesting inter partes
`
`reexamination of the ’211 patent during the ’417 Litigation. That reexamination
`
`(Control No. 95/001,789) is ongoing.
`
`Despite having a validity challenge pending before the Office, Apple
`
`attempts to initiate its third and fourth validity challenges to the ’211 patent by
`
`filing two inter partes review petitions against the ’211 patent (this Petition and the
`
`petition in Case No. IPR2013-00397, “the ’397 Petition”). But, as explained
`
`below, institution of these proceedings is statutorily barred, and there is no reason
`
`to give Apple these additional opportunities.
`
`There are also two other ongoing proceedings at the Office against the
`
`’211 patent. One is an inter partes reexamination filed by Cisco (Control No.
`
`95/001,856). The second is an inter partes review requested by New Bay Capital,
`
`LLC (“New Bay”) (Case No. IPR2013-00378). As a result, there are now five
`
`post-grant challenges before the Office concerning the ’211 patent: Apple’s and
`
`Cisco’s inter partes reexaminations, New Bay’s inter partes review petition, and
`
`Apple’s inter partes review petitions. These proceedings are largely duplicative of
`
`one another, and instituting Apple’s inter partes reviews will only serve to
`
`duplicate efforts already undertaken in litigation and in pending reexamination of
`
`the ’211 patent.
`
`
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`2
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`

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`Case No. IPR2013-00398
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`Apple’s petitions are also defective in a number of ways described below.
`
`Accordingly, the Board should not institute these proceedings.
`
`II. The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review
`The Board need not waste its resources on Apple’s latest attempts to
`
`challenge the ’211 patent, because the Petition does not comply with the
`
`requirements for instituting inter partes review. Each ground will be discussed in
`
`more detail in the sections below, but in short, one defect that disposes of the entire
`
`Petition is that it is time-barred under 35 U.S.C. § 315(b). The Petition was filed
`
`more than one year after Apple was served with a complaint alleging infringement
`
`of the ’211 patent. Accordingly, the Petition should be denied based on the plain
`
`language of the statute, the Board’s precedent, and the relevant legislative history.
`
`Apple also violates 37 C.F.R. § 42.104(b)(4) because the Petition fails to
`
`“specify where each element of the claim is found in the prior art patents or printed
`
`publications relied upon.” 37 C.F.R. § 42.104(b)(4). It cites almost exclusively to
`
`a voluminous declaration (Ex. 1003) accompanying the Petition and not to the
`
`Beser, RFC 2401, or Provino references themselves. Moreover, Apple fails to
`
`identify the features of Beser, RFC 2401, and Provino that allegedly correspond to
`
`each ’211 patent claim feature. Instead, Apple broadly generalizes the disclosure
`
`of those references without discussing specific aspects of them.
`
`
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`3
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`Case No. IPR2013-00398
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`Apple also proposes rejections that are redundant of one another and of the
`
`proposed rejections in Apple’s other inter partes review petition for the ’211 patent
`
`(the ’397 Petition). Apple does not explain any differences between its parallel
`
`proposed rejections, or explain how any particular proposed rejection improves on
`
`another in any way. Addressing these redundant grounds would significantly
`
`burden the Board and the Patent Owner, and it would cause unnecessary delay of
`
`the inter partes review proceedings, all without any added benefit. Liberty Mut.
`
`Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00003 (Oct. 25, 2012) Paper
`
`No. 7.
`
`A. The Petition Must Be Denied Under 35 U.S.C. § 315(b)
`The plain language of 35 U.S.C. § 315(b) compels dismissal of the Petition.
`
`The statute prohibits inter partes review of a patent based on a petition filed more
`
`than one year after the petitioner has been served with “a complaint” alleging
`
`infringement of the patent. It is undisputed that VirnetX served Apple with
`
`“a complaint” alleging infringement of the ’211 patent more than one year before
`
`the Petition was filed. Apple asks the Board to ignore this fact and instead focus
`
`on a later-served complaint, which Apple contends resets the one-year time period
`
`for filing a petition for inter partes review. The Board has already addressed this
`
`same issue in another proceeding, where it rejected Apple’s view and adopted
`
`VirnetX’s interpretation of § 315(b). Universal Remote Control, Inc. v. Universal
`
`
`
`4
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`

`

`Elecs., Inc., IPR2013-00168 (Aug. 26, 2013) Paper No. 9. As discussed below, the
`
`Board’s and VirnetX’s interpretation is also supported by the relevant legislative
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`Case No. IPR2013-00398
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`history.
`
`Apple’s argument that dismissing the Petition would “unfairly foreclose use
`
`of the IPR system” also rings hollow given that Apple has repeatedly availed itself
`
`of the district court and the Office to challenge the ’211 patent, including in a
`
`still-pending inter partes reexamination proceeding.1
`
`1. Procedural History Relevant to § 315(b)
`VirnetX served2 its first complaint against Apple regarding the ’211 patent
`
`on April 5, 2011, in the ’417 Litigation, alleging infringement of at least claims 1,
`
`2, 5, 6, 14-23, 26-28, 33-47, 49-52, and 57-60 of the ’211 patent (“the April 2011
`
`Complaint”). (Ex. 2005, VirnetX Inc.’s Second Amended Complaint in the ’417
`
`Litigation (E.D. Tex. Apr. 5, 2011).) As explained above, in the litigation
`
`involving this complaint, Apple challenged the validity of the ’211 patent. It did
`
`1 Apple’s Petition should also not be joined with New Bay’s, if instituted, for
`
`the reasons discussed in VirnetX’s Opposition to Apple’s Motion for Joinder, filed
`
`August 28, 2013.
`
`2 The April 2011 Complaint was electronically served on Apple via the Case
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`Management/Electronic Case Files (CM/ECF) system. (See Ex. 2005 at 40,
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`Plaintiff VirnetX’s Second Amended Complaint.)
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`Case No. IPR2013-00398
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`not succeed. A jury upheld the validity of the asserted claims, and the district court
`
`entered judgment finding those claims valid. (Exs. 2001, 2003.)
`
`After obtaining the favorable jury verdict, VirnetX served Apple with
`
`another complaint (Ex. 1050) on December 31, 2012 (“the 2012 Complaint”).
`
`(Ex. 2010 at 2, Proof of Service of VirnetX Inc.’s Complaint in VirnetX Inc. v.
`
`Apple Inc., No. 6:12-CV-00855 (E.D. Tex. Dec. 31, 2012).) The 2012 Complaint
`
`asserts the same ’211 patent claims as asserted in the April 2011 Complaint, but it
`
`alleges infringement by several Apple products that were not included in the earlier
`
`complaint. (Ex. 1050 at 4-11.)
`
`Concurrent with the above litigations, Apple has also challenged the validity
`
`of the ’211 patent in the Office by initiating an inter partes reexamination Control
`
`No. 95/001,789, which remains pending. Although Apple has availed itself of
`
`several opportunities to challenge the validity of the ’211 patent, it now seeks two
`
`more opportunities by filing the Petition at issue here and a separate petition for
`
`inter partes review in Case No. IPR2013-00397. These two petitions were filed in
`
`July 2013, long after Apple was first served with a complaint alleging infringement
`
`of the ’211 patent.
`
`2. The Plain Meaning of § 315(b) and the Board’s Precedent Bar
`the Petition
`
`Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if
`
`the petition requesting the proceeding is filed more than 1 year after the date on
`
`
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`Case No. IPR2013-00398
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`which the petitioner, real party in interest, or privy of the petitioner is served with a
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`complaint alleging infringement of the patent.” 35 U.S.C. § 315(b) (emphasis
`
`added). The language “a complaint” is not restrictive, and Apple agrees that it
`
`means “any complaint.” (Petition at 2.) Thus, the directive of § 315(b) is clear: if
`
`a petition is filed more than one year after the petitioner is served with any
`
`complaint, inter partes review may not be instituted. Here, Apple filed its Petition
`
`in July 2013, more than one year after it was served with the April 2011
`
`Complaint. Under the plain language of § 315(b), therefore, an inter partes review
`
`may not be instituted and Apple’s Petition must be dismissed.
`
`Apple contends that VirnetX’s service of the later 2012 Complaint resets the
`
`clock for purposes of § 315(b), making its Petition timely. (See id.) Apple’s
`
`proposed statutory construction, however, turns § 315(b) on its head. According to
`
`Apple, “a petition filed within 1 year of the date any complaint alleging
`
`infringement of the patent is served on a petitioner is timely . . . .” (Id., emphases
`
`added.) But § 315(b) does not permissively define when a petition “is timely.”
`
`Instead, it restrictively prohibits untimely petitions, stating that an inter partes
`
`review “may not be instituted” if the petition is “filed more than 1 year after” the
`
`petitioner has been served with a complaint alleging infringement. See 35 U.S.C.
`
`§ 315(b) (emphasis added). Apple’s attempt to rewrite § 315(b)’s statutory bar
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`Case No. IPR2013-00398
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`into a permissive, standing-creating provision is contrary to the statute’s plain
`
`language and structure.
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`Apple also argues that Ҥ 315(b) does not specify a one-year deadline that
`
`runs from the date of the first complaint served on a petitioner.” (Petition at 2,
`
`emphasis added.) But the statute need not do so because it specifies that the one-
`
`year deadline runs from service of “a complaint,” i.e., any complaint. Apple’s
`
`proposed constructioni.e., the one-year period is reset each time a patent owner
`
`serves a complaintwould require rewriting § 315(b) to replace “a complaint”
`
`with “the most recent complaint.” This is not what the statute says, and Apple
`
`cannot rewrite it to say so.
`
`Apple’s argument also conflicts with the Board’s precedent construing
`
`§ 315(b). In Universal Remote Control, IPR2013-00168 Paper No. 9, the Board
`
`considered whether the one-year bar under § 315(b) would be reset if a second
`
`infringement complaint was served by the patent owner on the petitioner. The first
`
`complaint was served in 2001 while the second complaint was served in 2012.
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`Id. at 3. Although the second complaint was served less than 12 months before the
`
`petitioner filed its petition for inter partes review, the first complaint was not. Id.
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`The Board rejected the petition as time-barred under § 315(b). Id. at 4. In
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`particular, the Board disagreed that “the one-year grace period applies only to the
`
`last of a chain of multiple lawsuits or that the filing of a later lawsuit renders the
`
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`Case No. IPR2013-00398
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`service of a complaint in an earlier lawsuit to be a nullity as Petitioner argues.” Id.
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`Here, Apple’s request that the Board consider only the 2012 Complaint, and ignore
`
`the April 2011 Complaint, is directly contrary to the Board’s decision in Universal
`
`Remote Control.
`
`3. The Legislative History Confirms that the Petition Is Barred
`Apple also asserts that resetting the one-year period with each new
`
`complaint would be consistent with Congress’s design for the AIA. Because the
`
`plain language of the statute is clear, however, it is unnecessary to rely on
`
`legislative history or other extrinsic evidence to show congressional intent. Conn.
`
`Nat’l Bank v. Germain, 503 U.S. 249, 253-54 (1992) (“We have stated time and
`
`again that courts must presume that a legislature says in a statute what it means and
`
`means in a statute what it says there. When the words of a statute are
`
`unambiguous, then, this first canon is also the last: ‘judicial inquiry is complete.’”
`
`(citations omitted)).
`
`To the extent the Board considers the legislative history, it supports
`
`VirnetX’s interpretation, not Apple’s. When adopting the one-year bar in § 315(b)
`
`instead of a proposed six-month deadline, Congress made clear that “it is important
`
`that the section 315(b) deadline afford defendants a reasonable opportunity to
`
`identify and understand the patent claims that are relevant to the litigation. It is
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`thus appropriate to extend the section 315(b) deadline to one year.” (Ex. 2011, 157
`
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`Case No. IPR2013-00398
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`Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Sen. Kyl) (emphasis
`
`added).)
`
`Thus, Congress intended the one-year period to allow defendants a
`
`reasonable opportunity to identify and understand the relevant patent claims. Here,
`
`Apple has already litigated claims of the ’211 patent to a verdict based on the April
`
`2011 Complaint, and the 2012 Complaint involves those same ’211 patent claims.
`
`In addition, Apple filed inter partes reexaminations on all claims of the ’211 patent
`
`by October 2011. Apple cannot claim that it needed until its 2013 petition filing
`
`date to identify and understand the relevant claims of the ’211 patent.
`
`Apple’s arguments also contravene Congress’s intent. Congress sought to
`
`avoid an open-ended process in which a petitioner could harass a patent owner
`
`with serial challenges. Congress noted that “[t]he inter partes proceeding in H.R.
`
`1249 has been carefully written to balance the need to encourage its use while at
`
`the same time preventing the serial harassment of patent holders.” (Ex. 2003 at 72,
`
`Meeting of the H. Comm. on Judiciary, Transcript of Markup of H.R. 1249
`
`(Apr. 14, 2011) (statement of Judiciary Committee Chairman Lamar Smith).)
`
`Congress was also mindful of the “enhanced estoppels” built into the new statute,
`
`and determined that one year from the date of service of a complaint for
`
`infringement was sufficient for a defendant to determine whether to seek an
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`Case No. IPR2013-00398
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`inter partes review. (See Ex. 2011, 157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011)
`
`(statement of Sen. Kyl).)
`
`Nothing in the legislative history of § 315(b) suggests that Congress
`
`intended to reset the one-year clock every time a patent owner served a defendant
`
`with a new complaint involving the same patent. To the contrary, Congress
`
`wanted to provide a reasonable, but limited, time in which a defendant could elect
`
`to initiate an inter partes review proceeding after being accused of infringement.
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`Apple’s more expansive view of § 315(b) conflicts with congressional intent.
`
`4. Denying the Petition Is Not Unjust
`Apple also argues that “reading § 315(b) to foreclose [these] petition[s]
`
`based on the August 2010 complaint3 would be particularly unjust in this case”
`
`because inter partes review proceedings were unavailable prior to September 16,
`
`2012. (Petition at 3.) Apple’s cries of injustice lack merit because Apple has, and
`
`continues to avail itself of, multiple avenues to challenge the ’211 patent, including
`
`3 Apple’s reference here to a complaint VirnetX served in August 2010 is
`
`incorrect. That complaint alleged infringement against Apple of U.S. Patent Nos.
`
`6,502,135 (“the ’135 patent”) and 7,490,151 (“the ’151 patent). In April 2011,
`
`VirnetX amended the complaint to allege infringement against Apple of the
`
`’211 patent. (Compare Ex. 2001, VirnetX’s Original Complaint in the ’417
`
`Litigation (E.D. Tex. Aug. 11, 2010), with Ex. 2005.)
`
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`11
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`Case No. IPR2013-00398
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`those in district court and in pending inter partes reexamination. Given its
`
`ongoing inter partes reexamination—the pre-AIA counterpart to inter partes
`
`review—Apple cannot claim that dismissing its Petition would be unjust or leave it
`
`without recourse.
`
`The Petition Fails to Comply with 37 C.F.R. § 42.104(b)(4)
`
`B.
`Apple’s Petition is also defective for reasons apart from the time bar. A
`
`petition for inter partes review “must specify where each element of the claim is
`
`found in the prior art patents or printed publications relied upon.” 37 C.F.R.
`
`§ 42.104(b)(4). Apple’s Petition fails to satisfy this requirement. Far from
`
`identifying where claim elements are found in the asserted prior art, the Petition
`
`almost never cites the asserted references. Instead, the Petition discusses almost
`
`exclusively its accompanying declaration (Ex. 1003). This voluminous body of
`
`declarant testimony serves to obscure rather than “specify” the grounds of
`
`invalidity asserted in the Petition.
`
`Further obscuring the grounds of invalidity, the proposed rejections
`
`improperly rely on broad generalities about what each asserted reference allegedly
`
`teaches. For example, the Petition asserts that Beser discloses the “secure
`
`communication link” recited in independent claims 1, 36, and 60. But the Petition
`
`does not explain what particular features in Beser teach a secure communication
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`link. (See Petition at 16-20.) Instead, the Petition discusses Beser in generalities
`
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`Case No. IPR2013-00398
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`that paraphrase the claim language. (See, e.g., id. at 16, “Use of the private IP
`
`addresses to transmit data over the public network creates a secure, anonymous
`
`tunnel that allows the end devices to directly communicate.”) The Petition does
`
`not identify what in Beser constitutes the purported secure communication link.
`
`The Petition’s commentary regarding Provino is similarly conclusory in nature.
`
`(See, e.g., id. at 41, “The address of the internal device is then returned to the
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`external device, which enables the two devices to directly communicate” and “all
`
`traffic sent across a secure tunnel can be encrypted.”)
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`Accordingly, the Petition fails to comply with § 42.104(b)(4). The Petition
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`itself does not specify where each element of the claims is found in each prior art
`
`reference, nor does the Petition’s general discussion of the references identify what
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`aspects of the prior art it relies on.
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` Because the Petition contravenes
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`§ 42.104(b)(4), it does not demonstrate a reasonable likelihood of showing that any
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`of claims 1-3, 5-8, and 14-60 are anticipated or rendered obvious by Beser, RFC
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`2401, or Provino.
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`C. The Board Should Not Institute Based on the Petition’s
`Redundant Grounds
`In addition to its pending inter partes reexamination of the ’211 patent,
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`Apple has filed two petitions requesting inter partes review of the same claims of
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`the ’211 patent (this Petition and the one in Case No. IPR2013-00397). The Board
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`should reject this Petition because it raises grounds of rejection that are internally
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`Case No. IPR2013-00398
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`redundant and redundant in view of the proposed grounds in the ’397 Petition. The
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`Board has held that it will not consider redundant grounds of rejection like Apple’s
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`because the Board must issue a final written decision in inter partes review
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`proceedings within one year of institution (or 18 months for good cause). Liberty
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`Mut., CBM2012-00003 Paper No. 7.4 Redundant grounds place a significant
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`burden on the Board and the patent owner, and they cause unnecessary delay that
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`jeopardizes completing the inter partes review by the statutory deadline. Id.
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`In Liberty Mutual, the Board identified two types of redundant rejections:
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`(1) “horizontally” redundant rejections and (2) “vertically” redundant rejections.
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`Id. at 3. The Board explained that horizontally redundant rejections apply
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`“a plurality of prior art references . . . not in combination to complement each other
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`but as distinct and separate alternatives.” Id. In this type of redundancy, the
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`references “provide essentially the same teaching to meet the same claim
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`limitation, and the associated arguments do not explain why one reference more
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`
`4 Although Liberty Mutual is a decision in a covered business method
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`review, the Board has applied its reasoning to inter partes reviews based on the
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`similar considerations that apply in both types of proceedings. See, e.g., LaRose
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`Indus., LLC v. Capriola Corp., IPR2013-00120 (July 22, 2013) Paper No. 20 at 4
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`(citing Liberty Mut., CBM2012-00003 Paper No. 7 at 2-12).
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`Case No. IPR2013-00398
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`closely satisfies the claim limitation at issue in some respects than another
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`reference, and vice versa.” Id.
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`Vertical redundancy “exists when there is assertion of an additional prior art
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`reference to support another ground of unpatentability when a base ground already
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`has been asserted against the same claim without the additional reference and the
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`Petitioner has not explained what are the relative strength and weakness of each
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`ground.” Id. at 12. Thus, an example of vertical redundancy is when a proposed
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`rejection is based on one reference alone while another proposed rejection against
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`the same claim is based on that same reference plus another reference. Apple’s
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`petitions contain both types of redundancy.
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`Here, Apple proposes the following four grounds of rejection:
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`P1-1. Beser allegedly anticipates claims 1-3, 5-8, and 14-60;
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`P1-2. Beser in view of RFC 2401 allegedly renders obvious claims 1-3,
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`5-8, and 14-60;
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`P1-3. Provino allegedly anticipates claims 1-3, 5-8, and 15-60; and
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`P1-4. Provino in view of Beser allegedly renders obvious claims 3, 25,
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`29-32, 49, and 53-56.
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`In the ’397 proceeding, Apple proposed three grounds of rejection against
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`the ’211 patent claims:
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`P2-1. Aventail allegedly anticipates claims 1-3, 5-8, and 14-60;
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`Case No. IPR2013-00398
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`P2-2. Aventail in view of Beser allegedly renders obvious claims 3, 31,
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`32, 55, and 56; and
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`P2-3. Aventail allegedly renders obvious claims 31, 32, 55, and 56.
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`These examples demonstrate horizontal redundancy. For example, the
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`Petition’s proposed rejections of claims 1-3, 5-8, and 14-60 based on Beser and
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`Provino individually (P1-1 and P1-3) are horizontally redundant of one another
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`and of the ’397 Petition’s proposed Aventail rejection (P2-1). The rejections
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`challenge the same claims, but neither petition explains how any of Aventail,
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`Beser, or Provino purportedly provides a better unpatentability position than any
`
`other in any respect.
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`As another example, the Petition’s proposed rejections of claims 1-3, 5-8,
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`and 14-60 based on Beser (P1-1), of claims 1-3, 5-8, and 14-60 based on Beser in
`
`view of RFC 2401 (P1-2), and of claims 3, 25, 29-32, 49, and 53-56 based on
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`Provino in view of Beser (P1-4) are horizontally redundant of the ’397 Petition’s
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`proposed rejection of claims 3, 31, 32, 55, and 56 based on Aventail in view of
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`Beser (P2-2), at least for the common claims. Neither petition explains how any of
`
`the Petition’s Beser, Beser-RFC 2401, or Provino-Beser proposed rejections
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`provides a better unpatentability position than the ’397 Petition’s Aventail-Beser
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`proposed rejection, or vice versa.
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`Case No. IPR2013-00398
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`As yet another example, the Petition’s proposed rejection of dependent
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`claims 3, 25, 29-32, 49, and 53-56 based on Provino in view of Beser (P1-4) is
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`horizontally redundant of the ’397 Petition’s proposed rejections of claims 3, 31,
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`32, 55, and 56 based on Aventail in view of Beser alone (P2-2) and on Aventail
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`alone (P2-3), at least for common claims 3, 31, 32, 55, and 56. (See ’397 Petition
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`at 46-50.) Neither Petition explains how either of the proposed Aventail-Beser or
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`Aventail-only rejections of the dependent claims improves upon the Provino-Beser
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`rejection of the dependent claims proposed, or vice versa.
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`The above examples also demonstrate vertical redundancy. For example,
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`the ’397 Petition’s proposed Aventail anticipation rejections (P2-1) are vertically
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`redundant of the proposed Aventail-Beser and Aventail obviousness rejections
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`(P2-2 and P2-3), at least for common claims 31, 32, 55, and 56. Apple does not
`
`explain how Aventail alone provides a better unpatentability position for claims 31,
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`32, 55, and 56 than Aventail-Beser, or vice versa. Thus, either proposed rejection
`
`is just an “assertion of an additional prior art reference to support another ground
`
`of unpatentability when a base ground already has been asserted against the same
`
`claim without the additional reference,” and “the Petitioner has not explained what
`
`are the relative strength and weakness of each ground.” Liberty Mut., CBM2012-
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`00003 Paper No. 7 at 12. As a result, the grounds are vertically redundant and
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`should not be considered.
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`Case No. IPR2013-00398
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`As in Liberty Mutual, here Apple simply proposes different references or
`
`different combinations that “provide essentially the same teaching to meet the
`
`same claim limitation, and the associated arguments do not explain why one
`
`reference [or reference combination] more closely satisfies the claim limitation at
`
`issue in some respects than another reference [or reference combination], and vice
`
`versa.” Id. at 3. Despite that “the focus of redundancy