Trials@uspto.gov
`571-272-7822
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` Paper 24
`Entered: June 30, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.
`Petitioner,
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`v.
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`VIRNETX INC.
`Patent Owner.
`____________
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`Case IPR2014-00237 (Patent 8,504,697)
`Case IPR2014-00238 (Patent 8,504,697)1
`____________
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`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
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`TIERNEY, Administrative Patent Judge.
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`
`Decision
`Virnetx’s Request for Rehearing
` 37 C.F.R. § 42.71
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`1 This decision addresses an issue that is identical in each case. We, therefore,
`exercise our discretion to issue one Order to be filed in each case. Unless
`otherwise authorized, the parties, however, are not authorized to use this style
`heading for any subsequent papers.
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`

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`Case IPR2014-00237 (Patent 8,504,697); Case IPR2014-00238 (Patent 8,504,697)
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`Virnetx Inc. (“Virnetx”) requests rehearing of the Board decision (Paper
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`15),2 which institutes an inter partes review on U.S. Patent 8,504,697. Paper 19,
`“Req.” In its request for rehearing, Virnetx contends that the Board failed to
`appreciate that Apple’s Petition contravened 35 U.S.C. § 312(a)(3) and 37 C.F.R.
`§ 42.104(b)(4) and that the trial should not be instituted.
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`A conference call was held on May 29, 2014, during which the request for
`rehearing was denied. As explained in during the conference call, the Board had
`reviewed Apple’s Petition and found it sufficient to meet the statutory and
`regulatory requirements necessary for institution.
`In inter partes review, 35 U.S.C. § 312(a)(3) requires a petition identify each
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`claim challenged, the grounds on which the challenge to each claim is based and
`the evidence that supports the grounds for the challenge to each claim. The
`Petition contains a table of contents, which has a heading “Precise Reasons for
`Relief Requested.” Under this heading, Apple identified claims 1-11, 14-25 and
`28-30 as anticipated by Beser and claims 1-11, 14-25 and 28-30 as obvious over
`Beser in view of RFC 2401. Accordingly, the Board holds that the table of
`contents, by and of itself, identifies each challenged claim, the grounds on which
`the challenge is based and the evidence that supports the grounds for the challenge
`to each claim.
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`Additionally, 37 C.F.R. § 42.104(b)(4) requires a petition to identify how a
`construed claim is unpatentable by specifying where each element of the claim is
`found in the prior art patents or publications relied upon. The Petition provided a
`discussion of each element of the claim and citations to an expert declaration,
`which in turn provided citations to where each element of the claim could be found
`in the prior art relied upon. Apple’s Petition is not a model of clarity, but on the
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`2 Citations are provided to IPR2014-00237.
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`2
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`Case IPR2014-00237 (Patent 8,504,697); Case IPR2014-00238 (Patent 8,504,697)
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`specific facts of this case, we hold that Apple’s Petition meets the requirements of
`§ 42.104(b)(4), albeit minimally. Additionally, even if the Petition failed to meet
`the requirements of § 42.104(b)(4), we would exercise our discretion under
`§42.5(b) and waive the rule as the Petition provides sufficient notice of the
`challenge to each identified claim.
`Virnetx’s request for rehearing is denied.
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`3
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`Case IPR2014-00237 (Patent 8,504,697); Case IPR2014-00238 (Patent 8,504,697)
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`PETITIONER:
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`Jeffrey P. Kushan
`Joseph A. Micallef
`Sidley Austin LLP
`jkushan@sidley.com
`jmicallef@sidley.com
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`PATENT OWNER:
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`Joseph E. Palys
`Naveen Modi
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`joseph.palys@finnegan.com
`naveen.modi@finnegan.com
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`4
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