`By:
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: josephpalys@paulhastings.com
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`
`
`
`
`Paper No.
`Filed: September 29, 2014
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: naveenmodi@paulhastings.com
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`
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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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`MICROSOFT CORP. and APPLE INC.
`Petitioners
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`v.
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`VIRNETX INC.
`Patent Owner
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`
`
`Case IPR2014-004041
`Patent 7,987,274
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`
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`Patent Owner VirnetX’s Motion for Rehearing of the Decision
`to Institute and Join IPR2014-00484 Under 37 C.F.R. § 42.71(d)
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`
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`1 Case IPR2014-00484 has been joined with this case.
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`I.
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`II.
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`
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`Case No. IPR2014-00404
`Patent 7,987,274
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`Table of Contents
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`Introduction ...................................................................................................... 1
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`Precise Relief Requested ................................................................................. 2
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`III. Statement of Facts ............................................................................................ 2
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`IV. Legal Standards ............................................................................................... 3
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`V. Argument ......................................................................................................... 4
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`A.
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`B.
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`C.
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`The Petition Fails to Comply with 35 U.S.C. §§ 312(a)(3)-(4)
`and 37 C.F.R. § 42.104(b) ..................................................................... 4
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`The Board Relied on Evidence Not of Record...................................... 8
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`The Board Improperly Granted Joinder ..............................................11
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`VI. Conclusion .....................................................................................................12
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`Case No. IPR2014-00404
`Patent 7,987,274
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`Table of Authorities
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`FEDERAL CASES
`CLIO USA, Inc. v. The Proctor and Gamble Co.,
`IPR2013-00450, Paper No. 19 (Feb. 4, 2014) .................................................. 4, 8
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`Page(s)
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`Google Inc. et al. v. Everymd.com LLC,
`IPR2014-00347, Paper No. 9 (May 22, 2014) ...................................................... 6
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`Apple Inc. v. Evolutionary Intelligence, LLC,
`IPR2014-00079, Paper No. 8 (Apr. 25, 2014) .................................................. 6, 7
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`Wowza Media Sys., LLC et al. v. Adobe Sys., Inc.,
`IPR2013-00054, Paper No. 16 (July 13, 2013) .................................................... 6
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`Tasco, Inc. v. Pagnani,
`IPR2013-00103, Paper No. 6 (May 23, 2013) ...................................................... 6
`
`Atrium Med. Corp. v. Davol Inc.,
`IPR2013-00186, Paper No. 34 (Oct. 23, 2013) .................................................... 6
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`IPR2012-00041, Paper No. 16 (Feb. 22, 2013) .................................................... 6
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`CaptionCall, LLC v. Ultratec, Inc.,
`IPR2013-00549, Paper No. 20 (Apr. 28, 2014) .................................................... 6
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`ScentAir Techs., Inc. v. Prolitec, Inc.,
`IPR2013-00179, Paper No. 9 (Apr. 16, 2013) .................................................... 10
`
`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027, Paper No. 26 (June 11, 2013) .................................................. 10
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`NetApp, Inc. v. PersonalWeb Technologies, LLC,
`IPR2013-00319, Paper No. 18 (July 22, 2013) .................................................. 12
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`Sony Corp. of America v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00386, Paper No. 16 (July 29, 2013) .................................................. 12
`
`ii
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`FEDERAL STATUTES
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`
`
`Case No. IPR2014-00404
`Patent 7,987,274
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`35 U.S.C. § 102 .......................................................................................................... 2
`
`35 U.S.C. § 103 .......................................................................................................... 2
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`35 U.S.C. § 312 .......................................................................................... 2, 4, 5, 7, 8
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`35 U.S.C. § 314 .................................................................................................. 10, 11
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`35 U.S.C. § 315 ........................................................................................................ 11
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`FEDERAL REGULATIONS
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`37 C.F.R. § 42.104 ................................................................................. 2, 4, 5, 6, 7, 8
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`37 C.F.R. § 42.71 ................................................................................................... 3, 4
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`
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`iii
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`I.
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`Introduction
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`
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`Case No. IPR2014-00404
`Patent 7,987,274
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`The Board misapprehended or overlooked deficiencies in Apple’s petition
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`for inter partes review in IPR2014-00484 (“the ’484 proceeding”) and improperly
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`instituted the petition based on evidence that was not of record in the proceeding.
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`As a result of this oversight, the Board improperly joined Apple’s petition to that in
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`IPR2014-00404 (“the ’404 proceeding”), further prejudicing Patent Owner
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`VirnetX.
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`Throughout its petition, Apple repeatedly cites to an expert declaration to
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`support and explain its unpatentability contentions for U.S. Patent No. 7,987,274
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`(“the ’274 patent”). (See generally Petition in IPR2014-00484; Ex. 1011 in
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`IPR2014-00484.)2 But the declaration upon which Apple so heavily relies lacks
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`any mention of either the ’274 patent or the prior art references in Apple’s petition.
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`(Ex. 1011 in IPR2014-00484.) Nevertheless, the Board instituted Apple’s petition,
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`incorporating its analysis from the ’404 proceeding, which cites to an entirely
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`2 Apple was given a two-week extension to the five business day time period
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`set in the Decision in IPR2014-00484 to refile its exhibits from IPR2014-00484
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`into IPR2014-00404. At the time of filing this Motion for Rehearing, Apple has
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`not yet refiled its exhibits. Therefore, exhibits that are not yet of record in
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`IPR2014-00404 are identified by the numbering set by Apple in IPR2014-00484.
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`Case No. IPR2014-00404
`Patent 7,987,274
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`different expert declaration. (Institution Decision in IPR2014-00484 at 6,
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`hereinafter “Decision.”) Because Apple’s petition fails to comply with the
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`particularity and specificity requirements of 35 U.S.C. §§ 312(a)(3)-(4) and
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`37 C.F.R. § 42.104(b), because the Board improperly instituted Apple’s petition,
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`and because the Board improperly and prejudicially joined the ’404 and ’484
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`proceedings, VirnetX requests rehearing of the Board’s Decision instituting
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`Apple’s petition and joining it with the ’404 proceeding.
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`II.
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`Precise Relief Requested
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`VirnetX requests rehearing of the Decision in the ’484 proceeding to
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`institute inter partes review of claims 1–4, 7, 8, 10, 12, 15, and 17 under
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`35 U.S.C. § 102 as anticipated by Kiuchi, claims 1–4, 7, 8, 10, 12, 15, and 17 under
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`35 U.S.C. § 103 as obvious over the combination of Kiuchi and Bhatti, claim 5
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`under 35 U.S.C. § 103 as obvious over Kiuchi in light of Lindblad, and claim 5
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`under 35 U.S.C. § 103 as obvious over the combination of Kiuchi, Bhatti and
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`Lindblad; and the decision to join the ’484 proceeding with the ’404 proceeding.
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`(Decision in IPR2014-00484 at 8.) As discussed below, Apple’s petition for inter
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`partes review and its motion for joinder should be denied.
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`III. Statement of Facts
`In February 2014, Microsoft filed a petition for inter partes review of the
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`’274 patent in the ’404 proceeding.
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` (See Petition in IPR2014-00404.)
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`2
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`Patent 7,987,274
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`Accompanying its petition is an expert declaration discussing the ’274 patent and
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`alleged prior art reference Kiuchi. (See Ex. 1011 in IPR2014-00404.) Apple later
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`filed its petition in the ’484 proceeding relying on some of the same references as
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`Microsoft. (See Petition in IPR2014-00484.) It too filed an allegedly supporting
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`expert declaration, but Apple’s declaration fails to address either the ’274 patent or
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`the Kiuchi reference. (See Ex. 1011 in IPR2014-00484.) The Board instituted
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`review in the ’404 proceeding on the Kiuchi reference citing to Microsoft’s
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`expert’s declaration as well as Microsoft’s petition, which referred at length to its
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`expert’s declaration. (See generally Institution Decision in IPR2014-00404.)
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`Based on the misconception that Apple “present[s] contentions regarding the
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`Kiuchi challenges that are identical to those presented in the ’404 trial proceeding,”
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`the Board subsequently instituted Apple’s petition in the ’484 proceeding and
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`joined it with Microsoft’s petition in the ’404 proceeding. (Decision in IPR2014-
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`00484 at 6, 8.)
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`IV. Legal Standards
`“A party dissatisfied with a decision may file a request for rehearing,
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`without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “The request
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`must specifically identify all matters the party believes the Board misapprehended
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`or overlooked, and the place where each matter was previously addressed in a
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`motion, an opposition, or a reply.” Id.
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`3
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`Case No. IPR2014-00404
`Patent 7,987,274
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`When asked to review a decision on a petition, a panel looks for an abuse of
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`discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs when a ‘decision
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`was based on an erroneous conclusion of law or clearly erroneous factual findings,
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`or a . . . clear error of judgment.’” CLIO USA, Inc. v. The Proctor and Gamble
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`Co., IPR2013-00450, Paper No. 19 at 2 (Feb. 4, 2014) (quoted source omitted).
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`V. Argument
`VirnetX requests rehearing for three reasons. First, the Board overlooked
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`that Apple’s expert declaration, cited extensively throughout Apple’s petition as
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`allegedly supporting its Kiuchi arguments, fails to include any mention whatsoever
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`of Kiuchi or the ’274 patent. Second, it was an abuse of discretion for the Board to
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`“incorporate” its analysis in IPR2014-00404, which relied on evidence not of
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`record in IPR2014-00484 (e.g., a different expert declaration) and contentions not
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`put forward by Apple. Third, the Board abused its discretion in joining the ’404
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`and ’484 proceedings and prejudiced VirnetX. Accordingly, the Board should
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`deny Apple’s petition in IPR2014-00484.
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`A. The Petition Fails to Comply with 35 U.S.C. §§ 312(a)(3)-(4) and
`37 C.F.R. § 42.104(b)
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`As explained in VirnetX’s Preliminary Response in the ’484 proceeding
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`(“Preliminary Response”) and noted above, to support its Kiuchi arguments,
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`Apple’s petition relies heavily on an expert declaration that makes no mention of
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`4
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`Patent 7,987,274
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`Kiuchi or the ’274 patent. (See, e.g., Prelim. Resp. at 1-8 in IPR2014-00484; see
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`also Exhibit 1011 in IPR2014-00484.) Despite that Apple’s expert declaration
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`lacks any analysis of Kiuchi or the ’274 patent, it is cited over fifty times in
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`Apple’s petition. (See, e.g., Petition in IPR2014-00484 at 17-39.) Each time it is
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`mischaracterized as allegedly supporting Apple’s Kiuchi arguments. (See, e.g.,
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`Petition in IPR2014-00484 at 17-39; see also Exhibit 1011 in IPR2014-00484
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`(analyzing, for example, U.S. Patent No. 7,188,180, which is not at issue in
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`IPR2014-00484, and failing to include any mention whatsoever of Kiuchi).) The
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`petition further includes numerous references to various diagrams purportedly
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`present in Apple’s expert declaration and relied upon to “illustrate[] relevant parts
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`of” Kiuchi, which simply do not exist in Apple’s expert declaration. (See, e.g.,
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`Petition in IPR2014-00484 at 18, 20-24; see also Exhibit 1011 in IPR2014-00484.)
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`The Decision overlooks these flaws in Apple’s petition.
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`However, the flaws in Apple’s petition render it incapable of providing the
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`explanation and particularity required by 35 U.S.C. §§ 312(a)(3)-(4) and
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`37 C.F.R. §§ 42.104(b)(4)-(5). As discussed in the Preliminary Response,
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`35 U.S.C. § 312(a)(3) requires that petitions identify “in writing and with
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`particularity, each claim challenged, the grounds on which the challenge to each
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`claim is based, and the evidence that supports the grounds for the challenge to
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`each claim[.]” (See, e.g., Prelim. Resp. in IPR2014-00484 at 2.) They must also
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`5
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`“specify where each element of the claim is found in the prior art patents or
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`printed publications relied upon” (37 C.F.R. § 42.104(b)(4)) and identify
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`“specific
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`portions
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`of
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`the
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`evidence
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`that
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`support
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`the
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`challenge”
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`(37 C.F.R. § 42.104(b)(5)). (See, e.g., Prelim. Resp. in IPR2014-00484 at 2.)
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`Petitions that lack the requisite particularity and specificity of explanation
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`are denied. See Google Inc. et al. v. Everymd.com LLC, IPR2014-00347, Paper
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`No. 9 at 18-20 (May 22, 2014) (rejecting petition for insufficient explanation);
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`Apple Inc. v. Evolutionary Intelligence, LLC, IPR2014-00079, Paper No. 8 at
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`17-19 (Apr. 25, 2014) (rejecting petition for including “vague” explanation that
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`did “not identify specifically what Petitioner regards as the” relevant feature of
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`the prior art); Wowza Media Sys., LLC et al. v. Adobe Sys.,
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`Inc.,
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`IPR2013-00054, Paper No. 16 at 3, 6 (July 13, 2013); Tasco, Inc. v. Pagnani,
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`IPR2013-00103, Paper No. 6 at 18-22 (May 23, 2013); Atrium Med. Corp. v.
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`Davol Inc., IPR2013-00186, Paper No. 34 at 3 (Oct. 23, 2013); Synopsys, Inc.
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`v. Mentor Graphics Corp., IPR2012-00041, Paper No. 16 at 14-15 (Feb. 22,
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`2013). (See, e.g., Prelim. Resp. in IPR2014-00484 at 3.)
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`As the Board has explained, it will not “search the record and piece together
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`any evidence or arguments that may support Petitioner’s ultimate conclusion.”
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`CaptionCall, LLC v. Ultratec, Inc., IPR2013-00549, Paper No. 20 at 5 (Apr. 28,
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`2014). (See, e.g., Prelim. Resp. in IPR2014-00484 at 3.) When faced with a
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`6
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`Patent 7,987,274
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`defective declaration similar to the one filed by Apple in IPR2014-00484, the
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`Board has previously denied institution. See Apple Inc. v. Evolutionary
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`Intelligence, LLC, IPR2014-00085, Paper No. 9 at 11-12 (Apr. 24, 2014)
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`(denying institution where the accompanying declaration addressed prior art not
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`asserted in the petition).
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`Apple’s petition in IPR2014-00484 represents a particularly egregious
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`violation of
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`the
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`required explanation and particularity
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`in 35 U.S.C.
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`§§ 312(a)(3)-(4) and 37 C.F.R. §§ 42.104(b)(4)-(5). Apple takes its expert
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`declaration—which fails to include any analysis of the ’274 patent or Kiuchi—and
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`mischaracterizes the declaration throughout the petition to suggest that it supports
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`the petition. (See, e.g., Petition in IPR2014-00484 at 17-39; see also Exhibit 1011
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`in IPR2014-00484.) Moreover, Apple relies in large part on the expert declaration
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`alone to explain the Kiuchi reference and its contentions. (See Petition in
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`IPR2014-00484 at 17-39.) But its citations to and reliance upon an irrelevant
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`expert declaration cannot satisfy 35 U.S.C. §§ 312(a)(3)-(4) and 37 C.F.R.
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`§§ 42.104(b)(4)-(5). Specifically, as discussed in VirnetX’s Preliminary Response,
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`Apple at least fails to explain why Kiuchi’s “REQUEST” message allegedly
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`discloses the “access request message” of claim 1. (See, e.g., Prelim. Resp. in
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`IPR2014-00484 at 1-8.)
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`7
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`Case No. IPR2014-00404
`Patent 7,987,274
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`VirnetX addressed each of these issues with Apple’s petition in its
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`Preliminary Response. (See, e.g., Prelim. Resp. at 1-8 in IPR2014-00484.)
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`However, none of these issues was addressed in the Board’s Decision instituting
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`Apple’s petition. It appears that the Board either misapprehended or overlooked
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`VirnetX’s arguments. In instituting Apple’s petition based on the clearly
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`erroneous factual finding that Apple’s expert declaration supports its Kiuchi
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`arguments and the erroneous conclusion of law that Apple’s petition satisfied the
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`explanation and particularity required by 35 U.S.C. §§ 312(a)(3)-(4) and 37 C.F.R.
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`§§ 42.104(b)(4)-(5), the Board committed an abuse of discretion. See CLIO USA,
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`IPR2013-00450, Paper No. 19 at 2 (Feb. 4, 2014) (quoted source omitted).
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`The Board Relied on Evidence Not of Record
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`B.
`In the Decision, the Board states that “Petitioner and Patent Owner present
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`contentions regarding the Kiuchi challenges that are identical to those presented in
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`the ’404 trial proceeding” and proceeds to “incorporate [the Board’s] previous
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`analysis regarding” Kiuchi from IPR2014-00404. (Decision in IPR2014-00484 at
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`6.) However, Apple’s contentions regarding Kiuchi in IPR2014-00484 are in fact
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`different than the contentions made by Microsoft in IPR2014-00404. The Board’s
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`incorporation of its analysis in IPR2014-00404, which relied on evidence not of
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`8
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`Patent 7,987,274
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`record in IPR2014-00484, and included contentions about Kiuchi not made by
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`Apple, is improper.3
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`As discussed above, in IPR2014-00484, Apple relied on an expert
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`declaration to support its Kiuchi arguments that does not actually discuss Kiuchi or
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`the ’274 patent at all. In contrast, in IPR2014-00404, Microsoft relied on an expert
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`declaration to support its Kiuchi arguments that does make an attempt to analyze
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`Kiuchi. Thus, Apple’s contentions regarding Kiuchi are different than Microsoft’s
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`contentions regarding Kiuchi at least because Apple’s contentions are supported by
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`a different expert declaration for a different patent.
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`Apple’s contentions regarding Kiuchi are also different than the contentions
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`adopted in the Board’s Institution Decision in IPR2014-00404. For example, in
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`that decision, the Board found that Kiuchi discloses “sending an access request
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`message,” as claimed, because of its alleged disclosure of a client-side proxy
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`sending a request for connection to a server-side proxy. (Institution Decision in
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`3 While these arguments have not been previously presented by VirnetX in
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`IPR2014-00484, the arguments are properly made in this request for rehearing
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`because they could not have been made sooner (i.e., they are based solely on the
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`Decision’s reliance upon evidence not of record in IPR2014-00484 and contentions
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`not put forward by Apple).
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`9
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`Patent 7,987,274
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`IPR2014-00404 at 13-14.) Apple never made this contention in its petition. (See
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`generally Petition in IPR2014-00484.)
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`In addition, in the Board’s Institution Decision in IPR2014-00404, the Board
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`cited extensively to Microsoft’s Petition. (Institution Decision in IPR2014-00404
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`at 12-18.) Microsoft’s petition, in turn, relied extensively upon an expert
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`declaration not of record in IPR2014-00484 to support its Kiuchi arguments. Thus,
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`the Board’s Decision in IPR2014-00484 relied upon evidence not of record in
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`IPR2014-00484.
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`The Board has exceeded its statutory authority. Under 35 U.S.C. § 314, the
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`Board “may not authorize an inter partes review to be instituted unless [it]
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`determines that the information presented in the petition filed under section 311
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`and any response filed under section 313 shows that there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.” 35 U.S.C. § 314 (emphasis added). Consistent with
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`this statutory limitation, the Board has explained that “inter partes review is not
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`original examination, continued examination, or reexamination of the involved
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`patent. Rather, it is a trial, adjudicatory in nature and constituting litigation.”
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`ScentAir Techs., Inc. v. Prolitec, Inc., IPR2013-00179, Paper No. 9 at 4 (Apr. 16,
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`2013); see also Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper No.
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`10
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`Patent 7,987,274
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`26 at 6 (June 11, 2013) (“inter partes review is more adjudicatory than
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`examinational, in nature”).
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`By relying on its analysis in IPR2014-00404, which includes information
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`not presented in Apple’s petition, the Board has not made a determination
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`consistent with 35 U.S.C. § 314. That is, the Board has not analyzed the
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`“information presented in the petition filed under section 311” to determine
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`whether there is a “reasonable likelihood that [Apple] would prevail.” See
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`35 U.S.C. § 314. Rather, the Board has made a determination based on
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`information presented by Microsoft in IPR2014-00404.
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`C. The Board Improperly Granted Joinder
`Joinder is only permitted if the Board first determines that Apple’s petition
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`warrants institution. 35 U.S.C. § 315(c) (“the Director, in his or her discretion,
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`may join . . . any person who properly files a petition under section 311 that the
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`Director . . . determines warrants the institution of an inter partes review under
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`section 314”). For the reasons discussed in the sections above, Apple’s petition in
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`the ’484 proceeding does not warrant institution. Thus, the Board’s Decision to
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`join the proceedings is improper and an abuse of discretion.
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`However, even if the Board concludes that it properly instituted the ’484
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`proceeding, the Board failed to consider that the interests of justice weigh against
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`joinder of the ’484 and ’404 proceedings. Joinder is prejudicial to VirnetX.
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`11
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`Case No. IPR2014-00404
`Patent 7,987,274
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`Specifically, it forces VirnetX to address two different expert declarations relating
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`to two different patents with additional testimony within a shortened period of
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`time, requiring significant additional analysis and expense by VirnetX. See, e.g.,
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`NetApp, Inc. v. PersonalWeb Technologies, LLC, IPR2013-00319, Paper No. 18 at
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`5 (July 22, 2013) (finding that joinder prejudices a patent owner when an expert
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`declaration submitted in a proceeding “contains new testimony and arguments not
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`previously presented” because addressing such new testimony and arguments “will
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`require significant additional analysis and expense on behalf of patent owner”
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`(quotations omitted)); see also Sony Corp. of America v. Network-1 Sec. Solutions,
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`Inc., IPR2013-00386, Paper No. 16 at 7 (July 29, 2013) (denying a request for
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`joinder in part because a new declaration will likely increase the amount of
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`discovery).
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`Because VirnetX would need to conduct significant additional analysis and
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`incur significant additional expense all within a shortened timeframe to address
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`Apple’s expert declaration and its relationship to the ’274 patent, Apple’s petition,
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`and the declaration put forward by Microsoft, the interests of justice weigh against
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`joinder.
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`VI. Conclusion
`For the foregoing reasons, VirnetX respectfully requests rehearing of the
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`Board’s September 15, 2014, Decision instituting inter partes review and joining
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`12
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`Case No. IPR2014-00404
`Patent 7,987,274
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`IPR2014-00484 with IPR2014-00404. Apple’s petition in IPR2014-00484 should
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`be denied.
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`Dated: September 29, 2014
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`Respectfully submitted,
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`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
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`Counsel for VirnetX Inc.
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`Case No. IPR2014-00404
`Patent 7,987,274
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that I caused to be served on
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`the counsel for Petitioner a true and correct copy of the foregoing Patent Owner
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`VirnetX’s Motion for Rehearing of
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`the Decision
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`to Institute and Join
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`IPR2014-00484 Under 37 C.F.R. § 42.71(d) by electronic means on September 29,
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`2014 as follows:
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`Counsel for Microsoft Corporation:
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`W. Karl Renner
`Kevin E. Greene
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR38868-0003IP2@fr.com
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`Counsel for Apple Inc.:
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`Jeffrey P. Kushan
`Joseph A. Micallef
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
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`Respectfully submitted,
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` /Joseph E. Palys/
`Joseph E. Palys
`Counsel for VirnetX Inc.
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`Dated: September 29, 2014
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