Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 24
`Date: October 3, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORP. and APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-004041
`
`Patent 7,987,274 B2
`____________
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`1 Case IPR2014-00484 has been joined to Case IPR2014-00404.
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 24
`Date: October 3, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORP. and APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-004041
`
`Patent 7,987,274 B2
`____________
`
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`1 Case IPR2014-00484 has been joined to Case IPR2014-00404.
`
`
`
`IPR2014-00404
`Patent 7,987,274 B2
`
`I.
`
`BACKGROUND
`
`
`
`
`
`VirnetX, Inc. (“Patent Owner”), in its Request for Rehearing (“Req.” or
`
`“Request”), seeks reversal of the Board’s Decision (“Decision”) to institute an
`
`inter partes review of claims 1–5, 7, 8, 10, 12, 15, and 17 of U.S. Patent 7,987,274
`
`B2 (“the ’274 Patent,” Ex. 1001) and to join IPR2014-00484 with the instant
`
`proceeding. See Paper 22, 1 (“Req. Reh’g.”). For the reasons that follow, the
`
`Board denies the requested relief.
`
`The applicable standard for a request for rehearing is set forth in 37 C.F.R.
`
`§ 42.71(d), which provides in relevant part:
`
`A party dissatisfied with a decision may file a request for rehearing,
`without prior authorization from the Board. The burden of showing a
`decision should be modified lies with the party challenging the
`decision. The request must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, opposition,
`or a reply.
`
`
`
`II. DISCUSSION
`
`Patent Owner has not shown an abuse of discretion or an overlooked
`
`material point. Patent Owner argues that Apple Inc. (“Petitioner”) “relies on an
`
`expert declaration that makes no mention of Kiuchi or the ’274 patent.” Req.
`
`Reh’g 4–5. However, Petitioner proposes grounds of unpatentability for claims 1–
`
`4, 7, 8, 10, 12, 15, and 17 as anticipated by Kiuchi and includes claim charts
`
`mapping specific citations of Kiuchi to claim limitations recited in the ’274 patent.
`
`See, e.g., ’484 IPR Pet. 17–31. Petitioner provides similar arguments with respect
`
`to Kiuchi in combination with other references. See, e.g., ’484 IPR Pet. 31–39.
`
`Patent Owner does not explain persuasively how we overlooked a point in ’484
`
`IPR Petition that would render institution and joinder deficient.
`
`2
`
`
`
`
`IPR2014-00404
`Patent 7,987,274 B2
`
`
`
`Patent Owner also argues that “the flaws in Apple’s petition render it
`
`
`
`incapable of providing the explanation and particularity required by 35 U.S.C.
`
`§§ 312(a)(3)-(4) and 37 C.F.R. §§ 42.104(b)(4)-(5).” Req. Reh’g 5. Specifically,
`
`Patent Owner argues that “Apple at least fails to explain why Kiuchi’s
`
`‘REQUEST’ message allegedly discloses the ‘access request message’ of claim 1”
`
`and that “none of these issues was addressed in the Board’s Decision instituting
`
`Apple’s petition.” Req. Reh’g. 7–8. Contrary to Patent Owner’s contention, both
`
`Microsoft (’404 IPR) and Apple (’484 IPR) argue that the Kiuchi discloses an
`
`“access request message.” See, e.g., ’404 IPR Pet. 36; ’484 IPR Pet. 27–28.
`
`Patent Owner does not point out any specific differences in these contentions.
`
`As we stated in the Decision, with respect to Kiuchi, “[w]e incorporate our
`
`previous analysis regarding the . . . asserted grounds of unpatentability.” ’484 IPR
`
`Decision 6. In the Decision in the ’404 IPR (incorporated into the Decision of the
`
`’484 IPR), we explained the basis of our conclusion to institute inter partes review
`
`with respect to the “access request message” claim limitation. ’404 IPR Pet. 5–6,
`
`13–15. Thus, we disagree with Patent Owner’s contention that the issue of the
`
`“access request message of claim 1” was supposedly not “addressed in the Board’s
`
`Decision.”
`
`Patent Owner argues that our incorporation of the ’404 IPR Decision in the
`
`’484 IPR Decision is improper because “Apple’s contentions regarding Kiuchi in
`
`IPR2014-00484 are in fact different than the contentions made by Microsoft in
`
`IPR2014-00404.” Req. Reh’g 8–9. Patent Owner does not point out specific
`
`material differences between the contentions made in the ’404 IPR with respect to
`
`contentions made in the ’484 IPR that would preclude the incorporation of the ’404
`
`IPR Decision with that of the ’484 IPR.
`
`3
`
`
`
`
`IPR2014-00404
`Patent 7,987,274 B2
`
`
`
`Patent Owner argues that joinder of the ’484 IPR with the ’404 IPR is
`
`
`
`improper because Patent Owner would need to “address two different expert
`
`declarations [which would] requir[e] significant additional analysis and expense by
`
`[Patent Owner].” Req. Reh’g 11-12. Patent Owner does not point out how
`
`“significant” the additional analysis or expense would be to analyze an expert
`
`declaration or how such “significance” would, in fact, be prohibitive.
`
`
`
`
`
`III. CONCLUSION
`
`Based on the foregoing discussion, Patent Owner’s requested relief for a
`
`reversal of the Decision is denied because Patent Owner has not shown that the
`
`Decision overlooks or misapprehends a material point.
`
`
`
`IV. ORDER
`
`For the reasons given, it is
`
`ORDERED that the Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`
`IPR2014-00404
`Patent 7,987,274 B2
`
`
`PETITIONER:
`
`
`
`
`
`
`W. Karl Renner
`Kevin E. Greene
`FISH & RICHARDSON P.C.
`axf@fr.com
`greene@fr.com
`
`Jeffrey Kushan
`Joseph Micallef
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`jmicallef@sidley.com
`
`
`PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`Jason E. Stach
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`jason.stach@finnegan.com
`
`
`5
`
`
`
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