Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00483
`Patent 7,987,274 B2
`____________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C.
`SIU, Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
`
`
`Paper 11
`Date: September 15, 2014
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
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`571-272-7822
`
`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00483
`Patent 7,987,274 B2
`____________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C.
`SIU, Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
`
`
`Paper 11
`Date: September 15, 2014
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2014-00483
`Patent 7,987,274 B2
`
`I. BACKGROUND
`
`
`
`
`
`A. Introduction
`Petitioner, Apple Inc., filed a Petition requesting inter partes review
`of claims 1–5, 7, 8, 10, 12, 13, 15, 17, and 18 of U.S. Patent No. 7,987,274
`B2 (“the ’274 Patent,” Ex. 1027) pursuant to 35 U.S.C. §§ 311–319. Paper
`1 (“Pet.”). Patent Owner, VirnetX Inc., filed a Preliminary Response. Paper
`8 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless “the Director determines that
`the information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.”
`
`We determine, based on the record, that Petitioner has demonstrated,
`under 35 U.S.C. § 314(a), that there is a reasonable likelihood of
`unpatentability with respect to all of the challenged claims, claims 1–5, 7, 8,
`10, 12, 13, 15, 17, and 18.
`Petitioner relies on the following prior art references:
`U.S. Patent No. 6,557,037 B1 (Apr. 29, 2003) (Ex. 1003, “Provino”).
`
`U.S. Patent No. 6,151,628 (Nov. 21, 2000) (Ex. 1007, “Xu”).
`
`Dave Kosiur, Building and Managing Virtual Private Networks (Sept.
`1, 1998) (Ex. 1006, “Kosiur”).
`
`S. Kent et al., Security Architecture for the Internet Protocol, Network
`Working Group, Request For Comments: 2401 1–66 (Nov. 1998) (Ex. 1032,
`“RFC 2401”).
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`2
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`IPR2014-00483
`Patent 7,987,274 B2
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`M. Handley et al., SIP: Session Initiation Protocol, Network Working
`Group, Request For Comments: 2543 1–153 (Mar. 1999) (Ex. 1033, “RFC
`2543”).
`
`H. Schulzrinne et al., RTP: A Transport Protocol for Real-Time
`Applications, Network Working Group, Request For Comments: 1889 1–75
`(Jan. 1996) (Ex. 1034, “RFC 1889”).
`
`M. Handley et al., SDP: Session Description Protocol, Network
`Working Group, Request For Comments: 2327 1–42 (Apr. 1998) (Ex. 1035,
`“RFC 2327”).
`
`E. Wedlund & H. Schulzrinne, Mobility Support Using SIP,
`Wowmom ’99 Proceedings of the 2nd ACM International Workshop
`Wireless Mobile Multimedia (Ex. 1075, “Mobility Support”).
`
`Pet. 3.
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and 103 based on the following grounds:
`
`
`Reference(s)
`
`Basis
`
`Claims challenged
`
`§ 102(e) 1, 7, 8, 10, 12, 13, 15, and 17
`Provino
`Provino and Kosiur § 103(a) 2–5
`Provino and Xu
`§ 103(a) 18
`RFC 2543
`§ 102(b) 1-5, 7, 8, 10, 12, 13, 15, and
`17–18
`§ 103(a) 1-5, 7, 8, 10, 12, 13, 15, and
`17–18
`
`RFC 2543, RFC
`1889, RFC 2327,
`and RFC 2401
`RFC 2543 and
`Mobility Support
`
`
`See id.
`
`
`
`§ 103(a) 18
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`IPR2014-00483
`Patent 7,987,274 B2
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`B. Related District Court Proceeding and Inter Partes Reviews
`Patent Owner asserted the ’274 Patent in VirnetX Inc. v. Microsoft
`Corp., No. 6:13-cv-00351-LED (E.D. Tex. filed 2013). See Pet. 1–2. The
`’274 Patent also is challenged in Cases IPR2014-00403, IPR2014-00404,
`and IPR2014-00484. Decisions to Institute were issued on July 31, 2014 in
`both IPR2014-00403 and IPR2014-00404. In particular, the Board instituted
`trial in IPR2014-00403 on claims 1–5, 7, 8, 10, 12, 13, 15, 17, and 18, and in
`IPR2014-00404 on claims 1–5, 7, 8, 10, 12, 15, and 17.
`
`C. The ’274 Patent
`The ’274 Patent discloses secure networks. For example, the ’274
`Patent describes creating a secure communication link in the form of a
`virtual private network (“VPN”) link. Ex. 1027, 46:64–67.
`For purposes of the instant Decision to Institute (“Decision”), we
`adopt and rely upon our decision in Microsoft Corp. v. VirnetX Inc., Case
`IPR2014-00403 (PTAB July 31, 2014) (Paper 13) (“the ’403 Decision”),
`including the description of the ’274 Patent in the ’403 Decision at 3–5.
`
`Illustrative Claim
`D.
`Claim 1, the sole independent claim, follows:
`1. A method of accessing a secure network address,
`comprising:
`sending a query message from a first network device to a
`secure domain service, the query message requesting from the
`secure domain service a secure network address for a second
`network device;
`receiving at the first network device a response message
`from the secure domain name service containing the secure
`network address for the second network device; and
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`IPR2014-00483
`Patent 7,987,274 B2
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`sending an access request message from the first network
`device to the secure network address using a virtual private
`network communication link.
`
`II. ANALYSIS
`
`A. Claim Interpretation
`Consistent with the statute and the legislative history of the Leahy-
`Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329 (Sept.
`16, 2011) (“AIA”), the Board interprets claim terms by applying the
`broadest reasonable interpretation in the context of the specification in
`which the claims appears. 37 C.F.R. § 42.100(b); see Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`Both Petitioner and Patent Owner propose several definitions for
`certain claim terms. The definitions and arguments in support thereof are
`the same as those presented in the related ’403 IPR. For purposes of this
`Decision, the Board adopts and relies upon the claim constructions outlined
`in the ’403 Decision at 6-11.
`
`Redundancy
`B.
`Patent Owner contends that the Board should not institute a trial in
`light of the Petition’s presentation of redundant grounds. Prelim. Resp. 8.
`Patent Owner states that redundant grounds place a significant burden on the
`Board and Patent Owner and cause unnecessary delay. Id.
`According to Patent Owner, the Petition is redundant to the ’403 and
`’404 Petitions, which challenge common claims of the ’274 Patent. Id. at
`10. Patent Owner states that the Petitioner fails to articulate a meaningful
`distinction in terms of relative strengths and weaknesses with respect to the
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`Patent 7,987,274 B2
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`application of the prior art disclosures and that the Board should deny the
`redundant grounds. Id. We agree-in-part.
`As explained below, Petitioner presents several grounds that are
`identical to those presented and instituted in the ’403 proceeding. Further,
`Petitioner presents several additional grounds for claims that are already
`subject to review as part of the instituted ’403 and ’404 trial proceedings.
`Accordingly, to avoid unnecessary duplication in resolving the patentability
`challenges raised, the Board exercises its discretion and joins Petitioner as a
`party to the ’403 trial proceeding for those grounds that are present in both
`this Petition and the ’403 proceeding but denies the remaining grounds as
`redundant to those already instituted in the ’403 and ’404 trial proceedings.
`
`Provino Challenges
`C.
`Petitioner alleges that Provino anticipates claims 1, 7, 8, 10, 12, 13,
`15, and 17 of the ’274 patent. Petitioner further alleges that claims 2–5 are
`rendered obvious in light of Provino and Kosiur and that claim 18 is obvious
`over the combination of Provino and Xu.
`
`Petitioner and Patent Owner present contentions regarding the Provino
`challenges that are identical to those presented in the ’403 trial proceeding.
`We incorporate our previous analysis regarding the three asserted grounds of
`unpatentability. ’403 Decision at 12-21. Based on the record presented, we
`conclude that Petitioner has demonstrated a reasonable likelihood of
`prevailing on the Provino challenges asserted in the Petition.
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`IPR2014-00483
`Patent 7,987,274 B2
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`RFC Challenges
`D.
`
`Petitioner alleges that RFC 2543 anticipates claims 1–5, 7, 8, 10, 12,
`
`13, 15, and 17–18 of the ’274 patent. Further, Petitioner alleges that the
`combination of RFC 2543, RFC 1889, RFC 2327, and RFC 2401 renders
`obvious claims 1–5, 7, 8, 10, 12, 13, 15, and 17–18 whereas the combination
`of RFC 2543 and Mobility Support renders claim 18 obvious.
`
`Patent Owner contends that consideration of redundant grounds, such
`as those presented in the RFC challenges, place a significant burden on the
`patent owner, and cause unnecessary delay. We agree. The RFC challenges
`are directed to the same claims that are the subject of the Provino challenges.
`Furthermore, the RFC-challenged claims are already the subject of trial
`proceedings, IPRs ’403 and ’404. Petitioner does not attempt to explain why
`the additional RFC challenges it proposes should be instituted when taken in
`light of the Petition’s Provino challenges and further in view of the already
`instituted proceedings. Accordingly, we limit our institution to those
`grounds that are already present in the ’403 trial proceeding: the Provino
`grounds discussed above.
`
`III. CONCLUSION
`We institute an inter partes review of claims 1, 7, 8, 10, 12, 13, 15,
`and 17 under 35 U.S.C. § 102 as anticipated by Provino; claims 2–5 under
`35 U.S.C. § 103 as obvious over Provino and Kosiur; and claim 18 under
`35 U.S.C. § 103 as obvious over Provino and Xu.
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`IPR2014-00483
`Patent 7,987,274 B2
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`IV. ORDER
`For the reasons given, it is
`ORDERED that inter partes review is instituted as to claims 1–5, 7, 8,
`
`10, 12, 13, 15, 17, and 18;
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’274 Patent is hereby instituted commencing on the
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4, notice is hereby given of the institution of a trial; and
`FURTHER ORDERED that the trial is limited to the following
`grounds: claims 1, 7, 8, 10, 12, 13, 15, and 17 under 35 U.S.C. § 102 as
`anticipated by Provino; claims 2–5 under 35 U.S.C. § 103 as obvious over
`Provino and Kosiur; and claim 18 under 35 U.S.C. § 103 as obvious over
`Provino and Xu.
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2014-00403 pursuant to 35 U.S.C. § 315(c).
`FURTHER ORDERED that, in light of the joinder of this proceeding
`with the IPR2014-00403 proceeding, the Scheduling Order set forth in that
`proceeding shall set forth the schedule for the joined proceeding.
`FURTHER ORDERED that this proceeding is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceedings shall be
`made in IPR2014-00403.
`FURTHER ORDERED that Petitioner and Patent Owner shall within
`five business days refile those exhibits not already appearing in IPR2014-
`00403 using unique sequential numbers as required by 37 C.F.R. § 42.63(c),
`and file an updated exhibit list pursuant to 37 C.F.R. § 42.63(e).
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`IPR2014-00483
`Patent 7,987,274 B2
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`FURTHER ORDERED that the case caption in IPR2014-00403 shall
`be changed to reflect the joined proceeding, according to the attachment.
`FURTHER ORDERED that all parties to the IPR2014-00403
`proceeding shall arrange for a conference call with the Board to discuss the
`extent of Petitioner’s participation in the ongoing IPR2014-00403 trial
`proceeding.
`
`For PETITIONER:
`Jeffrey P. Kushan
`Sidley Austin L.L.P.
`E-mail: jkushan@sidley.com
`
`Joseph A. Micallef
`Sidley Austin L.L.P.
`E-mail: jmicallef@sidley.com
`
`For PATENT OWNER:
`
`Joseph E. Palys
`Paul Hastings LLP
`E-mail: josephpalys@paulhastings.com
`
`Naveen Modi
`Paul Hastings LLP
`E-mail: naveenmodi@paulhastings.com
`
`Jason E. Stach
`Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
`E-mail: Jason.stach@finnegan.com
`
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`IPR2014-00483
`Patent 7,987,274 B2
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`
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`MICROSOFT CORPORATION and APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-004031
`Patent 7,987,274 B2
`____________
`
`
`
`1 Case IPR2014-00483 has been joined with this case.
`10
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