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 IPR2014-00484
`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
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00484
`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
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00484
`Patent 7,987,274 B2
`
`BACKGROUND
`I.
`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, 15, and 17.
`Petitioner relies on the following prior art:
`
`US 6,225,993 B1 (Lindblad) May 1, 2001
`
`US 8,200,837 B1 (Bhatti)
`June 12, 2012
`US 6,496,867 B1 (Beser)
`December 17, 2002
`
`Takahiro Kiuchi and Shigekoto Kaihara, “C-HTTP – The
`Development of a Secure, Closed HTTP-based Network on the Internet,”
`Proceedings of the Symposium on Network and Distributed System
`Security, IEEE, 1996 (Ex. 1004, “Kiuchi”).
`
`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”).
`
`
`
`(Ex. 1009)
`(Ex. 1010)
`(Ex. 1031)
`
`2
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`IPR2014-00484
`Patent 7,987,274 B2
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`
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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”).
`
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 102 and/or § 103 based on the following specific grounds (Pet. 3, 17-
`57):
`
`
`
`
`Reference(s)
`
`Kiuchi
`
`Kiuchi and Lindblad
`Kiuchi and Bhatti
`
`Kiuchi, Bhatti and Lindblad
`Beser
`
`Beser and RFC 2401
`
`Beser and Kiuchi
`
`Basis
`
`§ 102
`
`§ 103
`§ 103
`
`§ 103
`§ 102
`
`§ 103
`
`§ 103
`
`Claims challenged
`
`1–4, 7, 8, 10, 12, 15, and
`17
`5
`1–4, 7, 8, 10, 12, 15, and
`17
`5
`1–5, 7–8, 10, 12–13, 15,
`and 17-18
`1–5, 7–8, 10, 12–13, 15,
`and 17–18
`1–5, 7–8, 10, 12–13, 15,
`and 17–18
`17
`
`§ 103
`
`Beser and RFC 2543
`
`See id.
`
`Related District Court Proceeding and Inter Partes Reviews
`B.
`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. 2. The ’274 Patent also
`is challenged in Cases IPR2014-00403, IPR2014-00404 and IPR2014-00483.
`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
`
`3
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`IPR2014-00484
`Patent 7,987,274 B2
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`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.
`
`The ’274 Patent
`C.
`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 IPR2014-00404
`(PTAB July 31, 2014) (Paper 13) (“the ’404 Decision”), including the description
`of the ’274 Patent in the ’404 Decision at 3.
`
`Illustrative Claim
`D.
`Claim 1, the sole independent claims, 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
`sending an access request message from the first network
`device to the secure network address using a virtual private network
`communication link.
`
`
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`4
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`IPR2014-00484
`Patent 7,987,274 B2
`
`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 ’404 IPR. For purposes of this Decision, the Board
`adopts and relies upon the claim constructions outlined in the ’404 Decision at 4–9.
`
`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. 9. 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 10–11. Patent
`Owner states that the Petitioner fails to articulate a meaningful distinction in terms
`of relative strengths and weaknesses with respect to the 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 ’404 proceeding. Further, Petitioner presents
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`5
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`IPR2014-00484
`Patent 7,987,274 B2
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`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 ’404 trial proceeding for those
`grounds that are present in both this Petition and the ’404 proceeding but denies
`the remaining grounds as redundant to those already instituted in the ’403 and ’404
`trial proceedings.
`
`Kiuchi Challenges
`C.
`
`Petitioner alleges that Kiuchi anticipates claims1–4, 7, 8, 10, 12, 15, and 17
`
`of the ’274 patent. Petitioner further alleges that claims 1–4, 7, 8, 10, 12, 15, and
`17 are obvious over the combination of Kiuchi and Bhatti and that claim 5 was
`obvious over Kiuchi in light of Lindblad and also obvious over the combination of
`Kiuchi, Bhatti and Lindblad.1
`
`Petitioner and Patent Owner present contentions regarding the Kiuchi
`challenges that are identical to those presented in the ’404 trial proceeding. We
`incorporate our previous analysis regarding the three asserted grounds of
`unpatentability. ’404 Decision at 12-17. Based on the record presented, we
`conclude that Petitioner has demonstrated a reasonable likelihood of prevailing on
`the Kiuchi challenges asserted in the Petition.
`
`
`
`1 Petitioner alleges that certain claims are obvious over the combination of Beser
`and Kiuchi. This challenge is considered one of the “Beser challenges” discussed
`in Section II. D.
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`6
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`IPR2014-00484
`Patent 7,987,274 B2
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`Beser Challenges
`D.
`
`Petitioner alleges that Beser anticipates claims 1–5, 7–8, 10, 12–13, 15, and
`
`17–18 of the ’274 patent. Petitioner also alleges that Beser in combination with
`RFC 2401 or Beser in combination with Kiuchi renders obvious claims 1–5, 7–8,
`10, 12–13, 15, and 17–18. Additionally, Petitioner represents that Beser in
`combination with FRC 2543 renders obvious claim 17.
`
`Patent Owner contends that consideration of redundant grounds, such as
`those presented in the Beser challenges identified above, place a significant burden
`on the patent owner, and cause unnecessary delay. We agree. The Beser
`challenges are directed to the many of the same claims that are the subject of the
`Kiuchi challenges. Furthermore, the Beser challenged claims are already the
`subject of trial proceedings, IPRs ’403 and’404. Petitioner does not attempt to
`explain why the additional Beser challenges it proposes should be instituted when
`taken in light of the Petition’s Kiuchi challenges and further in view of the already
`instituted proceedings. Accordingly, we limit our institution to those grounds that
`are already present in the ’404 trial proceeding: the Kiuchi grounds discussed
`above.
`
`III. CONCLUSION
`We institute an inter partes review of claims 1–4, 7, 8, 10, 12, 15, and 17
`
`under 35 U.S.C. § 102 as anticipated by Kiuchi; claims 1–4, 7, 8, 10, 12, 15, and
`17 under 35 U.S.C. § 103 as obvious over the combination of Kiuchi and Bhatti;
`claim 5 under 35 U.S.C. § 103 as obvious over Kiuchi in light of Lindblad; and,
`claim 5 under 35 U.S.C. § 103 as obvious over the combination of Kiuchi, Bhatti
`and Lindblad. We do not institute review as to claims 5, 13, and 18 as these claims
`are already the subject of the IPR ’403 trial proceeding.
`
`7
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`IPR2014-00484
`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, 15, and 17;
`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 1–4, 7, 8, 10, 12, 15, and 17 under 35 U.S.C. § 102 as anticipated by
`Kiuchi; claims 1–4, 7, 8, 10, 12, 15, and 17 35 U.S.C. § 103 as obvious over the
`combination of Kiuchi and Bhatti; claim 5 under 35 U.S.C. § 103 as obvious over
`Kiuchi in light of Lindblad; and, claim 5 under 35 U.S.C. § 103 as obvious over
`the combination of Kiuchi, Bhatti and Lindblad.
`
`FURTHER ORDERED that the instant proceeding is joined with IPR2014-
`00404 pursuant to 35 U.S.C. § 315(c).
`
`FURTHER ORDERED that, in light of the joinder of this proceeding with
`the IPR2014-00404 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-
`00404.
`
`FURTHER ORDERED that Petitioner and Patent Owner shall within five
`business days refile those exhibits not already appearing in IPR2014-00404 using
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`8
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`IPR2014-00484
`Patent 7,987,274 B2
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`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).
`
`FURTHER ORDERED that the case caption in IPR2014-00404 shall be
`changed to reflect the joined proceeding, according to the attachment.
`
`FURTHER ORDERED that all parties to the IPR2014-00404 proceeding
`shall arrange for a conference call with the Board to discuss the extent of
`Petitioner’s participation in the ongoing IPR2014-00404 trial proceeding.
`
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`9
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`IPR2014-00484
`Patent 7,987,274 B2
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`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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`10
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`IPR2014-00484
`Patent 7,987,274 B2
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`MICROSOFT CORPORATION and APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-004042
`Patent 7,987,274 B2
`____________
`
`
`
`2 Case IPR2014-00483 has been joined with this case.
`11
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