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`Paper No. 9
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION INTERNATIONAL
`CORPORATION,
`Patent Owner
`
`Patent No. 8,051,181
`Issued: November 1, 2011
`Filed: February 27, 2007
`Inventors: Victor Larson, et al.
`Title: Method for establishing secure communication link between computers of
`virtual private network
`____________________
`
`Inter Partes Review No. IPR2014-00485
`__________________________________________________________________
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`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
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`Petitioner Reply on Joinder in IPR2014-00485
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`I.
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`ARGUMENT
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`In its opposition, Patent Owner improperly argues the Board lacks the
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`statutory authority to join petitions for inter partes review (IPR) filed by different
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`parties and concerning different patents. See Opp. at 5-6. The plain language of
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`35 U.S.C. § 315(c) refutes that theory. See Paper No. 3 (“Mot.”) at 8-9. As
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`Petitioner explained, the statute uses different language to define the Board’s
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`authority to join IPRs relative to that which governs joinder of post-grant reviews –
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`only the latter (§ 325(c)) restricts joinder to petitions “filed against the same
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`patent.” Because Congress chose to cast the joinder authority differently in these
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`closely analogous situations, the only reasonable statutory interpretation of
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`§ 315(c) is that it does not bar joinder of petitions involving different patents. See
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`Keene Corp. v. United States, 508 U.S. 200, 208 (1993) (“where Congress includes
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`particular language in one section of a statute but omits it in another . . . , it is
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`generally presumed that Congress acts intentionally and purposely in the disparate
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`inclusion or exclusion.”). And while Patent Owner cites Senator Kyl’s
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`observations on one example of joinder (Opp. at 5), that observation plainly does
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`not limit the Board’s statutory authority to join inter partes review proceedings, as
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`even Patent Owner concedes. Id. (referring to the Kyl scenario as “exemplary”).
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`In this case, the merits compel joinder because Patent Owner cannot dispute
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`that the claims in each of the ‘181 and ‘274 patents are unpatentable over claims in
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`- 1 -
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`
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`Petitioner Reply on Joinder in IPR2014-00485
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`the other. A finding by the Board that the claims in either of the ‘181 or ‘274
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`patents are unpatentable thus compels finding the claims in the other patent
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`unpatentable over the same prior art.
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`Contrary to Patent Owner’s assertions (Opp. at 7-8), Petitioner is not
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`claiming this conclusion results simply from the filing of terminal disclaimers in
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`each of the ‘181 and ‘274 patents.1 Instead, as Petitioner explained and Patent
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`Owner did not dispute, the file histories (see, e.g., Ex. 1028 at 632; Ex. 1026 at
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`815) show that Patent Owner acquiesced during prosecution to the Office’s
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`findings that claims in each of the ‘181 and ‘274 patents were unpatentable over
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`claims in the other. Mot. at 3-7, 9-11. Specifically, in response to the rejections,
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`Patent Owner did not identify a single reason why any rejected claim was not
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`obvious over claims in the other patent, but simply argued that the terminal
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`disclasimers overcame the double patenting rejections. Patent Owner’s own
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`conduct during examination of each of the ‘181 and ‘274 patents has created the
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`unique relationship between these sets of patent claims that justifies joinder. See,
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`e.g., Ex Parte Janice Au-Young et al., APL 2003-1817, 2004 WL 4978993
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`(B.P.A.I. Aug. 31, 2004) (“Appellants have acquiesced in the merits of these
`
`1
`Patent Owner accuses Petitioner of “misleading” the Board about Patent
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`Owner’s position on double patenting of the ‘181 and ‘274 patent claims (Opp. at
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`7), but cites nothing from its file wrappers to support this contention.
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`- 2 -
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`
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`Petitioner Reply on Joinder in IPR2014-00485
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`rejections by offering to file appropriate terminal disclaimers”); Ex Parte Abdul
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`Gaffar et al., 1995-4903, 1995 WL 1774381 (B.P.A.I. Jan. 1, 1995) (same).
`
`In its opposition, Patent Owner does not seriously dispute that the claims of
`
`the ‘181 and ‘274 patents are patentably indistinct. It fails to identify any unique
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`patentability issues associated with one but not the other set of patent claims.
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`Instead, Patent Owner mechanically tallies the number of grounds, claims, and
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`pages of expert reports in Petitioner’s proceedings relative to those in the
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`Microsoft petitions. Patent Owner’s alleged “burden” concerns are entirely
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`speculative and easily addressed.
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`First, this is not a case where the Board has already instituted trial, so
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`adding new grounds would not prejudice the Board’s ability to complete the
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`proceedings within a year of institution. The Board’s decision in IPR2013-00319
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`(Paper 18) cited by Patent Owner is thus inapposite – the primary concern
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`motivating the Board’s decision there was the impact on an established trial
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`schedule. Because these proceedings are at a very early stage – before Patent
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`Owner has even filed its preliminary responses – there is no prejudice.
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`Second, Patent Owner mischaracterizes the volume of additional work
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`implicated by joinder, simplistically describing it as a “wholesale” expansion in the
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`number claims and grounds that have to be addressed. But this ignores both the
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`substance and legal relationship of the claims in the two patents. For example, if
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`- 3 -
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`Petitioner Reply on Joinder in IPR2014-00485
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`the Board finds the ‘274 claims unpatentable over certain prior art, that same prior
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`art necessarily will render the broader ‘181 patent claims unpatentable (and Patent
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`Owner is barred from arguing otherwise). In its opposition, Patent Owner avoids
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`discussing the merits of its patents, and for good reason – there are no distinctions
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`of patentable significance between the two sets of claims. Notably, Patent Owner
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`presents no response to Petitioner’s showings of the similarity of the independent
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`and dependent claims of the ‘181 and ‘274 patents. See Mot. at 6-8 (¶¶ 18-20).
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`Third, the Board has latitude to structure the joined proceedings to mitigate
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`any burdens on it or the parties. For example, in addition to the proposals in
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`Apple’s Motion, the Board could establish two proceedings, one involving
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`IPR2014-00403, -00483 and -00485, and the other involving IPR2014-00404, -
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`00484 and -00486. That would result in two trials, each focused on two primary
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`references.2 Even if all six proceedings are joined together, the volume of issues to
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`be addressed is unexceptional relative to other IPRs. Patent Owner’s page limit
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`concerns are similarly unsupported – it may file a 60-page preliminary response to
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`each petition (thereby resolving its alleged “claim construction” concerns), and can
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`request additional pages for its oppositions if it has a legitimate justification.
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`2
`Patent Owner claims the six petitions raise grounds based on more than four
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`primary references. This is simply incorrect. See Paper No. 3 at 12. References
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`used to support obviousness grounds are secondary references.
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`- 4 -
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`
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`Petitioner Reply on Joinder in IPR2014-00485
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`Patent Owner’s remaining arguments are irrelevant to joinder. First, it
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`argues Apple will not be prejudiced if joinder is denied because the ‘181 patent is
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`undergoing inter partes reexamination. Opp. at 11-12. Patent Owner, however, is
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`doing everything in its power to delay that proceeding to prevent its conclusion
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`before trial. Indeed, Petitioner is turning to the IPR system for the reason it was
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`designed - as an antidote to the inter partes reexamination system’s susceptibility
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`to these types of delay tactics. Second, it argues Apple’s ‘181 petitions are barred
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`under § 315(b). This ignores the explicit exemption in § 315(b) for petitions filed
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`with a joinder motion. These arguments also ignore the Board’s broad discretion
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`under § 315(d) to conduct multiple proceedings as it sees fit. Finally, Patent
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`Owner argues Apple is precluded from joining its ‘181 petitions to its own ’274
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`petitions, claiming that allowing this would subvert § 315(b). Patent Owner cites
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`no authority for this proposition, and the real travesty would be to allow Patent
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`Owner to shield its broader ‘181 claims after its ‘274 claims are held unpatentable.
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`No public policy justifies shielding these unpatentable claims from challenge.
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`II. Conclusion
`The factors relevant to joinder strongly support joining IPR2014-00485 and
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`-00486 to IPR2014-00483 and -00484 and IPR2014-00403 and -00404, and
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`consolidating the schedule of these six proceedings. Petitioner requests its joinder
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`motion be granted.
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`- 5 -
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`
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`Petitioner Reply on Joinder in IPR2014-00485
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`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan (Reg No. 43,401)
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`
`
`
`
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`
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`Dated: May 12, 2014
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`Petitioner Reply on Joinder in IPR2014-00485
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 12th day of May 2014, a copy of this Petitioner’s
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`Reply in Support of Its Motion for Joinder, has been served in its entirety by e-mail
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`on the following counsel of record for patent owner:
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`Joseph E. Palys
`Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
`Phone: (571) 203-2700
`Fax: (202) 408-4400
`E-mail: joseph.palys@finnegan.com
`
`Naveen Modi
`Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4065
`Facsimile: 202-408-4400
`E-mail: naveen.modi@finnegan.com
`
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`Dated:
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`May 12, 2014
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`
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`Respectfully submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`
`
`
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