`
`Paper No.
`Filed: April 10, 2014
`
`
`Filed on behalf of: VirnetX Inc.
`By:
`Joseph E. Palys
`
`Naveen Modi
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
`Telephone: 571-203-2700
`Facsimile: 202-408-4400
`E-mail: joseph.palys@finnegan.com
`
` naveen.modi@finnegan.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`APPLE INC.
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2014-00486
`Patent 8,051,181
`
`
`
`
`
`
`
`
`
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`PATENT OWNER’S OPPOSITION TO APPLE’S MOTION FOR JOINDER
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`Case No. IPR2014-00486
`Patent Owner’s Opposition to Apple’s Motion for Joinder
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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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`I.
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`II.
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`III. STATEMENT OF FACTS .............................................................................. 2
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`IV. ARGUMENT ................................................................................................... 4
`
`A.
`
`B.
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`Joinder Involving Different Patents Is Statutorily Barred .................... 4
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`Joinder Will Significantly Increase the Complexity and
`Duration of the Microsoft IPR Proceedings and Prejudice
`VirnetX .................................................................................................. 6
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`C. Apple Will Not Be Prejudiced if the Board Denies Joinder ...............11
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`D.
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`Joinder of Apple’s Time-Barred Petitions Is Statutorily Barred ........12
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`E. Apple’s ’181 Proceedings Should Not Be Joined to Its Own
`’274 Proceedings .................................................................................15
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`V. CONCLUSION ..............................................................................................15
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`APPENDIX – RESPONSE TO APPLE’S STATEMENT OF MATERIAL FACTS
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`Dell, Inc. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00071, Paper No. 17 (July 29, 2013) ............................................ 12, 14
`
`Motionless Keyboard Co. v. Microsoft Corp.,
`486 F.3d 1376 (Fed. Cir. 2007) ............................................................................ 7
`
`Motorola Mobility LLC v. Softview LLC,
`IPR2013-00256, Paper No. 10 (June 20, 2013) .................................................... 6
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`NetApp, Inc. v. PersonalWeb Technologies, LLC
`IPR2013-00319, Paper No. 18 (July 22, 2013) ........................................ 8, 10-11
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`Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00386, Paper No. 16 (July 29, 2013) .................................................... 9
`
`Federal Statutes
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`35 U.S.C. § 112 .......................................................................................................... 8
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`35 U.S.C. § 311 .............................................................................................. 5, 12-14
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`35 U.S.C. § 312 .......................................................................................................... 4
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`35 U.S.C. § 315 .......................................................................................... 4, 5, 12-15
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`35 U.S.C. § 316 .......................................................................................................... 5
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`35 U.S.C. § 325 .......................................................................................................... 4
`
`Regulations
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`37 C.F.R. § 42.122 ..................................................................................................... 2
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`Other Authorities
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp
`(last visited Apr. 8, 2014) ..................................................................................... 4
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`INTRODUCTION
`Apple asks the Board to take the unprecedented step of joining inter partes
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`I.
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`review proceedings on different patents—a premature request that is statutorily
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`barred, would add new substantive issues and unnecessary complexity to the
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`proceedings, is prejudicial to VirnetX, and overlooks that Apple is already
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`pursuing invalidity challenges in the Office through inter partes reexamination and
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`in a district court litigation. Though Apple contends that joinder will allow for
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`“efficient[]” and “timely” resolution (Paper No. 3 at 1), the facts show otherwise.
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`Apple proposes combining four of its IPR petitions with two of Microsoft’s,
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`adding to Microsoft’s proceedings one new patent, twenty-nine new claims, six
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`additional prior art references, nineteen new grounds of unpatentability, three new
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`declarations totaling over 660 pages, and one new declarant. Accordingly, Patent
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`Owner respectfully requests that the Board deny Apple’s request to join its
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`IPR2014-00485 and -00486 of U.S. Patent No. 8,051,181 (“the ’181 patent”) and
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`its IPR2014-00483 and -004841 of U.S. Patent No. 7,987,274 (“the ’274 patent”)
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`with Microsoft’s IPR2014-00403 and -00404 of the ’274 patent.
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`1 Apple’s joinder requests are procedurally defective because Apple only filed
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`them in the ’181 proceedings and failed to file joinder requests in its ’274
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`proceedings. They are also defective to the extent they seek to join Microsoft’s
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`PRECISE RELIEF REQUESTED
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`II.
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`VirnetX requests that the Board deny Apple’s motion for joinder.
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`III. STATEMENT OF FACTS
`On November 1, 2011, VirnetX served Apple with a complaint alleging that
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`certain Apple products infringe ’181 patent claims 1, 2, 4-12, 17, 19, 21, 22, and
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`24-29. Ex. 2001. The litigation was stayed pending resolution of an International
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`Trade Commission case between VirnetX and Apple. The stay has since been
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`lifted and the litigation was consolidated with another case before the same court
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`involving the same parties and related patents—VirnetX Inc. v. Apple, Inc., No.
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`6:12-cv-855 (E.D. Tex. Nov. 6, 2012). The consolidated cases remain pending.
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`On March 28, 2012, Apple initiated inter partes reexamination 95/001,949
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`of all claims 1-29 of the ’181 patent (“the ’181 reexamination”). Most recently in
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`this reexamination, the Office issued a Right of Appeal Notice and VirnetX filed
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`its opening Appeal Brief on March 14, 2014.2
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`petitions on the ’274 patent to one another. “Joinder may be requested by a patent
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`owner or petitioner.” 37 C.F.R. § 42.122. Apple is neither a petitioner nor patent
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`owner in relation to the Microsoft proceedings, so it cannot request this joinder.
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`2 Prosecution was improperly closed, so VirnetX filed a petition to reopen
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`prosecution when it filed its appeal brief. It awaits further action by the Office.
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`2
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`In addition to the ’181 reexamination, Apple filed two requests for inter
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`partes review of the ’181 patent and two requests for inter partes review of the
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`’274 patent, while Microsoft filed two requests for inter partes review of the ’274
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`patent. Apple requests that the Board join all of these inter partes review
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`proceedings. Paper No. 3.
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`Apple filed its petitions for inter partes review of the ’181 patent on March
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`10, 2014, requesting cancellation of claims 1-29. The first of these two ’181 IPR
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`petitions (IPR2014-00485) proposes seven grounds of unpatentability based on
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`eight references, five of which are different from Microsoft’s asserted prior art
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`references. The second (IPR2014-00486) proposes an additional five grounds of
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`unpatentability based on four references, three of which are different from
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`Microsoft’s asserted prior art references. Apple also submitted two supporting
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`declarations totaling 472 pages with each petition. See Exs. 1011, 1029.
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`Apple filed its petitions for inter partes review of the ’274 patent on March
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`7, 2014, requesting cancellation of claims 1-5, 7, 8, 10, 12, 13, 15, 17, and 18.
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`Apple’s first IPR petition of the ’274 patent (IPR2014-00483) proposes six
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`grounds of unpatentability based on eight references, five of which are different
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`from Microsoft’s asserted prior art references. The second (IPR2014-00484)
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`proposes an additional eight grounds of unpatentability based on six references,
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`three of which are different from Microsoft’s asserted prior art references. Apple
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`also submitted two supporting declarations totaling 215 pages with each petition.
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`See IPR2014-00483, Exs. 1011, 1029.
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`Microsoft filed its petitions for inter partes review of the ’274 patent on
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`February 4, 2014. The first (IPR2014-00403) requests cancellation of claims 1-5,
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`7, 8, 10, 12, 13, 15, 17, and 18 and raises three grounds of unpatentability based on
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`three references. The second (IPR2014-00404) requests cancellation of claims 1-5,
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`7, 8, 10, 12, 15, 17, and 18 and raises an additional four grounds of unpatentability
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`based on three separate references. Each petition is accompanied by a 27-page
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`supporting declaration. See IPR2014-00403, Ex. 1011.
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`IV. ARGUMENT
`Joinder Involving Different Patents Is Statutorily Barred
`A.
`The Office has interpreted the joinder statutes to preclude Apple’s request to
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`join proceedings on different patents, explaining that “[o]nly joinder of like review
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`proceedings of the same patent is permitted. See 35 U.S.C. §§ 315(c) and
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`325(c).” http://www.uspto.gov/ip/boards/bpai/prps.jsp (last visited Apr. 8, 2014)
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`(emphasis added).
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`Apple takes a different view, contending that the joinder authority for IPRs
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`is distinct from that for post-grant review proceedings and allows joinder of IPR
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`proceedings on different patents. See Paper No. 3 at 8-9. But the statutory
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`language governing IPR proceedings is patent-specific, limiting each proceeding to
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`just one patent. IPR proceedings are begun with “a petition to institute an inter
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`partes review of the patent.” 35 U.S.C. § 311(a) (emphasis added); see also Ex.
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`2002, 157 Cong. Rec. S1375-76 (daily ed. Mar. 8, 2011) (repeatedly referring to
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`“the patent” in an IPR proceeding). Section 315(c)’s joinder discussion references
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`the creation of a single inter partes review, stating that “[i]f the Director institutes
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`an inter partes review, the Director, in his or her discretion, may join [a] party to
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`that inter partes review . . . .” 35 U.S.C. § 315(c) (emphasis added).
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`Accordingly, while joinder may involve multiple petitions for review of “a
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`patent,” the Director may only institute and join parties to an “inter partes review
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`of the patent.” See 35 U.S.C. §§ 311(a) (emphasis added), 315(c). This view is
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`consistent with the legislative history of the AIA, where Senator Kyl envisioned an
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`exemplary scenario for joinder as one in which “a party that files an identical
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`petition” (i.e., on the same patent) may be joined to another proceeding. Ex. 2002,
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`157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011). Allowing otherwise would
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`frustrate the Office’s mandate to issue a final determination “not later than 1 year
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`after the date” on which an IPR is instituted. 35 U.S.C. § 316(c)(11).
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`Adopting Apple’s interpretation of “the patent” in the AIA to encompass
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`different patents would also expand the scope of the § 315(b) bar. Section 315(b)
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`precludes institution of IPRs where the petition is filed more than one year after
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`service of “a complaint alleging infringement of the patent.” If “the patent”
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`encompasses any patent in a patent family, as Apple suggests, then each of Apple’s
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`pending IPR petitions is barred because VirnetX served Apple with a complaint
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`alleging infringement of patents in the same patent family more than one year
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`before it filed its IPR petitions. While this may not be the result Apple intended, it
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`is a necessary consequence of its interpretation of “the patent,” which should be
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`consistently applied throughout the AIA.
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`B.
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`Joinder Will Significantly Increase the Complexity and Duration
`of the Microsoft IPR Proceedings and Prejudice VirnetX
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`Even if the Board were statutorily permitted to join IPR proceedings on
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`different patents, the Board should decline to do so here given the number of issues
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`and their complexity. “In exercising its discretion to grant joinder, the Board
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`considers the impact of both substantive issues and procedural matters on the
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`proceedings, as well as other considerations.” Motorola Mobility LLC v. Softview
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`LLC, IPR2013-00256, Paper No. 10 at 4 (June 20, 2013). Apple focuses on a
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`handful of similarities between the ’181 and ’274 proceedings and then dubs the
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`entire proceedings “highly similar” (see Paper No. 3 at 11-12), but the focus is
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`more properly placed on the differences between the proceedings. Here, the
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`differences will significantly impact both substantive and procedural issues.
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`Substantively, joining Apple’s petitions to Microsoft’s would mean
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`complicating Microsoft’s already complex petitions by more than tripling the
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`number of claims at issue (from 13 to 42), nearly quadrupling the number of
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`grounds of rejection (from 7 to 26), and doubling the number of references at issue
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`(from 6 to 12). Procedurally, joinder will require the deposition of a new declarant
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`with 639 pages of new testimony. It will also add Apple as an additional party,
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`further complicating the proceedings at least by requiring coordination between
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`Apple and Microsoft to address the large number of issues without duplication.
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`Apple attempts to minimize these issues, but it cannot avoid that its request
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`will complicate matters beyond the point of any alleged efficiencies to be gained.
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`First, Apple misleadingly asserts that Patent Owner conceded the claims of the
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`’181 and ’274 patent are patentably indistinct by filing terminal disclaimers during
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`prosecution. Paper No. 3 at 9-11. It is well-accepted that terminal disclaimers are
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`not an admission that claims are patentably indistinct. See M.P.E.P. § 804.02
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`(citing Quad Envtl. Techs. Corp. v. Union Sanitary Dist., 946 F.2d 870, 874 (Fed.
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`Cir. 1991)); see also Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376,
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`1385 (Fed. Cir. 2007). Patent applicants often disagree with obviousness-type
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`double patenting rejections, but they nonetheless file terminal disclaimers because
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`it is an effective way to advance prosecution and often has little to no impact on
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`patent term, particularly if each patent in a family has essentially the same term
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`(twenty years from filing). Moreover, a terminal disclaimer cannot be used to
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`overcome a double patenting rejection when the claimed inventions are identical.
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`See M.P.E.P. § 804.02. VirnetX never “conceded” that the claims of the ’181 and
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`’274 patents are patentably indistinct, so the cornerstone of Apple’s argument is
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`without merit.
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`Apple next contends that more than tripling the number of claims at issue in
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`the Microsoft proceedings (from 13 to 42) will not impact the case because of the
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`“high degree of similarity” between the claims. See Paper No. 3 at 11-12. While
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`Apple again focuses on a handful of similarities, it overlooks the many differences.
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`Apple’s twenty-nine additional claims involve new claim terms and claim
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`construction issues (e.g., secure name, unsecured name, secure name service, and
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`secure communication link) not raised in Microsoft’s petitions. Apple also appears
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`to contend that at least some of the new terms it identifies suffer from a lack of
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`written description or enablement under 35 U.S.C. § 112. See Pet. at 7-8, 11.
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`The Board has recognized that introducing new claims, claim terms, and the
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`complications of claim construction weigh against joinder. In NetApp, Inc. v.
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`PersonalWeb Technologies, LLC, the Board denied joinder, finding that the
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`introduction of a single new claim “would raise substantive issues that are not
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`before the Board” because it contained new claim terms and the Petitioner
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`“raise[d] substantive issues that are related to lack of enablement and written
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`description . . . .” IPR2013-00319, Paper No. 18 at 5 (July 22, 2013). The new
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`claims, claim terms, and claim construction arguments Apple attempts to inject
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`into Microsoft’s petitions weigh heavily against joinder.
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`Apple similarly dismisses its proposed addition of six new prior art
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`references because the two new primary references are “familiar” to Patent Owner
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`and the four new secondary references are “limited.” See Paper No. 3 at 13-14.
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`However, Apple overlooks that these references result in nineteen new grounds of
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`rejection. To the extent Apple relies on the same references as Microsoft, even
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`Apple is forced to admit that due to the new patent and “different claims” in its
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`petitions, it offers “different explanations” as to unpatentability. See id. at 13.3
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`The new unpatentability analyses required to address all of the new
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`references and grounds of rejection introduced by Apple will have a significant
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`impact on the proceeding. Even in the instance where a Patent Owner may have
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`been aware of newly asserted prior art references, the Board has weighed their
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`addition against joinder. See Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
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`IPR2013-00386, Paper No. 16 at 7 (July 29, 2013).
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`3 Apple incorrectly contends its ’181 petitions “rely on the same four
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`primary references” as the ’274 petitions. Two of these primary references (“RFC
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`2543” and “Beser”) are, in fact, new references.
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`Next, Apple argues that briefing and discovery would be simplified because
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`“only one expert witness per petitioner has provided testimony.” See Paper No. 3
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`at 14-15. In fact, Apple submitted three different declarations from two witnesses.
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`While one of Apple’s witnesses was also presented by Microsoft, Apple’s
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`remaining witness submitted 639 pages of testimony. Far from promoting the
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`“interest[s] of efficiency” (Paper No. 3 at 14), discovery will be greatly expanded.
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`Additionally, Apple’s suggestion that joint comments by Microsoft and Apple be
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`provided on common grounds and separate comments where Apple and Microsoft
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`diverge fails to meaningfully curtail briefing. As discussed above, Apple proposes
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`only seven grounds that overlap with Microsoft’s petitions—the remaining
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`nineteen grounds Apple proposes would require additional, separate briefing.
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`Apple also contends that adding 29 new claims and 19 new grounds of
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`rejection will have no impact on the trial schedule given its timely motion for
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`joinder. See Paper No. 3 at 14. But joinder on the scale that Apple proposes—
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`involving a wholesale expansion of the issues and claims involved in the Microsoft
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`petitions—without any extension of the schedule would prejudice VirnetX. The
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`additional patent, claims, references, grounds for rejection, and declarations would
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`not only justify, but virtually require an extension of time to ensure sufficient time
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`to address the new issues. The prejudice is compounded when one considers that
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`Apple and Microsoft maintain at least seven other IPR petitions against VirnetX’s
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`patents4 (i.e., IPR2014-00237, -00238, -00401, -00405, -00481, -00482,
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`and -00558). See NetApp, IPR2013-00319, Paper No. 18 at 7. Thus, the impact to
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`the schedule would be significant.
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`Finally, Apple proposes combining six proceedings where Apple and
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`Microsoft would enjoy expanded page limits. Paper No. 3 at 14-15. Meanwhile,
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`VirnetX, which would ordinarily have 360 total pages for its six Patent Owner
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`responses, would apparently be limited to 60 total pages in the combined
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`proceedings. This constraint is so restrictive that it would be tantamount to a
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`deprivation of due process rights by providing an inadequate opportunity to
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`address the many issues raised in the six proceedings. It provides yet another
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`reason why the Board should reject Apple’s proposal.
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`C. Apple Will Not Be Prejudiced if the Board Denies Joinder
`Apple faces no prejudice if the Board declines to join its petitions of the
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`’181 and ’274 patents to Microsoft’s ’274 petitions. Apple already has an inter
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`partes reexamination challenge to the ’181 patent pending before the Office. That
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`reexamination addresses every claim of the ’181 patent and has references that
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`overlap with those in Apple’s IPR petitions. In addition, Apple is separately
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`4 VirnetX further maintains that Apple is an unnamed real party-in-interest
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`and privy in seven petitions filed by RPX (i.e., IPR2014-00171 through -00177).
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`challenging the ’181 patent in district court, providing Apple with two vehicles for
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`challenging the ’181 patent. It does not need and is not entitled to a third. Finally,
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`even if joinder is denied, Apple may continue to pursue its petitions against the
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`’274 patent. Denying the motion for joinder, therefore, will not prejudice Apple.
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`Joinder of Apple’s Time-Barred Petitions Is Statutorily Barred
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`D.
`Institution of Apple IPRs is barred by 35 U.S.C. § 315(b) because Apple was
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`served with a complaint more than one year before it filed its IPRs. See supra
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`Section III. Joinder is only permitted if the Board first determines that Apple’s
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`petition warrants institution. 35 U.S.C. § 315(c) (“the Director, in his or her
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`discretion, may join . . . any person who properly files a petition under section 311
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`that the Director . . . determines warrants the institution of an inter partes review
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`under section 314”). Because Apple’s untimeliness precludes institution under
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`§ 315(b), it also precludes joinder under § 315(c). The Board, however, has
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`interpreted the last sentence of § 315(b) to mean that “the one-year time bar does
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`not apply” if a party filing a time-barred petition requests joinder. See IPR2013-
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`00071, Paper 17 at 5. VirnetX respectfully disagrees with this interpretation.
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`The last sentence of 35 U.S.C. § 315(b) states that “[t]he time limitation set
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`forth in the preceding sentence shall not apply to a request for joinder under
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`subsection (c).” The AIA, and indeed § 315 itself, distinguishes between petitions
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`for inter partes review and requests for joinder. The last sentence of § 315(b),
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`however, provides an exception to the one-year bar only for a request for joinder,
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`not for a petition for inter partes review. Thus, the one-year bar continues to apply
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`to all petitions, even in the joinder context. The request-for-joinder exception of
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`§ 315(b) applies only when two timely petitions are filed, but the request for
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`joinder is made more than a year after being served with a complaint.
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`This reading makes sense because joinder is not available until after an IPR
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`has been instituted. 35 U.S.C. § 315(c). Since it can take up to six months for an
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`institution decision, it is likely that many requests for joinder will occur more than
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`one year after being served with a complaint. The statutory language addresses
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`this concern. It does not, however, provide a backdoor for time-barred petitions to
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`be instituted through joinder. Such a view is contrary to Congress’s intent to avoid
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`serial harassment of patent owners, which particularly applies to parties like Apple
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`who have already had ample opportunity to present validity challenges in both
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`district court and reexamination. Ex. 2003 at 72 (a goal of the inter partes review
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`laws is to “prevent[ ] the serial harassment of patent holders.”).
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`Permitting untimely petitions to be instituted through joinder is also contrary
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`to the joinder statute. Under 35 U.S.C. § 315(c), “the Director, in his or her
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`discretion, may join as a party to that inter partes review any person who properly
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`files a petition under section 311.” (Emphasis added.) Senator Kyl addressed the
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`meaning of the term “properly files,” stating that “time deadlines for filing
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`petitions must be complied with in all cases.” Ex. 2004, 154 Cong. Rec. S9988
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`(daily ed. Sep. 27, 2008). Section 315(c) is consistent with this view because it
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`requires compliance with § 311, which in turn requires compliance with the other
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`provisions of Title 35, Chapter 31 of the U.S. Code, including the timeliness
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`provisions. 35 U.S.C. § 311 (“Subject to the provisions of this chapter, a person
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`who is not the owner of a patent may file with the Office a petition to institute an
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`inter partes review of the patent.”).
`
`The Board has recognized that § 311 limits joinder under § 315(c), but
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`disregards the portion of § 311 that also requires compliance with other provisions
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`of Chapter 31. Dell, Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00071, Paper
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`No. 17 at 5 (July 29, 2013) (“Section 315(c) refers only to ‘section 311,’ not to any
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`other portions of the statute or portions of the statute referenced in Section 311.”).
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`This interpretation is incorrect, as it disregards the plain statutory language. The
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`Board’s interpretation would also mean that other provisions of Chapter 31 do not
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`apply to petitions when joinder is requested, such as the petition requirements of
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`§ 312(a). The statute does not permit this, so the Board’s interpretation is
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`incorrect. The plain language of §§ 315(b) and (c) prohibit joinder.
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`14
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`Patent Owner’s Opposition to Apple’s Motion for Joinder
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`E. Apple’s ’181 Proceedings Should Not Be Joined to Its Own ’274
`Proceedings
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`While the Board should decline joinder on each of the above grounds, the
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`Board should also decline to join Apple’s ’181 proceedings with its own ’274
`
`proceedings. If this type of joinder were permissible, it would allow a party barred
`
`under Section 315(b) to avoid the bar by first seeking inter partes review of a
`
`patent on which it is not barred and then seeking joinder of an inter partes review
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`on a patent on which it is barred. Petitioners could easily subvert the Section
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`315(b) bar for any patent having a family member that was not asserted more than
`
`one year before the IPR petition was filed. There is no indication that Congress
`
`intended to provide this loophole, and this loophole does not exist under a proper
`
`interpretation of the AIA. (See supra Section IV.D.) Apple—and subsequent
`
`petitioners—should not be allowed to manipulate these proceedings in this
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`unintended and statutorily-prohibited manner.
`
`V. CONCLUSION
`For these reasons, the Board should deny Apple’s motion for joinder.
`
`Respectfully submitted,
`
` /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
`Counsel for VirnetX Inc.
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`15
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`Case No. IPR2014-00486
`Patent Owner’s Opposition to Apple’s Motion for Joinder
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`APPENDIX
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`RESPONSE TO APPLE’S STATEMENT OF MATERIAL FACTS
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`
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`Most of Apple’s “material facts” are legally immaterial to the joinder issues
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`at hand. The responses below are not meant to imply that VirnetX agrees that any
`
`statement is “material.”
`
`1.
`
`U.S. Patent No. 8,051,181 (the ’181 patent) issued on November 1,
`
`2011 from U.S. Application No. 11/679,416 (the ’416 application). Ex. 1025.
`
`Response: Admitted.
`
`2.
`
`U.S. Patent No. 7,987,274 (the ’274 patent) issued on July 26, 2011
`
`from U.S. Application No. 11/839,987 (the ’987 application). Ex. 1027.
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`Response: Admitted.
`
`3.
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`U.S. Patent No. 7,188,180 (the ’180 patent) issued on March 6, 2007
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`from U.S. Application No. 10/702,486 (the ’486 application). Ex. 1001.
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`Response: Admitted.
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`4.
`
`The ’181 and ’274 patents each claim benefit, inter alia, to the ’180
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`patent (i.e., to the ’486 application), and to earlier filed applications to which the
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`’180 patent claims benefit, including, inter alia, U.S. Application No. 09/504,783
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`filed on February 15, 2000. See Exs. 1001, 1025 & 1027.
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`Response: Admitted.
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`5.
`
`The ’180, ’274 and ’181 patents have a nearly identical disclosure. Id.
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`Case No. IPR2014-00486
`Patent Owner’s Opposition to Apple’s Motion for Joinder
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`Response: Denied to the extent that the patent disclosures also include
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`the claims, which are different in each patent.
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`6.
`
`The ’181 patent is terminally disclaimed over the ’274 patent. Ex.
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`1026 at 797, 1045.
`
`Response: Admitted that VirnetX filed a terminal disclaimer in the
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`’416 application over the ’987 application. Ex. 1026 at 795, 1045.
`
`7.
`
`The ’181 patent is terminally disclaimed over the ’180 patent. Ex.
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`1026 at 795, 1045.
`
`Response: Admitted that VirnetX filed a terminal disclaimer in the
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`’416 application over the ’180 patent. Ex. 1026 at 797, 1045.
`
`8.
`
`The ’274 patent is terminally disclaimed over the ’181 patent. Ex.
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`1028 at 634, 2741.
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`Response: Admitted that VirnetX filed a terminal disclaimer in the
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`’987 application over the ’416 application. Ex. 1028 at 634, 2741.
`
`9.
`
`On April 8, 2010, claims 2, 24, 26 and 28-30 of the ’416 application
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`(later issuing as claims 2, 24, 26, 28, 29 and 1, respectively of the ’181 patent)
`
`were rejected for obviousness-type double patenting over claim 1 of the ’987
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`application (which later issued as claim 1 of the ’274 patent). Ex. 1026 at 783-785.
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`2
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`Case No. IPR2014-00486
`Patent Owner’s Opposition to Apple’s Motion for Joinder
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`Response: Admitted with the clarification that the claims were rejected
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`on the basis of provisional non-statutory obviousness-type double
`
`patenting.
`
`10. Also on April 8, 2010, claims 2, 24, 26 and 28-30 of the ’416
`
`application (later issuing as claims 2, 24, 26, 28, 29 and 1, respectively of the ’181
`
`patent) were rejected for obviousness-type double patenting over claim 1 of the
`
`’180 patent. Ex. 1026 at 783-785.
`
`Response: Admitted with the clarification that the claims were rejected
`
`on the basis of non-statutory obviousness-type double patenting.
`
`11. On October 8, 2010, in its response to the two double patenting
`
`rejections, Patent Owner did not dispute the merits of either finding of
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`obviousness-type double patenting. Instead, Patent Owner argued the rejections
`
`should be withdrawn because it had terminally disclaimed the ’181 patent over
`
`each of the ’274 and ’180 patents. Ex. 1026 at 799, 805-816.
`
`Response: Admitted that on October 8, 2010, Patent Owner stated that
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`it “submits herewith [] terminal disclaimer[s] to overcome” the non-
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`statutory obviousness-type double patenting rejections of claims 2, 24,
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`26, and 28-30 of the ’416 application and further stated that “[t]he
`
`absence of a reply to a specific rejection, issue, or comment does not
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`3
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`Patent Owner’s Opposition to Apple’s Motion for Joinder
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`signify agreement with or concession of that rejection, issue, or
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`comment.” Ex. 1026 at 815. Otherwise, denied.
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`12. Also on October 8, 2010, Patent Owner filed terminal disclaimers in
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`the ’181 patent relative to each of the ’180 and ’274 patents. Ex. 1026 at 795
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`(regarding the ’180 patent) and at 797 (regarding the ’987 application later issued
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`as the ’274 patent). The terminal discl
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