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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`MICROSOFT CORPORATION,
`Petitioner
`
`v.
`
`VIRNETX, INC.,
`Patent Owner
`
`____________________________________
`
`U.S. Patent No. 6,502,135
`
`(Trial No. _____________)
`
`____________________________________
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`
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND
`37 C.F.R. § 42.122(b)
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-
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`
`
`
`
`____________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________
`
`MICROSOFT CORPORATION,
`Petitioner
`
`v.
`
`VIRNETX, INC.,
`Patent Owner
`
`____________________________________
`
`U.S. Patent No. 6,502,135
`
`(Trial No. _____________)
`
`____________________________________
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND
`37 C.F.R. § 42.122(b)
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-
`
`
`
`
`
`
`Attorney Docket No. 38868-0003IP1
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`IPR of U.S. Patent No. 6,502,135
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`TABLE OF CONTENTS
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`STATEMENT OF RELIEF REQUESTED ..................................................................................... 2
`I.
`BACKGROUND AND RELATED PROCEEDINGS ................................................................. 4
`II.
`THE BOARD HAS DISCRETION TO JOIN THE INSTANT IPR WITH THE RPX IPR
`III.
`UPON ITS INSTITUTION ........................................................................................................................ 6
`THE BOARD SHOULD EXERCISE ITS DISCRETION BY GRANTING JOINDER
`IV.
`UNDER THE PRESENT CIRCUMSTANCES ....................................................................................... 7
`A. The grounds of unpatentability raised in Microsoft’s Petition are a subset of those at issue in
`the RPX IPR ............................................................................................................................................ 7
`B. Joinder is appropriate .................................................................................................................... 8
`C. Joinder will not affect timely completion of the RPX IPR .......................................................... 9
`D. Briefing and discovery can be simplified .................................................................................... 10
`V. CONCLUSION ................................................................................................................................. 11
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`1
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`I.
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`Attorney Docket No. 38868-0003IP1
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`IPR of U.S. Patent No. 6,502,135
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`STATEMENT OF RELIEF REQUESTED
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`Microsoft Corporation (“Microsoft”) submits concurrently herewith a
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`Petition for inter partes review of claims 1, 3, 4, 7, 8, 10, 12, and 13 of U.S. Patent
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`No. 6,502,135 (“the ‘135 patent”) (“Petition”). The Petition is being filed within
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`one year of service by VirnetX, Inc. (“VirnetX”) of a complaint against Microsoft
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`alleging infringement of the ‘135 Patent.1 As such, Microsoft respectfully submits
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`that, for at least the reasons outlined in the Petition, 35 U.S.C. § 315(b) is
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`inapplicable and does not bar institution of the inter partes review of the ‘135
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`patent that is requested in Microsoft’s Petition.
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`1 The ’135 patent is the subject of Civ. Act. No. 6:13-cv-00351-LED (E.D. Tex),
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`which was filed April 22, 2013 (“the 2013 VirnetX litigation”). The complaint in
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`the 2013 VirnetX litigation was served on April 23, 2013. VirnetX has also
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`asserted the ‘135 patent against Microsoft in two prior instances: VirnetX, Inc. v.
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`Microsft Corporation (Case No. 6:07-cv-80 (E.D. Tex.), filed February 2007, and
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`VirnetX, Inc. v. Microsoft (Case No. 6:10-cv-94 (E.D. Tex.), filed March 2010.
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`These prior litigations were dismissed pursuant to a settlement agreement that
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`expressly preserved Microsoft’s ability to later challenge the validity of the
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`patents-in-suit.
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`2
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`Attorney Docket No. 38868-0003IP1
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`IPR of U.S. Patent No. 6,502,135
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`If, however, the Board decides that 35 U.S.C. § 315(b) is applicable and bars
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`Microsoft from instituting an inter partes review of the ‘135 patent, Microsoft
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`moves for joinder, pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), with
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`respect to the pending inter partes review designated as IPR2014-00171 (“the RPX
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`IPR”) and requested by RPX Corporation (“RPX”), upon institution of the RPX
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`IPR.
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`In accordance with the Board’s Representative Order identifying matters to
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`be addressed in a motion for joinder (IPR2013-00004, Paper No. 15)2, Microsoft
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`submits that: (1) joinder is appropriate because it will promote efficient
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`determination of the validity/invalidity of the ‘135 patent without prejudice to the
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`existing parties; (2) the grounds of unpatentability raised in Microsoft’s Petition
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`are a subset of those at issue in the RPX IPR; (3) joinder would not affect the
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`timely completion of that proceeding; and (4) Microsoft is willing to accept
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`reasonable restrictions on briefing and discovery that will minimize the burden of
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`2 A motion for joinder should: (1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial
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`schedule for the existing review; and (4) address specifically how briefing
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`and discovery may be simplified. See Kyocera Corporation v. Softview LLC,
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`IPR2013-00004, Paper No. 15 at 4 (April 24, 2013).
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`3
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`Attorney Docket No. 38868-0003IP1
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`IPR of U.S. Patent No. 6,502,135
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`joinder on the Board and on the parties. Moreover, absent joinder, Microsoft’s
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`interests will not be fully and fairly represented in the RPX IPR.
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`Accordingly, if the Board declines to institute the inter partes review of the
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`‘135 patent requested in the attached Petition, Microsoft respectfully asks the
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`Board to grant Microsoft joinder.
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`II. BACKGROUND AND RELATED PROCEEDINGS
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`VirnetX has asserted varying sets of claims of the ‘135 patent against
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`various defendants in numerous law suits.3 Microsoft has been targeted in three (3)
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`of those law suits, most recently in Civ. Act. No. 6:13-cv-00351-LED (E.D. Tex),
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`filed April 22, 2013 (“the 2013 VirnetX litigation”).4
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`3 The ’135 patent is the subject of the following ongoing civil actions: (i) Civ. Act.
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`No. 6:13-cv-00211-LED (E.D. Tex.), filed February 26, 2013; (ii) Civ. Act. No.
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`6:12-cv-00855-LED (E.D. Tex.), filed November 6, 2012; (iii) Civ. Act. No. 6:10-
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`cv-00417-LED (E.D. Tex.), filed August 11, 2010; (iv) Civ. Act. No. 6:11-cv-
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`00018-LED (E.D. Tex), (iv) Civ. Act. No. 6:13-cv-00351-LED (E.D. Tex), filed
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`April 22, 2013 (“the 2013 VirnetX litigation”); (v) Civ. Act. No. 6:10-cv-00094
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`(E.D. Tex); and (vi) Civ. Act. No. 6:07-cv-00080 (E.D. Tex).
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`4 See FN 1 of the instant motion, above at page 2.
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`4
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`Attorney Docket No. 38868-0003IP1
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`IPR of U.S. Patent No. 6,502,135
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`The ’135 patent is the subject of two petitions for inter partes review filed
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`by RPX, including the RPX IPR and a separate petition which has been designated
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`IPR2014-00172. The ’135 patent is also the subject of merged inter partes
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`reexamination nos. 95/001,679 and 95/001,682, in which all claims of the ‘135
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`patent have been non-finally rejected on multiple grounds of anticipation and
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`obviousness.
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`In the Petition accompanying the instant motion for joinder, Microsoft
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`requests cancelation of claims 1, 3, 4, 7, 8, 10, 12, and 13 of the ‘135 patent, and
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`proposes the following grounds of rejection:
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`1) Claims 1, 3, 4, 7, 8, 10, 12, and 13 are anticipated under
`§ 102(b) by Aventail Connect v 3.01/2.5 Administrator’s
`Guide (“Aventail”);
`2) Claims 1, 3, 4, 7, 8, 10, 12, and 13 are obvious under §
`103 based on Aventail;
`3) Claim 4 is obvious under § 103 over Aventail in view of
`Mockapetris, P., RFC 1035, “Domain Names –
`Implementation and Specification,” November 1987
`(“RFC 1035”);
`4) Claims 1, 3, 4, 7, 8, 10, and 12 are anticipated under §
`102(b) by Takahiro Kiuchi and Shigekoto Kaihara, “C-
`HTTP - The Development of a Secure, Closed HTTP-
`based Network on the Internet,” the Proceedings of
`SNDSS 1996 (“Kiuchi”); and
`5) Claim 8 is obvious under § 103 over Kiuchi in view of
`Mockapetris, P., RFC 1034, “Domain Names – Concepts
`and Facilities,” November 1987 (“RFC 1034”).
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`5
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`Attorney Docket No. 38868-0003IP1
`IPR of U.S. Patent No. 6,502,135
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`III. THE BOARD HAS DISCRETION TO JOIN THE INSTANT IPR
`WITH THE RPX IPR UPON ITS INSTITUTION
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`The Board, acting on behalf of the Director, has the discretion to grant
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`joinder to an inter partes review to an entity that properly files, no later than one
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`month after the institution of the inter partes review, a petition for a like
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`proceeding. See 35 U.S.C. § 315(c) (“the Director, in his or her discretion, may
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`join as a party to [an instituted] inter partes review any person who properly files a
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`petition under section 311”); 37 C.F.R. § 42.122(b) (“Any request for joinder must
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`be filed, as a motion under § 42.22, no later than one month after the institution
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`date of any inter partes review for which joinder is requested”).
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`Because the instant motion for joinder is being submitted prior to the
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`institution of the RPX IPR, it is timely under 35 U.S.C. § 315 and 37 C.F.R. §
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`42.122(b). Because Microsoft has paid the fee for the accompanying Petition that
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`is prescribed by the Director and has requested cancelation of claims of the ‘135
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`patent only on grounds that can be raised under 35 U.S.C. §§ 102 and 103, the
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`Petition has been properly filed. See 35 U.S.C. § 311 (“The Director shall
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`establish . . . fees to be paid by the person requesting the review . . . A petitioner . .
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`. may request to cancel as unpatentable 1 or more claims of a patent only on a
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`ground that could be raised under section 102 or 103”). Accordingly, under the
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`6
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`Attorney Docket No. 38868-0003IP1
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`IPR of U.S. Patent No. 6,502,135
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`applicable statutes and regulations, the Board has discretion to grant Microsoft
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`joinder to the RPX IPR.
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`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION BY
`GRANTING JOINDER UNDER THE PRESENT
`CIRCUMSTANCES
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`Each of the four factors identified in the Board’s representative order on
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`joinder favor joinder under the present circumstances. These factors are
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`individually addressed under separate headings below.5
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`A. The grounds of unpatentability raised in Microsoft’s Petition are
`a subset of those at issue in the RPX IPR
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`In the Petition accompanying the instant motion for joinder, Microsoft
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`requests cancelation of claims 1, 3, 4, 7, 8, 10, 12, and 13 of the ‘135 patent on
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`grounds that are a subset of the grounds that were proposed by RPX in the RPX
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`IPR.6 Microsoft acknowledges that the declaration in the present petition (“the
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`5 See FN2 of the instant motion, above at page 3, listing the four factors detailed in
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`the Board’s representative order on joinder, Kyocera Corporation v. Softview LLC,
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`IPR2013-00004, Paper No. 15 at 4 (April 24, 2013).
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`6 Compare the five grounds of rejection proposed by Microsoft, listed above at
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`page 5, with the grounds of rejection requested by RPX in RPX Corporation, v.
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`7
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`Attorney Docket No. 38868-0003IP1
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`IPR of U.S. Patent No. 6,502,135
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`Guerin Declaration”) is from a different expert than the one in the RPX IPR, but
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`submits that submission of this declaration was necessitated by the lack of
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`relationship between Microsoft and the primary declarant in the RPX IPR, Michael
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`Fratto. Moreover, Microsoft presents the Guerin Declaration for the purposes of
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`preserving its ability to rely upon expert evidence in case RPX discontinues its
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`participation in the IPR. Nevertheless, since the petition submitted with this
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`motion is directed to a subset of grounds in the RPX petition, the Guerin
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`Declaration is similarly directed to a subset of grounds in the RPX IPR and
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`supports conclusions already set forth in the RPX IPR. Accordingly, joinder to the
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`pending RPX IPR would therefore not impact that proceeding’s substantive
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`complexity.
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`B. Joinder is appropriate
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`Absent joinder, Microsoft’s interests will not be fully and fairly represented
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`in the RPX IPR. Moreover, because the RPX IPR has not yet been instituted,
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`joinder to the RPX IPR will neither slow nor otherwise prejudice that proceeding
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`or the existing parties, and joinder to the RPX IPR would promote an efficient and
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`comprehensive determination of the validity/invalidity of the ’135 patent.
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`VirnetX, Inc. and Science Application International Corporation, IPR2014-00171,
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`Paper No. 1 (November 20, 2013).
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`8
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`Attorney Docket No. 38868-0003IP1
`IPR of U.S. Patent No. 6,502,135
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`C. Joinder will not affect timely completion of the RPX IPR
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`Because the instant motion for joinder is being presented prior to the
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`institution of the RPX IPR, the Board will have no need to modify a previously-
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`existing schedule, and will instead have the opportunity to establish a schedule in
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`the RPX IPR that can efficiently drive that proceeding forward, while
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`accommodating the needs of each party. For example, the Patent Owner’s
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`Preliminary Response period can be reasonably shortened since the grounds in the
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`present petition are a subset of those in the RPX IPR. Similarly, Microsoft is
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`willing to accept reasonable reductions in the time periods applicable to its filings.
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`Moreover, to the extent needed or desired, the Board has the power, under 35
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`U.S.C. 316(a)(11) to adjust the one-year deadline in the case of joinder.
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`As such, any burdens of joinder on the Board and on the parties can be
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`minimized, if not altogether avoided, and joinder can be expected to have little or
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`no impact on the RPX IPR’s timely completion. Cf. Sony Corporation of America
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`and Hewlett-Packard Co. v. Network-1 Security Solutions, Inc., IPR2013-00495 ,
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`Paper No. 13 at 5 (September 13, 2013) (finding that the Board’s ability to
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`complete the trial in one year would not be impacted by joinder, because joinder
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`would raise no substantive issues that were not already before the Board).
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`9
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`Attorney Docket No. 38868-0003IP1
`IPR of U.S. Patent No. 6,502,135
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`D. Briefing and discovery can be simplified
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`The grounds of unpatentability for the ‘135 patent proposed by Microsoft are
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`a subset of those raised by RPX. As such, Microsoft envisions few, if any,
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`differences in position between Microsoft and RPX. Moreover, were differences
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`in position between Microsoft and RPX to arise, those differences would center
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`around the same references and issues, and would therefore be limited relative to a
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`situation in which a joined party proposed wholly new rejections and art. Thus,
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`Microsoft predicts that little, if any, complexity will be added to briefing and
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`discovery if the Board grants Microsoft joinder to the RPX IPR.
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`Moreover, Microsoft respectfully submits that briefing and discovery can be
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`streamlined to minimize any impact to the schedule or to the volume of materials
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`to be submitted to the Board. To this end, if the Board deems it appropriate, and if
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`Microsoft is permitted to state its positions on the record, Microsoft is willing to
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`entertain, for example, briefing and discovery procedures similar to those ordered
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`by the Board in IPR2013-00256, which included consolidated filings. See
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`Motorola Mobility LLC v. Softview LLC, IPR2013-00256, Paper No. 10 at 9 (June
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`10
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`20, 2013).
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`V. CONCLUSION
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`Attorney Docket No. 38868-0003IP1
`IPR of U.S. Patent No. 6,502,135
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`Microsoft respectfully submits that, for at least the reasons presented above,
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`joinder of Microsoft to the RPX IPR would be warranted if the Board declines to
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`institute the inter partes review of the ‘135 patent that is requested in Microsoft’s
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`Petition. Accordingly, Microsoft requests that, if the inter partes review of the
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`‘135 patent that is petitioned for by Microsoft is not instituted, the Board grant
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`Microsoft joinder to the RPX IPR.
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`Respectfully submitted,
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`/W. Karl Renner/
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`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`T: 202-626-6447
`F: 202-783-2331
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`Dated: March 31, 2014
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`11
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`Attorney Docket No. 38868-0003IP1
`IPR of U.S. Patent No. 6,502,135
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`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
`certifies that on March 31, 2014, a complete and entire copy of this Petition for
`Inter Partes Review, Motion for Joinder, and all supporting exhibits were provided
`via FedEx, to the Patent Owner by serving the correspondence address of record as
`follows:
`
`Finnegan, Henderson, Farabow
`Garrett & Dunner LLP
`901 New York Avenue, NW
`Washington, DC 20001
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`
`
`
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`/Edward G. Faeth/
`
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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