`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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`____________________________________
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`MICROSOFT CORPORATION,
`Petitioner
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`v.
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`VIRNETX, INC.,
`Patent Owner
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`____________________________________
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`Case IPR2014-00558
`Patent 6,502,135
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`____________________________________
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`PETITIONER’S REPLY TO
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
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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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`TABLE OF CONTENTS
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`Attorney Docket No. 38868-0004IP1
`Case IPR2014-00558
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`I.
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`Introduction .......................................................................................................... 1
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`II. VirnetX’s Interpretations of 35 U.S.C. § 315 is Incorrect .................................. 1
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`Joinder of this Proceeding with IPR2014-00171 Will Not Substantially
`III.
`Increase the Complexity or Duration of the Proceedings or Prejudice VirnetX ....... 3
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`IV. Microsoft’s Opportunities in Prior Proceedings ............................................... 4
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`V. Conclusion ........................................................................................................... 5
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`I.
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`Introduction
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`Attorney Docket No. 38868-0004IP1
`Case IPR2014-00558
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`Microsoft’s motion for joinder satisfies the requirements of 35 U.S.C.
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`§ 315(c), 37 C.F.R. §§ 42.20-22, 42.24, and 42.122(b), as well as prior Board
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`precedent. See e.g., Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper No. 15
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`at 4 (PTAB, Apr. 24, 2013). VirnetX’s arguments to the contrary revolve around
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`incorrect interpretations of 35 U.S.C. § 315, an unfounded view that joinder would
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`adversely impact the trial schedule of IPR2014-00171, and an incomplete portrayal
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`of Microsoft’s opportunities in previous proceedings.
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`II. VirnetX’s Interpretations of 35 U.S.C. § 315 is Incorrect
`First, VirnetX asserts that a petition subject to the time limit of § 315(b) does
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`not “warrant[] the institution of an inter partes review” and, as a result, joinder
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`under § 315(c) is not available. Paper No. 6 at 4. VirnetX’s argument ignores
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`qualifying language that appears in § 315(c): “warrants the institution of an inter
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`partes review under section 314.” 35 U.S.C. § 315(c) (emphasis added).
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`Accordingly, only the section 314 thresholds need to be considered when
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`evaluating joinder.
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`Second, VirnetX asserts that the one-year time bar applies even when
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`joinder is requested, despite § 315(b)’s provision that the time limitation does not
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`apply. Paper No. 6 at 6-7. The Board has consistently and correctly interpreted
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`the last sentence of 35 U.S.C. § 315(c) to mean that a request for joinder will
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`1
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`Attorney Docket No. 38868-0004IP1
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`Case IPR2014-00558
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`“obviate the time bar under 35 U.S.C. § 315 (b)” when including a motion for
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`joinder and a corresponding petition for inter partes review pursuant to 35 U.S.C.
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`315(c). See Apple Inc. v. VirnetX, Inc., IPR2013-00349, Paper 14 at 4 (PTAB,
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`Dec. 13, 2013); see also Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109,
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`Paper 15 at 3-4 (PTAB, Feb. 25, 2013). This interpretation is consistent with §
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`315(b), § 315(c), and legislative history.
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`With respect to § 315(b), the first sentence establishes a time constraint for
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`filing a petition. By expressly referring back to the time constraint of the first
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`sentence (“set forth in the preceding sentence”), the second sentence provides an
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`exception to the first sentence’s time constraint for filing a petition. Thus, the
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`second sentence cannot be read separately from the first sentence as VirnetX
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`proposes. Moreover, the second sentence specifies the exception applies to
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`requests for joinder under § 315(c). Because subsection (c) establishes that joinder
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`is contingent on the filing of a petition for inter partes review by the party seeking
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`joinder, Microsoft’s request for joinder (i.e., the required combination of its
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`petition and motion for joinder) satisfies the exception of § 315(b).
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`With respect to § 315(c), VirnetX relies heavily on an incorrect
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`interpretation of “properly file[d].” VirnetX cites to portions of Senator Kyl’s
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`comments regarding the term “properly filed” as used in § 315(c), but fails to cite
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`the section of Senator Kyl’s comments that supports the Board’s previous
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`2
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`Attorney Docket No. 38868-0004IP1
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`Case IPR2014-00558
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`interpretation. See Paper No. 6 at 8. Relevant portions of Senator Kyl’s statement
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`that were omitted by VirnetX appear in the following excerpt: “a petition is
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`properly filed when it is delivered and accepted in compliance with applicable
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`rules governing filings, though particular claims within filings be barred on other
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`procedural grounds, and that time deadlines for filing petitions must be complied
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`with in all cases.” Ex. 2009 at 7 (emphasis added). In full, his comments support
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`making a determination of whether a petition has been “properly filed”
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`independent of whether the petition is barred on other procedural grounds (e.g., the
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`timing requirements of § 315(b)).
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`III. Joinder of this Proceeding with IPR2014-00171 Will Not
`Substantially Increase the Complexity or Duration of the
`Proceedings or Prejudice VirnetX
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`Though VirnetX broadly asserts that there are “significant differences
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`between the petitions,” the only difference VirnetX is able to expressly identify is
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`that Microsoft relies upon its own expert declaration. VirnetX contends that this
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`single difference will overly complicate the proceedings. But, as Microsoft’s
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`motion for joinder made clear, the Guerin Declaration relates to grounds already
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`raised by the RPX IPR and it supports conclusions already set forth in that IPR.
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`Paper No. 3 at 8. Simply employing a different expert, particularly when
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`addressing grounds in a prior petition, does not overly complicate that proceeding.
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`3
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`Attorney Docket No. 38868-0004IP1
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`Case IPR2014-00558
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`In fact, it should not be unexpected for a party to employ its own expert even
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`when seeking joinder. Microsoft did not retain the primary declarant in the RPX
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`IPR and therefore relies on its own expert to preserve its ability to present expert
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`evidence throughout the proceeding, as appropriate, even if RPX discontinues its
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`participation. Indeed, given the possibility that RPX may discontinue its
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`participation in the IPR, Microsoft’s interests may be left without full and fair
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`representation, absent inclusion of its expert testimony.
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`Microsoft clarified its willingness “to accept reasonable reductions in the
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`time periods applicable to its filings” or consolidate filings, if helpful. See Paper
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`No. 3 at 9-10. Thus, any burden created by the need for “coordination between
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`Microsoft and RPX” would not be borne by VirnetX, as it appears to suggest.
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`Indeed, Microsoft is willing to coordinate deposition schedules with VirnetX and
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`RPX to further relieve VirnetX of any prospective burden flowing from joinder.
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`Finally, if needed or desired, the Board has the power, under 35 U.S.C.
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`316(a)(11) to adjust the one-year deadline in the case of joinder. Such adjustments
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`are simplified in the joinder of these proceedings as neither has yet to be instituted
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`and scheduling orders have not been issued. Thus, the timeline of a joined trial can
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`be set to accommodate all three parties without undue prejudice to any one.
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`IV. Microsoft’s Opportunities in Prior Proceedings
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`4
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`Attorney Docket No. 38868-0004IP1
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`Case IPR2014-00558
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`Though VirnetX dramatizes the number of previous proceedings involving
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`the ‘135 patent, Microsoft’s Petition makes clear (and VirnetX fails to mention)
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`that Microsoft’s involvement in each ended prematurely through settlement by
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`which Microsoft agreed to discontinue its attempts to invalidate the ‘135 patent at
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`that time while expressly reserving Microsoft’s rights to do so again in the future.
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`See Paper No. 1 at 3-13. These previous proceedings do not represent
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`opportunities to fully litigate the patentability of the ‘135 patent claims either at the
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`PTO or in civil litigation, as VirnetX suggests, because Microsoft discontinued
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`participation due to the settlement. Accordingly, Microsoft would be materially
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`prejudiced if prevented from participating in its own IPR or joining RPX’s, despite
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`suggestions to the contrary.
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`V. Conclusion
`Beyond satisfying the procedural requirements of a motion for joinder,
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`Microsoft limited its grounds to a subset of those raised in IPR2014-00171 and to
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`accept adjustments and restrictions that would reduce its impact on a joined
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`proceeding. Accordingly, Microsoft’s motion for joinder should be granted.
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`Dated: 5/30/14
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`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
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`Respectfully submitted,
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`/Kevin E. Greene/
`Kevin E. Greene
`Reg. No. 46,031
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`5
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`Attorney Docket No. 38868-0004IP1
`Case IPR2014-00558
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on May 30, 2014, a complete and entire copy of this Petitioner’s
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`Reply to Patent Owner’s Opposition to Petitioner’s Motion for Joinder was
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`provided via email to the Patent Owner by serving the email correspondence
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`addresses of record as follows:
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`Joseph E. Palys
`Finnegan, Henderson, Farrabow,
`Garret & Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
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`Naveen Modi
`Finnegan, Henderson, Farrabow,
`Garret & Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
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`Email: joseph.palys@finnegan.com
`Email: naveen.modi@finnegan.com
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`/Edward G. Faeth/
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`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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