`Date: September 5, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00401 and IPR2014-00405
`Patent 7,188,180 B2
`Case IPR2014-005581
`Patent 6,502,135 B2
`____________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`1 This decision addresses an issue that is identical in each case. We, therefore,
`exercise our discretion to issue one Decision to be filed in each case. Unless
`otherwise authorized, the parties, however, are not authorized to use this style
`heading for any subsequent papers. Citations and page references in the Decision
`correspond to IPR2014-00401, unless otherwise indicated.
`
`
`
`IPR2014-00401, IPR2014-00405, IPR2014-00558
`Patents 7,188,180 B2; 6,502,135 B2
`
`
`
`
`
`
`
`I.
`
`BACKGROUND
`
`Microsoft Corporation (“Petitioner”), in its Request for Rehearing (“Req.” or
`“Request”), seeks reversal of the Board’s Decision (“Decision”) not to institute an
`inter partes review of claims 1, 4, 6, 10, 12-15, 17, 20, 22, 26, 28-31, 35,and 37 of
`U.S. Patent 7,188,180 B2 (“the ’180 Patent,” Ex. 1001). See Req. Reh’g. 8. For
`the reasons that follow, the Board denies the requested relief.
`The applicable standard for a request for rehearing is set forth in 37 C.F.R.
`§ 42.71(d), which provides in relevant part:
`A party dissatisfied with a decision may file a request for rehearing,
`without prior authorization from the Board. The burden of showing a
`decision should be modified lies with the party challenging the
`decision. The request must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, opposition,
`or a reply.
`Petitioner disagrees with the Decision for denying institution of inter partes
`review pursuant to 35 U.S.C. § 315(b). 35 U.S.C. 315(b) provides in relevant part:
`An inter partes review may not be instituted if the petition requesting
`the proceeding is filed more than 1 year after the date on which the
`petitioner . . . is served with a complaint alleging infringement of the
`patent.
`
`II. DISCUSSION
`Petitioner argues that “a complaint,” as specified in 35 U.S.C. § 315(b),
`“creates an ambiguity,” that Petitioner previously “set forth an equally plausible
`interpretation” of “a complaint,” and that resolution of the alleged “ambiguity”
`should be resolved by “turn[ing] to the legislative history of § 315(b).” Req. Reh’g
`3. As previously explained in the Decision, Petitioner does not demonstrate
`
`2
`
`
`
`
`
`
`IPR2014-00401, IPR2014-00405, IPR2014-00558
`Patents 7,188,180 B2; 6,502,135 B2
`
`
`persuasively a substantial “ambiguity” in the context of 35 U.S.C. § 315(b). The
`statute explicitly states that an inter partes review may not be instituted if the
`petition requesting the proceeding is filed more than 1 year after the date on which
`the petitioner is served with a complaint. In the present case and as previously
`explained in the Decision, the Petitioner was served with a complaint more than
`one year prior to the date on which the present petition was filed. We declined to
`institute inter partes review pursuant to 35 U.S.C. § 315(b).
`The Board employed standard tools of statutory construction in interpreting
`§ 315(b), and did not overlook or misapprehend the need to interpret the statute
`properly. In interpreting 35 U.S.C. § 315(b), the Board concluded that the statute
`was not ambiguous as to whether “a complaint alleging infringement” that was
`served previously could preclude institution of an inter partes review.
`Additionally, while we disagree that the statute is ambiguous, to the extent there is
`an ambiguity, the Board’s interpretation of the statute is consistent with the
`legislative history, including that identified by Petitioner.
`
`
`III. CONCLUSION
`Based on the foregoing discussion, Petitioner’s Request is granted to the
`extent that the Board has reconsidered its Decision, but Petitioner’s requested relief
`for a reversal of the Decision is denied because Petitioner has not shown that the
`Decision overlooks or misapprehends a material point.
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that the Request for Rehearing is denied; and
`
`
`
`3
`
`
`
`
`IPR2014-00401, IPR2014-00405, IPR2014-00558
`Patents 7,188,180 B2; 6,502,135 B2
`
`
`
`FURTHER ORDERED that a copy of this Decision be entered into the file
`of each of Case IPR02014-00401, Case IPR2014-00405, and Case IPR2014-
`00558.
`
`
`
`
`PETITIONER:
`W. Karl Renner
`axf@fr.com
`
`Kevin E. Greene
`greene@fr.com
`
`
`
`PATENT OWNER:
`
`Joseph E. Palys
`josephpalys@paulhastings.com
`
`Jason Stach
`jason.stach@finnegan.com
`
`Naveen Modi
`naveenmodi@paulhastings.com
`
`
`
`
`
`
`
`4
`
`
`
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