`571.272.7822
`
`
`
`
`
`Paper No. 12
`Filed: October 30, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORP.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00614
`Patent 7,418,504 B21
`____________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(c)
`
`
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2014-00613 has been consolidated with the instant proceeding.
`
`
`
`
`
`IPR2014-00612, IPR2014-00613, and IPR2014-00614
`Patent 7,418,504 B2
`
`I. INTRODUCTION
`
`
`
`
`
`Petitioner’s Rehearing Request seeks a modification of the Board’s
`
`determination “with regard to the anticipation of claims 32 and 56 by
`
`Provino, because the Board . . . misapprehended or overlooked Petitioner’s
`
`inclusion of these claims in the proposed grounds of unpatentability.” Paper
`
`11, 2 (“Req. Reh’g”). As relief, Petitioner “requests that the Board amend
`
`the [I]nstitution [D]ecision to include review of claims 32 and 56 based on
`
`anticipation by Provino.” Req. Reh’g 2.
`
`
`
`“When rehearing a decision on petition, a panel will review the
`
`decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).
`
`II. DISCUSSION
`
`The Rehearing Request demonstrates an abuse of discretion, because
`
`we overlooked Petitioner’s showing of anticipation of claims 32 and 56 by
`
`Provino. On this record, Petitioner showed a reasonable likelihood of
`
`prevailing on the ground that Provino anticipates claims 32 and 56. See
`
`IPR2014-00613, Paper 2, 47 (“’613 IPR, Pet.”); Req. Reh’g 2–5. As
`
`Petitioner shows in its Rehearing Request, the failure to list claims 32 and 56
`
`as part of the review based on anticipation by Provino amounts to “an
`
`inadvertent transcription error, rather than a deliberate omission.” See Req.
`
`Reh’g 3. The Institution Decision states that “[a]s an alternative to
`
`anticipation, Petitioner asserts that claims 29–32 and 53–56 are unpatentable
`
`under 35 U.S.C. § 103(a) over Provino and Kosiur. ’613 IPR, Pet. 50–53.”
`
`Paper 9, 25–26 (emphasis added).2
`
`
`2 Based on this alternative obviousness showing, we instituted trial on the
`ground that the combination of Provino and Kosiur renders claims 32 and 56
`obvious.
`
`2
`
`
`
`
`IPR2014-00612, IPR2014-00613, and IPR2014-00614
`Patent 7,418,504 B2
`
`III. CONCLUSION
`
`
`
`
`
`Based on the foregoing discussion, we grant Petitioner’s requested
`
`relief and modify the Institution Decision to reflect trial institution on the
`
`additional ground that Provino anticipates claims 32 and 56.
`
`IV. ORDER
`
`For the reasons given, it is
`
`ORDERED that the Petitioner’s Rehearing Request is granted; and
`
`FURTHER ORDERED that the Institution Decision is modified
`
`accordingly to reflect that trial hereby is instituted retroactively as of the
`
`date of the Institution Decision, in accordance with the existing Scheduling
`
`Order, on the alternative ground that Provino anticipates claims 32 and 56.
`
`
`
`
`
`3
`
`
`
`
`IPR2014-00612, IPR2014-00613, and IPR2014-00614
`Patent 7,418,504 B2
`
`For PETITIONER:
`
`
`
`
`
`W. Karl Renner
`Kevin E. Greene
`FISH & RICHARDSON P.C.
`axf@fr.com
`IPR38868-0007IP1@fr.com
`
`
`For PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`
`Jason E. Stach
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`jason.stach@finnegan.com
`
`4
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
