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`Paper No. 2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION INTERNATIONAL
`
`CORPORATION,
`
`VirnetX
`
`
`Patent No. 7,921,211
`Issued: Apr. 5, 2011
`Filed: Aug. 17, 2007
`Inventors: Victor Larson, et al.
`Title: Agile network protocol for secure communications using secure domain
`names
`____________________
`
`Inter Partes Review No. IPR2015-00185 and -00186
`__________________________________________________________________
`
`
`PETITIONER’S MOTION FOR JOINDER
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`
`
`
`
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`
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`Motion for Joinder in IPR2015-00185 & -00186
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`I.
`
`INTRODUCTION
`Apple Inc. (“Apple”) moves to join its concurrently filed petitions for inter
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`partes review involving U.S. Patent No. 7,921,211 (the ’211 patent) with the
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`consolidated inter partes reviews requested by Microsoft Corp. (“Microsoft”)
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`against the ’211 patent, Microsoft Corp. v. VirnetX Inc., IPR2014-00615 and -
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`00618 (the Microsoft IPRs). The Board instituted trial in those proceedings on
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`October 15, 2014.
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`The Apple petitions are timely filed under 35 U.S.C. § 315(c), as they are
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`filed within one month of the date that the Microsoft IPRs were instituted. See
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`e.g., IPR2014-00615, Paper 9 at 1, 27-28. As the statute provides and the Board
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`has explained, the one-year filing window specified in § 315(b) and Rule 42.101(b)
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`“shall not apply to a request for joinder under subsection (c).” 35 U.S.C. § 315(b);
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`Dell Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 at 4-5
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`(granting joinder beyond the one-year window); Microsoft Corp. v. Proxyconn,
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`Inc., IPR2013-00109, Paper 15 at 4-5 (same); Rule 42.122(b) (the “time period set
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`forth in §42.101(b) shall not apply when the petition is accompanied by a request
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`for joinder.”).
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`Joinder is appropriate because of the substantial similarity between the
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`Apple petitions and the Microsoft IPRs. Each of the Apple petitions relies on the
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`same grounds as those instituted by the Board in the Microsoft IPRs. Additionally,
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`Motion for Joinder in IPR2015-00185 & -00186
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`Apple has included new grounds of unpatentability based on a single claim (claim
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`5) and based on the same prior art involved in the instituted proceedings: Kiuchi
`
`and Provino. These new grounds against claim 5 present substantially the same
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`patentability considerations as those raised by claims 23 and 47; each relies on the
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`same prior art, the same rationale, and even the same citations. Moreover, VirnetX
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`has consistently treated claims 5, 23, and 47 as rising and falling together. See,
`
`e.g., 95/001,789, Appeal Brief in Inter Partes Reexamination, p. 40 (Aug. 23,
`
`2014).
`
`Other factors relevant to joinder favor granting this motion, including that:
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`(i) the same schedule for various proceedings can be adopted, (ii) Apple is not
`
`advancing any new expert testimony, and thus, discovery will not be impacted by
`
`joinder, and (iii) joinder will not materially affect the range of issues needing to be
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`addressed by the Board and by the parties in the joined proceedings. See Kyocera
`
`Corp. v. Softview LLC, IPR2013-00004, Paper No. 15 at 4 (Apr. 24, 2013).
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`Because all these factors support joining these proceedings, Apple requests the
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`Board to grant this motion for joinder.
`
`II. RELEVANT FACTS
`The ’211 patent is a member of a family of patents owned by VirnetX that
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`includes U.S. Patent Nos. 6,502,135, 7,490,151, and 7,418,504. The specifications
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`of these patents are nearly identical. VirnetX has asserted varying sets of claims of
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`Motion for Joinder in IPR2015-00185 & -00186
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`the ’211 and other of its patents against Apple and other entities in numerous
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`lawsuits. In August of 2010, VirnetX sued Apple and five other entities (the “2010
`
`Litigation”). VirnetX asserted “at least” claims 1, 2, 5, 6, 14-23, 26-28, 33-47, 50-
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`52, and 57-60 of the ’211 patent against Apple and claims 1, 6, 8, 9, 14-17, 19-23,
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`26-36, 38-41, 43-47, and 50-60 against co-defendant Cisco. After trial, VirnetX
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`obtained a judgment of infringement against Apple on, inter alia, claims 36, 37,
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`47, and 51 of the ’211 patent. In September 2014, this judgment was reversed-in-
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`part by a Federal Circuit panel, and VirnetX presently has a pending request for
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`rehearing en banc. See VirnetX, Inc. v. Cisco Systems, Inc., No. 2013-1489, 2014
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`WL 4548722 (Fed. Cir. Sept. 16, 2014).
`
`On December 31, 2012, VirnetX served a new complaint on Apple asserting
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`infringement of “at least” claims 1, 2, 5, 6, 14-23, 26-28, 33-47, 50-52, and 57-60
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`of the ’211 patent (the “2012 Litigation”). The new complaint led to a civil action,
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`now pending in the Eastern District of Texas, that will go to trial on October 13,
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`2015.
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`III. ARGUMENT
`Joinder with the Microsoft IPRs is justified because each factor identified by
`
`the Board as supporting joinder is met. For example, the Board has explained that a
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`motion for joinder should: (1) explain the reasons why joinder is appropriate; (2)
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`identify any new grounds of unpatentability asserted in the petition; (3) explain
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`Motion for Joinder in IPR2015-00185 & -00186
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`what impact (if any) joinder would have on the trial schedule for the existing
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`review; and (4) address specifically how briefing and discovery may be simplified.
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`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (representative
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`order). Each of these factors is addressed below, and, when considered together,
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`strongly support granting this motion for joinder.
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`Joinder Is Appropriate
`
`A.
`Joinder between the instant petitions and the Microsoft IPRs is appropriate
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`because they involve the same patent, the same art, the same expert declaration,
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`and the same arguments and legal rationales. With the exception of the new
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`ground for claim 5 (discussed below), Apple’s proposed grounds of invalidity are
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`identical to Microsoft’s.
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`Granting joinder would also simplify litigation issues between the parties. A
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`final written decision from the Board would simplify issues that need to be
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`resolved during the October 2015 trial. Granting the present joinder motion will
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`therefore further the statutory purpose of the inter partes review system by
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`ensuring the “just, speedy, and inexpensive resolution” of a disagreement between
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`parties over patent validity. See Office Patent Trail Guide, 77 Fed. Reg. 48756,
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`48758 (Aug. 14, 2012).
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`Permitting joinder will not prejudice Microsoft. Apple raises no issues that
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`are not already before the Board, such that joinder would not affect the timing of
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`Motion for Joinder in IPR2015-00185 & -00186
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`the Microsoft IPRs or the content of VirnetX’s response. Moreover, Apple is
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`amendable to coordinating with Microsoft and, as such, Microsoft will not suffer
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`any additional costs or burdens in preparing motions and arguments.
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`VirnetX also will suffer no prejudice from joinder. VirnetX has filed
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`multiple actions against multiple parties over several years, each changing in scope
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`and the particular claims of the ’211 patent being asserted. Joinder will allow for
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`the effective resolution of the validity of all the ’211 claims that VirnetX has
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`asserted against various parties. Thus, joinder will reduce the complexity of
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`concurrent litigation by reducing the number of issues in those proceedings.
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`The denial of joinder, however, will prejudice Apple. Absent joinder, the
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`petitions would be untimely under § 315(b) and Apple would be unable to
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`participate in any inter partes review proceedings related to the ’211 patent. Apple
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`is involved in other proceedings involving the ’211 patent and other patents in the
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`’504 patent family that involve some of the same art at issue here. Specifically,
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`Apple is the third party requester in inter partes reexamination proceedings
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`involving the ’211 patent and in U.S. Patent No. 7,418,504. See Control Nos.
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`95/001,788 & 95/001,789.1 Allowing Apple to participate would allow Apple to
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`1 Control No. 95/001,789 is the subject of an appeal by Patent Owner of a final
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`rejection of all claims of the ’211 patent. That appeal was filed on June 23, 2014.
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`Patent Owner subsequently filed a non-compliant appeal brief and a petition to
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`Motion for Joinder in IPR2015-00185 & -00186
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`ensure the Board does not resolve an issue in this proceeding that would impact
`
`those other proceedings. Accordingly, because of the strong similarity of the
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`instant petitions to the Microsoft IPRs, and to avoid prejudice to Apple, joinder is
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`appropriate.
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`B. New Grounds of Unpatentability in the Apple Petitions
`The instant petitions propose institution of trial on new grounds of
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`unpatentability involving a single additional patent claim: dependent claim 5 in
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`view of each of Provino or Kiuchi.
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`Review of the patentability of dependent claim 5 in this proceeding will not
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`impose burdens on the Board or on the parties relative to consideration of the
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`existing grounds in the Microsoft IPRs. Claim 5 shares the same basic structure as
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`claim 23 except that it is dependent on claim 2 instead of claim 1, and adds the
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`requirement that the authentication step use “a cryptographic technique.”
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`5. The system of claim 2, wherein the domain name service system is
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`waive the page limit rule it was violating. Apple has been unable to submit a reply
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`brief in that proceeding pending the Office’s decision on VirnetX’s petition.
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`VirnetX also filed several petitions seeking to terminate the appeal and re-open
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`prosecution; those petitions have been denied, as have requests for reconsideration
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`of those denials filed by VirnetX. E.g., 95/001,789 Petition (June 23, 2014),
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`Petition Decision (Aug. 22, 2014).
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`Motion for Joinder in IPR2015-00185 & -00186
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`configured to authenticate the query using a cryptographic technique.
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`23. The system of claim 1, wherein the domain name service system is
`configured to authenticate the query for the network address.
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`47. The non-transitory machine-readable medium of claim 36, wherein the
`instructions comprise code for authenticating the query for the network
`address.
`
`In reexamination proceedings in front of the Office, VirnetX has consistently
`
`treated the patentability of claims 5, 23, and 47 as rising and falling together. For
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`example, in Cisco’s reexamination of the ’211 patent, VirnetX grouped claims 5,
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`23, and 47 in their responsive arguments. Control No. 95/001,856, Patent Owner
`
`Comments after Action Closing Prosecution, at 38 (July 30, 2014).
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`Claim 5 does include the further requirement of “authenticate the query
`
`using a cryptographic technique.” But even when given the chance to argue this
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`language separately, VirnetX has focused solely on the “authenticate the query”
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`element that is common to claims 5, 23, and 47. For example, in Apple’s
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`reexamination of the ’211 patent, VirnetX entirely ignored this distinction:
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`“Claim 5 indirectly depends from independent claim 1 and recites that “the
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`domain name service system is configured to authenticate the query [for a
`
`network address] . . . .” Claim 23 and 47 depend from independent claims 1
`
`and 36, respectively, and recite similar features.”
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`Control No. 95/001,789, Appeal Brief at 40 (Aug. 23, 2014).
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`Consideration of claim 5 in addition to the already instituted grounds will
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`Motion for Joinder in IPR2015-00185 & -00186
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`not complicate the joined proceedings in any significant way. The new grounds
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`against claim 5 present essentially the same patentability questions as the existing
`
`grounds against claims 23 and 47, both already instituted by the Board. See
`
`§ III.B, below. Expanding the previous anticipation grounds to cover a single
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`additional dependent claim, one that is highly similar to two other dependent
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`claims, should not be a burden on the Board or the parties. See Ariosa Diagnostics
`
`v. Isis Innovation, IPR2012-00022, Paper 32 at 5 (permitting joinder of new
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`petition where new challenges were “premised on the same grounds [as the] earlier
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`proceeding” and “address[ed] the limitations of the dependent claims.”).
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`C. No Impact on the Trial Schedule
`Granting this motion for joinder will have no impact on the trial schedule of
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`the various proceedings because Apple does not raise any issues that are not
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`already before the Board. With the exception of claim 5, VirnetX does not need to
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`specifically address any issues raised by Apple. With respect to claim 5, the Apple
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`petitions are being submitted well before the date that VirnetX’s Patent Owner
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`Responses are due, and thus, VirnetX will have ample time respond to claim 5,
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`which VirnetX treats as substantively identical to claims 23 and 47, within the
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`schedule set for the Microsoft proceedings.
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`Proposals for Briefing in the Joined Proceedings
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`D.
`In the interest of efficiency, Petitioner is willing to accept reasonable
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`Motion for Joinder in IPR2015-00185 & -00186
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`restrictions on discovery as long as they do not preclude Petitioner from effectively
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`participating in the joined proceeding. For example, Petitioner has not filed a
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`separate expert declaration, and thus, VirnetX will not need to depose any
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`additional witnesses. Apple is also willing to coordinate with Microsoft to avoid
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`duplicative cross-examination of VirnetX witnesses (e.g., providing that only one
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`party conducts cross-examination of each witness on each ground advanced in the
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`joined proceedings).
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`Apple also is willing to accept other conditions on the conduct of the joined
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`proceeding, such as limiting its participation to the unique ground presented in its
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`petitions, and by providing joint comments with Microsoft on the common grounds
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`if so ordered by the Board. See Motorola, IPR2013-00256, Paper 10 at 2-3. For
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`example, if the Board instituted review on Apple’s grounds of invalidity for claim
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`5 along with the grounds advanced by both Apple and Microsoft, Apple would
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`limit its reply to the grounds it alone has advanced, and would either file a joint
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`reply with Microsoft on the remaining grounds, or limit its observations in a
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`separate filing to arguments and/or evidence not advanced or addressed by
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`Microsoft.
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`To the extent that the Board believes that the additional grounds of invalidity
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`of claim 5 based on Provino or Kiuchi, respectively, should not be joined to the
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`Microsoft IPRs because doing so presents a new issue or would prejudice VirnetX,
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`Motion for Joinder in IPR2015-00185 & -00186
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`Apple requests in the alternative that the remainder of the grounds raised in the
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`instant petition be joined with the Microsoft IPRs under Rule 42.122(b).
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`IV. Conclusion
`Because the factors relevant to grant of a motion for joinder strongly support
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`joining IPR2015-00185 and -00186 to IPR2014-00615 & -00618 (which has been
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`consolidated into IPR2014-00615), Petitioner requests this joinder motion be
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`granted.
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`
`
`
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`Dated: October 31, 2014
`
`
`
`
`
`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan (Reg No. 43,401)
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`
`
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`
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`Motion for Joinder in IPR2015-00185 & -00186
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 31st day of October 2014, a copy of this Motion
`for Joinder, has been served in its entirety by Federal Express on the following
`counsel of record for VirnetX:
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`E-mail: josephpalys@paulhastings.com
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`E-mail: naveenmodi@paulhastings.com
`
`Jason Stach
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`901 NEW YORK AVENUE, NW
`WASHINGTON DC 20001-4413
`
`
`Dated: October 31, 2014
`
`
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`
`
`
`
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