Paper No. 2
`
`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. 7,490,151
`Issued: Feb. 10, 2009
`Filed: Sep. 30, 2002
`Inventors: Edmund C. Munger, et al.
`Title: ESTABLISHMENT OF A SECURE COMMUNICATIONS LINK BASED
`DOMAIN NAME (DNS) REQUEST
`____________________
`
`Inter Partes Review No. IPR2015-00187
`__________________________________________________________________
`
`
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`
`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. 7,490,151
`Issued: Feb. 10, 2009
`Filed: Sep. 30, 2002
`Inventors: Edmund C. Munger, et al.
`Title: ESTABLISHMENT OF A SECURE COMMUNICATIONS LINK BASED
`DOMAIN NAME (DNS) REQUEST
`____________________
`
`Inter Partes Review No. IPR2015-00187
`__________________________________________________________________
`
`
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`
`Motion for Joinder in IPR2015-00187
`
`I.
`
`INTRODUCTION
`Apple Inc. (“Apple”) moves to join its concurrently filed petitions for inter
`
`partes review involving U.S. Patent No. 7,490,151 (the ’151 patent) with the inter
`
`partes review requested by Microsoft Corp. (“Microsoft”) against the ’151 patent,
`
`Microsoft Corp. v. VirnetX Inc., IPR2014-00610 (the Microsoft IPR). The Board
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`instituted trial in that proceeding on October 15, 2014.
`
`The Apple petition is timely filed under 35 U.S.C. § 315(c), as it is filed
`
`within one month of the date that the Microsoft IPR was instituted. See e.g.,
`
`IPR2014-00610, Paper 9 at 1, 16. As the statute provides and the Board 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);
`
`Dell Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 at 4-5
`
`(granting joinder beyond the one-year window); Microsoft Corp. v. Proxyconn,
`
`Inc., IPR2013-00109, Paper 15 at 4-5 (same); Rule 42.122(b) (the “time period set
`
`forth in §42.101(b) shall not apply when the petition is accompanied by a request
`
`for joinder.”).
`
`Joinder is appropriate because of the substantial similarity between the
`
`Apple petition and the Microsoft IPR. The Apple petition relies on the same
`
`grounds as those instituted by the Board in the Microsoft IPR. Other factors
`
`relevant to joinder favor granting this motion, including that: (i) the same schedule
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`Motion for Joinder in IPR2015-00187
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`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 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). Because all these factors
`
`support joining these proceedings, Apple requests the Board to grant this motion
`
`for joinder.
`
`II. RELEVANT FACTS
`The ’151 patent is a member of a family of patents owned by VirnetX that
`
`includes U.S. Patent Nos. 6,502,135, 7,418,504, and 7,921,211. The specifications
`
`of these patents are nearly identical. VirnetX has asserted varying sets of claims of
`
`the ’151 and other of its patents against Apple and other entities in numerous
`
`lawsuits. In August of 2010, VirnetX sued Apple and five other entities (the “2010
`
`Litigation”). VirnetX asserted “at least” claims 1, 6, 7, 12, and 13 of the ’151
`
`patent against Apple and claims 1, 6, 7, 12, and 13 against co-defendant Cisco.
`
`After trial, VirnetX obtained a judgment of infringement against Apple on, inter
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`alia, claims 1 and 13 of the ’151 patent. In September 2014, this judgment was
`
`reversed-in-part by a Federal Circuit panel, and VirnetX presently has a pending
`
`request for rehearing en banc. See VirnetX, Inc. v. Cisco Systems, Inc., No. 2013-
`
`1489, 2014 WL 4548722 (Fed. Cir. Sept. 16, 2014).
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`- 2 -
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`
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`Motion for Joinder in IPR2015-00187
`
`On December 31, 2012, VirnetX served a new complaint on Apple asserting
`
`infringement of “at least” claims 1, 6, 7, 12, and 13 of the ’151 patent (the “2012
`
`Litigation”). The new complaint led to a civil action, now pending in the Eastern
`
`District of Texas, that will go to trial on October 13, 2015.
`
`III. ARGUMENT
`Joinder with the Microsoft IPR is justified because each factor identified by
`
`the Board as supporting joinder is met. For example, the Board has explained that
`
`a motion for joinder should: (1) explain the reasons why joinder is appropriate; (2)
`
`identify any new grounds of unpatentability asserted in the petition; (3) explain
`
`what impact (if any) joinder would have on the trial schedule for the existing
`
`review; and (4) address specifically how briefing and discovery may be simplified.
`
`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (representative
`
`order). Each of these factors is addressed below, and, when considered together,
`
`strongly support granting this motion for joinder.
`
`Joinder Is Appropriate
`
`A.
`Joinder between the instant petition and the Microsoft IPR is appropriate
`
`because they involve the same patent, the same art, the same expert declaration,
`
`and the same arguments and legal rationales. Apple’s proposed grounds of
`
`invalidity are identical to Microsoft’s.
`
`Granting joinder would also simplify litigation issues between the parties. A
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`- 3 -
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`Motion for Joinder in IPR2015-00187
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`final written decision from the Board would simplify issues that need to be
`
`resolved during the October 2015 trial. Granting the present joinder motion will
`
`therefore further the statutory purpose of the inter partes review system by
`
`ensuring the “just, speedy, and inexpensive resolution” of a disagreement between
`
`parties over patent validity. See Office Patent Trail Guide, 77 Fed. Reg. 48756,
`
`48758 (Aug. 14, 2012).
`
`Permitting joinder will not prejudice Microsoft. Apple raises no issues that
`
`are not already before the Board, such that joinder would not affect the timing of
`
`the Microsoft IPR or the content of VirnetX’s response. Moreover, Apple is
`
`amendable to coordinating with Microsoft and, as such, Microsoft will not suffer
`
`any additional costs or burdens in preparing motions and arguments.
`
`VirnetX also will suffer no prejudice from joinder. VirnetX has filed
`
`multiple actions against multiple parties over several years, each changing in scope
`
`and the particular claims of the ’151 patent being asserted. Joinder will allow for
`
`the effective resolution of the validity of all the ’151 claims that VirnetX has
`
`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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`petition would be untimely under § 315(b) and Apple would be unable to
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`participate in the inter partes review proceeding related to the ’151 patent. Apple
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`- 4 -
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`Motion for Joinder in IPR2015-00187
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`is involved in other proceedings involving the ’151 patent and other patents in the
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`’151 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
`
`involving the ’151 patent. See Control No. 95/001,697.1 Allowing Apple to
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`participate would allow Apple to ensure the Board does not resolve an issue in this
`
`proceeding that would impact those other proceedings. Accordingly, because of
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`the strong similarity of the instant petition to the Microsoft IPR, and to avoid
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`prejudice to Apple, joinder is appropriate.
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`B. No New Grounds of Unpatentability in the Apple Petitions
`The instant petition proposes institution of trial on the same grounds that
`
`were instituted by the Board in the Microsoft IPR. Petitioner proposes no new
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`grounds of rejection.
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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
`
`the various proceedings because Apple does not raise any issues that are not
`
`already before the Board. VirnetX does not need to specifically address any issues
`
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`1 Control No. 95/001,697 has been merged with 95/001,714 filed by Cisco
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`Systems, Inc.. On April 20, 2012, the Office issued a Non-Final Action rejecting
`
`all claims of the ’151 patent, but has taken no further action on the merits of the
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`matter since then.
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`Motion for Joinder in IPR2015-00187
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`raised by Apple.
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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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`restrictions on discovery as long as they do not preclude Petitioner from effectively
`
`participating in the joined proceeding. For example, Petitioner has not filed a
`
`separate expert declaration, and thus, VirnetX will not need to depose any
`
`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
`
`joined proceedings).
`
`Apple also is willing to accept other conditions on the conduct of the joined
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`proceeding, such as by providing joint comments with Microsoft on the grounds if
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`so ordered by the Board, or by limiting its observations in a separate filing to
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`arguments and/or evidence not advanced or addressed by Microsoft. See
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`Motorola, IPR2013-00256, Paper 10 at 2-3.
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`IV. Conclusion
`Because the factors relevant to grant of a motion for joinder strongly support
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`joining IPR2015-00187 to IPR2014-00610, Petitioner requests this joinder motion
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`be granted.
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`
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`Motion for Joinder in IPR2015-00187
`
`
`
`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
`
`
`
`
`
`
`
`Motion for Joinder in IPR2015-00187
`
`
`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
`
`
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`
`
`
`
`
`Dated: October 31, 2014
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