Paper No. 9
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION INTERNATIONAL
`CORPORATION,
`Patent Owner
`
`Patent No. 7,490,151
`____________________
`
`Inter Partes Review No. IPR2015-00187
`__________________________________________________________________
`
`
`PETITIONER’S REPLY IN SUPPORT OF ITS 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,
`Patent Owner
`
`Patent No. 7,490,151
`____________________
`
`Inter Partes Review No. IPR2015-00187
`__________________________________________________________________
`
`
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
`
`
`
`
`
`
`
`Petitioner’s Reply on Joinder in IPR2015-00187
`
`I.
`
`ARGUMENT
`
`Patent Owner identifies no issues in the petitions that would complicate or
`
`impact the existing proceedings. Instead, Patent Owner presents inaccuracies and
`
`misrepresentations, none of which are relevant to resolving the Joinder Motion.
`
`Patent Owner first contends Apple’s joinder motion should be denied
`
`because Apple’s petitions were filed more than 1 year after service, which Patent
`
`Owner contends makes the petitions “improper” under § 315(c) even though they
`
`were filed with a motion for joinder. See Opp. at 3-7. This is simply wrong –
`
`§ 315(b) expressly provides its 1-year deadline “shall not apply to a request for
`
`joinder under subsection (c).” Patent Owner contends that § 315(b) here is
`
`referring only to the request for joinder, but that reading is illogical because there
`
`is no time limit for requesting joinder in § 315(b). And, in fact, nothing in
`
`§ 315(c) restricts joinder to petitions filed within the one-year window. Rather,
`
`§ 315(c) expressly provides the Director may join “any person who properly files a
`
`petition under section 311” but only if the Director “determines [the petition]
`
`warrants the institution of an inter partes review under section 314.” This sets
`
`two conditions, both of which are met by Apple’s petitions. The first is that the
`
`petition be properly filed, meaning (a) it is filed by “a person who is not the owner
`
`of” the challenged patent, (b) it requests cancellation “as unpatentable 1 or more
`
`claims of a patent on a ground that could be raised under” §§ 102/103 and “only on
`
`- 1 -
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`
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`Petitioner’s Reply on Joinder in IPR2015-00187
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`the basis of prior art consisting of patents and printed publications,” and (c) it is
`
`filed more than 9 months after issuance/reissuance of the patent. Patent Owner
`
`identifies no defect in Apple’s petitions under § 311, and indeed there is none. The
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`other requirement, that institution is warranted under § 314, is also met – the Board
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`has already found these petitions to warrant institution of trial.
`
`The Board also plainly has the authority to consider petitions submitted after
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`the 1-year deadline of § 315(b). Under § 316(12), the Director (and the Board) may
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`“set[] a time period for requesting joinder under section 315(c),” and the Board has
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`done so by promulgating 37 C.F.R. §42.101(b) specifying requests for joinder must
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`be filed within one-month of institution and providing the one-year “time period
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`set forth in shall not apply when the petition is accompanied by a request for
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`joinder.” 37 C.F.R. § 42.122(b); see also IPR2013-00109, Paper 15 (permitting
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`joinder of a party beyond the one-year window); IPR2013-00256, Paper 10 (same);
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`IPR2014-00385, Paper 17 (same). There is nothing ambiguous about the language
`
`of the statute and the Board’s rules, and Apple’s petitions plainly comply.
`
`Patent Owner next complains of “serial harassment,” but it is Patent Owner
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`who has been harassing Apple and others by filing serial complaints in multiple
`
`forums. See Opp. at 1. And Patent Owner’s portrayal of the “facts” borders on an
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`overt misrepresentation. Apple’s first petitions were filed within 1-year of being
`
`served with a complaint for infringement after enactment of the inter partes
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`- 2 -
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`
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`Petitioner’s Reply on Joinder in IPR2015-00187
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`authority. The Board nonetheless found them untimely due to its interpretation of
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`§ 315(b), a finding Apple was statutorily precluded from appealing to the Federal
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`Circuit. Patent Owner also asserts “Apple had RPX Corporation file” petitions –
`
`this grossly misrepresents the record of those proceedings, in which the Board
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`found Apple was a real-party-in-interest based on a contractual relationship with
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`RPX, not that it had anything to do with RPX’s filings of the petitions. And, to the
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`extent equities need to be considered in view of the clear statutory language and
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`rules holding Apple’s petitions proper, those equities compel Apple’s participation.
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`Apple first challenged these patents in inter partes reexamination more than 3
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`years ago, but due to Patent Owner’s obstructionist practices, Patent Owner’s
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`appeals in those proceedings are only now just starting to reach the Board.
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`Patent Owner’s remaining arguments are irrelevant to joinder. It argues
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`Apple will not be prejudiced if joinder is denied because the ’151 patent is
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`undergoing inter partes reexamination. Opp. at 6. That proceeding is currently
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`pending before the Office awaiting an Action Closing Prosecution. As Apple has
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`explained, that proceeding has been pending for over 3 years due in part to Patent
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`Owner’s abusive and frivolous petitions practice—including petitions to extend
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`deadlines, to waive page limits, challenging the status of a reference as prior art,
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`and to challenge evidentiary rulings by appealing to the Director—as part of an
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`effort to prevent the Examiner, and then the Board from reaching a decision before
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`- 3 -
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`
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`Petitioner’s Reply on Joinder in IPR2015-00187
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`one of the pending district court cases becomes final. Apple is turning to the IPR
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`system for the reason it was designed - as an antidote to the susceptibility of the
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`inter partes reexamination system to these types of delay tactics.
`
`II. Conclusion
`The relevant factors strongly support joining IPR2015-00187 to IPR2014-
`
`00610 and consolidating the schedule of the two proceedings.
`
`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
`Attorney for Petitioner
`
`
`
`
`
`Dated: December 10, 2014
`
`
`
`
`
`
`
`
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`- 4 -
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`
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`Petitioner’s Reply on Joinder in IPR2015-00187
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 10th day of December, 2014, a copy of this
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`Petitioner’s Reply in Support of Joinder, has been served in its entirety by e-mail
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`on the following counsel of record for patent owner:
`
`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
`
`
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`
`
`
`Dated: December 10, 2014
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