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`Filed on behalf of: VirnetX Inc.
`By:
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`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: josephpalys@paulhastings.com
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`Paper No.
`Filed: January 16, 2015
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: naveenmodi@paulhastings.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`APPLE INC.
`Petitioner
`v.
`VIRNETX INC.
`Patent Owner
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`
`
`Case IPR2015-00188
`Patent 7,418,504
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`
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`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 7,418,504
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`Case No. IPR2015-00188
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`Table of Contents
`Introduction ...................................................................................................... 1
`I.
`II. Apple Remains Time-Barred and Institution Is Precluded by Statute ............ 2
`III. Apple’s Petition Should Be Denied Under 35 U.S.C. §§ 315(d) and
`325(d), Consistent with Board Precedent and Policy ...................................... 3
`A. Apple’s Petitions Are the Eleventh and Twelfth Inter Partes
`Office Challenges to the ’504 Patent .................................................... 3
`B. Denial of the Petition Under 35 U.S.C. §§ 315(d) and 325(d) Is
`Authorized and Appropriate .................................................................. 6
`Institution Would Prejudice VirnetX, Yet Denial of Institution Would
`Not Unduly Prejudice Apple .........................................................................13
`Conclusion .....................................................................................................15
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`IV.
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`V.
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`i
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`Case No. IPR2015-00188
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`Butamax Adv. Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581, Paper No. 8 (Oct. 14, 2014) ...................................................... 3
`Conopco, Inc. v. Procter & Gamble Co.,
`IPR2014-00507, Paper No. 17 at 2 (July 7, 2014) ........................................... 8, 9
`Conopco, Inc. v. Procter & Gamble Co.,
`IPR2014-00628, Paper No. 21 at 11 (Oct. 20, 2014) ................................... 11, 12
`Medtronic, Inc. v. Nuvasive, Inc.,
`IPR2014-00487, Paper No. 8 (Sept. 11, 2014) ............................................... 9, 10
`Prism Pharma Co., Ltd. v. Choongwae Pharma Corp.,
`IPR2014-00315, Paper No. 14 (July 8, 2014) .................................................... 11
`SAS Institute, Inc. v. Complementsoft, LLC,
`IPR2013-00581, Paper No. 15 (Dec. 30, 2013) .................................................. 15
`Standard Innovation Corp. v. Lelo, Inc.,
`IPR2014-00907, Paper No. 10 (Dec. 1, 2014) .............................................. 12, 14
`Unified Patents, Inc. v. Personal Web Techs., LLC et al.,
`IPR2014-00702, Paper No. 13 (July 24, 2014) ............................................ 10, 11
`VirnetX, Inc. v. Cisco Sys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014) ............................................................................ 4
`Federal Statutes
`35 U.S.C. § 311 .......................................................................................................... 2
`35 U.S.C. § 314 .......................................................................................................... 2
`35 U.S.C. § 315(b) ....................................................................................... 2, 3, 5, 13
`35 U.S.C. § 315(c) ................................................................................................. 2, 3
`35 U.S.C. § 315(d) ............................................................................................passim
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`ii
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`Case No. IPR2015-00188
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`35 U.S.C. § 325(d) ............................................................................................passim
`Regulations
`37 C.F.R. § 42.1(b) .................................................................................................. 12
`37 C.F.R. § 42.11 ..................................................................................................... 12
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`iii
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`I.
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`Case No. IPR2015-00188
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`Introduction
`Board decisions and sound policy support denying the eleventh and twelfth
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`Office challenges to U.S. Patent No. 7,418,504 (“the ’504 patent”)—Apple Inc.’s
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`Petition here and in IPR2015-00189.
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`Apple itself initiated seven of these twelve challenges, either by itself or, as
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`the Board found, through its “proxy” RPX Corporation. (IPR2014-00176, Paper
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`No. 57 at 7 (redacted) (June 5, 2014) (finding that “RPX is Apple’s proxy”).)
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`Apple filed two IPR petitions, which were both denied as time-barred. RPX filed
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`two more IPR petitions, which were denied because Apple was an unnamed and
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`time-barred real party-in-interest.
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` Apple also
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`initiated an
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`inter partes
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`reexamination of the ’504 patent.
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`Three proceedings involving the ’504 patent are now pending before the
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`Office. These include Apple’s own inter partes reexamination, a separate inter
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`partes reexamination initiated by Cisco Systems, Inc., and two IPRs filed by
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`Microsoft Corporation that have been consolidated with one another.1 Because
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`Apple’s Petition here and that in IPR2015-00189 seek to essentially replicate
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`issues and evidence already before the Office, they should be denied under
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`35 U.S.C. §§ 315(d) and 325(d).
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`1 Microsoft and VirnetX have settled and have filed a joint motion to
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`terminate in the consolidated IPR. The motion to terminate is pending.
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`II. Apple Remains Time-Barred and Institution Is Precluded by Statute
`Apple’s earlier petitions challenging the ’504 patent in IPR2013-00393 and
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`IPR2013-00394, and those filed by RPX in IPR2014-00176 and IPR2014-00177,
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`were correctly denied as time-barred under 35 U.S.C. § 315(b). (IPR2013-00393,
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`Paper No. 17 (December 18, 2013); IPR2013-00394, Paper No. 15 (December 18,
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`2013); IPR2014-00176, Paper No. 57 at 3 (redacted) (June 5, 2014); IPR2014-
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`00177, Paper No. 57 at 3 (June 5, 2014).) This is a deficiency that Apple cannot
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`cure by filing further petitions and motions for joinder in this matter and IPR2015-
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`00189.
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`Apple’s joinder motion does not alter the outcome dictated by 35 U.S.C.
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`§ 315(b). Under the plain language of that statute, because Apple was served with
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`a complaint on February 4, 2011—more than one year before filing its Petition
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`here—institution is barred. See Paper No. 9 at 3-7. And under 35 U.S.C. § 315(c),
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`joinder is only permitted if the Board first determines that Apple’s petition
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`warrants institution. See id.; 35 U.S.C. § 315(c) (“the Director, in his or her
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`discretion, may join . . . any person who properly files a petition under section 311
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`that the Director . . . determines warrants the institution of an inter partes review
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`under section 314”). The Board has acknowledged this fact, stating that “[t]he
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`statute does, however, set forth at least one circumstance in which we do not have
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`the discretion to join a party: if the Board determines that the second petition does
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`2
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`not warrant institution.” Butamax Adv. Biofuels LLC v. Gevo, Inc., IPR2014-
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`Case No. IPR2015-00188
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`00581, Paper No. 8 at 7 (Oct. 14, 2014) (citing and quoting 35 U.S.C. § 315(c))
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`(emphasis in original). Because Apple remains time-barred to challenge the ’504
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`patent via inter partes review, its Petition does not warrant institution generally
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`and institution is also impossible under 35 U.S.C. § 315(c). See Paper No. 9 at 3-7.
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`For the threshold reason of 35 U.S.C. § 315(b)’s time-bar, and 35 U.S.C.
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`§ 315(c)’s precondition for joinder that a petition must warrant institution, Apple’s
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`Petition must be denied.
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`III. Apple’s Petition Should Be Denied Under 35 U.S.C. §§ 315(d) and
`325(d), Consistent with Board Precedent and Policy
`Given the number of serial challenges filed against the ’504 patent, and the
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`fact that three are currently pending at the Office—including one initiated by
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`Apple itself—the Board should invoke its authority under 35 U.S.C. §§ 315(d) and
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`325(d) to deny institution of these eleventh and twelfth challenges.
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`A. Apple’s Petitions Are the Eleventh and Twelfth Inter Partes Office
`Challenges to the ’504 Patent
`Apple challenged the validity of the ’504 patent in a litigation that included a
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`jury trial. In that litigation, VirnetX Inc. v. Cisco Sys. Inc. et al., Case No. 6:10-cv-
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`00417 (E.D. Tex.), Apple failed to establish that any claim of the ’504 patent was
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`invalid. (Ex. 2003, Jury Verdict Form (E.D. Tex. Nov. 6, 2012).) Apple appealed
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`to the U.S. Court of Appeals for the Federal Circuit, which affirmed that “none of
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`3
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`the asserted claims are invalid[.]” VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308,
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`1313-14 (Fed. Cir. 2014). In addition to these litigation challenges involving the
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`’504 patent,
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`twelve
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`inter partes challenges have been filed within
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`the
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`Officeseven by Apple itselfas discussed below.
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`Before the trial noted above, Apple filed a request for inter partes
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`reexamination of the ’504 patent, which the Office assigned Control No.
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`95/001,788 (“the ’1,788 reexamination”). That reexamination is on appeal to the
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`Board, and involves the Provino reference that Apple asserts here and Microsoft
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`asserts in the consolidated IPR2014-00614 proceeding. (Ex. 1016 at 11-14.)
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`A second request for inter partes reexamination of the ’504 patent was filed
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`by Cisco and accorded Control No. 95/001,851 (“the ’1,851 reexamination”). That
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`proceeding is currently pending at the Office, and involves the same Kiuchi
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`reference asserted in Apple’s Petition here and in Microsoft’s consolidated
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`IPR2014-00614 proceeding. (Ex. 1017 at 19-20.)
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`The first IPR petition against the ’504 patent was filed by New Bay Capital,
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`LLC on June 23, 2013. That proceeding was terminated in favor of VirnetX,
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`pursuant to New Bay’s request for adverse judgment. (IPR2013-00377, Paper No.
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`14 (Nov. 12, 2013).)
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`Apple filed two IPR petitions against the ’504 patent on July 1, 2013, in
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`IPR2013-00393 and IPR2013-00394. The Board denied these petitions because
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`Apple was time-barred under 35 U.S.C. § 315(b) from seeking IPR of the ’504
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`patent. (IPR2013-00393, Paper No. 17 (Dec. 18, 2013), reh’g denied Paper No. 21
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`(Feb. 12, 2014); IPR2013-00394, Paper No. 15 (Dec. 18, 2013), reh’g denied
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`Paper No. 19 (Feb. 12, 2014).)
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`RPX Corporation, which the Board found was acting as a proxy for time-
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`barred Apple, filed two more IPR petitions against the ’504 patent on November
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`20, 2013, in IPR2014-00176 and IPR2014-00177. Apple paid RPX to file IPR
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`petitions against several VirnetX patents, including the ’504 patent, but failed to
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`identify itself as a real party-in-interest in those petitions. (IPR2014-00176, Paper
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`No. 57 at 4-5, 10 (redacted) (June 5, 2014).) As VirnetX explained, Apple tried to
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`hide its involvement in the RPX proceedings in several ways, giving the false
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`impression that Apple and RPX were unconnected entities without a privity or real
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`party-in-interest relationship. (IPR2014-00176, Paper No. 55 at 14 (redacted)
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`(Mar. 6, 2014).) Despite these efforts, the Board found that Apple was a real
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`party-in-interest for RPX’s petitions, and accordingly denied institution given
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`Apple’s time-barred status. (IPR2014-00176, Paper No. 57 at 10 (redacted) (June
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`5, 2014).)
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`More recently, Microsoft filed three petitions challenging the ’504 patent,
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`including those in IPR2014-00612, IPR2014-00613, and IPR2014-00614. On
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`October 15, 2014, the Board instituted trials based on the IPR2014-00613 and
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`5
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`IPR2014-00614 petitions, and consolidated the grounds into a single trial.
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`(IPR2014-00614, Paper No. 9 (Oct. 15, 2014).)
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`Finally, on October 30, 2014, Apple filed two further IPR petitions,
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`including this Petition and that in IPR2015-00189. While Apple’s petitions
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`propose a challenge to a claim of the ’504 patent that Microsoft does not challenge
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`(claim 5), Apple acknowledges that its petitions are otherwise “identical” to
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`Microsoft’s corresponding petitions. (Paper No. 4 at 4; IPR2015-00189, Paper No.
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`4 at 4.) In fact, not only are the grounds nearly identical, the declarations
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`submitted in each proceeding are also duplicates. (See Exs. 1021, 1023.) Thus, for
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`Apple’s own sixth and seventh Office challenges to the ’504 patentthe eleventh
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`and twelfth Office challenges overallApple essentially replicates issues and
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`evidence that the Office is considering in ongoing proceedings. If the Board grants
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`the pending motion to terminate IPR2014-00614, Apple’s petitions would still be
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`duplicative of the ongoing Office challenges to the ’504 patent, including Apple’s
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`own ongoing inter partes reexamination.
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`B. Denial of the Petition Under 35 U.S.C. §§ 315(d) and 325(d) Is
`Authorized and Appropriate
`In situations less duplicative, with fewer prior challenges, and with less
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`burden for the Board and the parties, the Board has exercised its discretion under
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`35 U.S.C. §§ 315(d) and 325(d) to deny IPR petitions. The Board should likewise
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`do so here.
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`Case No. IPR2015-00188
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`Discretionary authority to avoid an avalanche of proceedings comes from
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`35 U.S.C. § 315(d), which allows the Board to “terminat[e]” one proceeding when
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`another proceeding “involving the patent is before the Office.” Under 35 U.S.C.
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`§ 325(d), the Board has similar authority to “terminate[e]” a serial proceeding, and
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`may also consider, as part of “determining whether to institute” a proceeding,
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`whether “the same or substantially the same prior art or arguments previously were
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`presented to the Office.”
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`The Board’s discretionary authority to deny institution of this Petition is
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`amply justified. Not one, but three pending proceedings are in progress before the
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`Office involving the ’504 patent. These three proceedings include two inter partes
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`reexaminations (the ’1,851 and ’1,788 reexaminations) and one consolidated IPR
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`trial (IPR2014-00614) based on two separate IPR petitions. Moreover, the grounds
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`advanced by Apple in its petitions are, with the exception of newly challenged
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`claim 5, admittedly “identical” to those involved in the pending IPR2014-00614
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`trial. The ’1,851 and ’1,788 reexaminations also involve the same primary
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`references, Kiuchi and Provino, that Apple identifies in its petitions. Accordingly,
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`each of 35 U.S.C. §§ 315(d)’s and 325(d)’s preconditions for the Board to deny
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`Apple’s Petition is present. Declining to do so will encourage serial challenges to
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`the same patent through inter partes reviews—as Apple has done here—which
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`unnecessarily burdens the resources of the Board and patent owners.
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`Case No. IPR2015-00188
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`This case presents even more compelling reasons for the Board to exercise
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`its discretion than in prior cases where the Board has denied institution. Here,
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`there is (i) a longer line of serial Office challenges to the ’504 patent, (ii) more
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`involvement by the petitioner (Apple) itself in those previous challenges, and
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`(iii) more duplicative proposed grounds than in prior cases where the Board has
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`denied serial petitions.
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`For example, in Conopco, Inc. v. Procter & Gamble Co., IPR2014-00507,
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`Paper No. 17 at 2 (July 7, 2014), the Board considered a petition directed to a set
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`of challenged claims for which the Board denied institution based on an earlier
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`petition. The second petition asserted 11 prior art references, seven of which were
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`not asserted in the earlier petition. Id. at 6. Like Apple here, the petitioner sought
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`joinder based on the second petition with an instituted proceeding that was based
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`on claims from the earlier petition. Id. at 2. The Board denied institution under
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`35 U.S.C. § 325(d), finding that “the instant Petition presents ‘the same or
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`substantially the same prior art or arguments’ that were advanced in the” previous
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`petition. Id. at 7-8.
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`Even though most of the prior art references were newly raised, the Board
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`denied institution. Here, with the exception of claim 5, Apple raises zero
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`references, grounds, or pieces of evidence that were not in Apple’s and Microsoft’s
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`prior petitions for IPR. Id. at 6. And while the petition in Conopco was directed to
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`different claims than those in the instituted proceeding, here Apple seeks to
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`challenge the same claims of the ’504 patent already involved in IPR2014-00614
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`(again with the exception of claim 5). Id. Further, in Conopco, there was only one
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`prior Office proceeding that raised “the same or substantially the same prior art or
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`arguments”—here, there are ten prior Office proceedings, plus Apple’s earlier jury
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`trial. Id. at 5-8.
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`The Board similarly rejected a serial petition under 35 U.S.C. § 325(d) in
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`Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487, Paper No. 8 (Sept. 11, 2014).
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`In that case, similar to Apple here, the petitioner had filed two previous IPR
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`petitions. Id. at 2. One petition was instituted and the other was denied. Id. The
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`petitioner then filed a third petition, similar to the rejected petition, but with
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`purported “new evidence and argument” allegedly “not redundant” in view of the
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`grounds in the instituted proceeding. Id. at 6. The Board rejected the third
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`petition, because the petitioner (like Apple here) “does not provide any specific
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`reasoning to support” a finding of non-redundancy. Id. at 6-7.
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`The same reasons that warranted denial of the petition in Medtronic are
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`more strongly present here. While the grounds at issue in Medtronic were
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`characterized as providing “new evidence and argument,” here Apple admits that
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`its proposed grounds are wholly redundant of the grounds involved in IPR2014-
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`00614, with the exception of Apple’s new challenge to claim 5. The primary
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`references in Apple’s petitions are also already before the Board in the inter partes
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`Case No. IPR2015-00188
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`reexaminations. Apple’s grounds fall more squarely within 35 U.S.C. § 325(d)’s
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`authorization to deny grounds based on “the same or substantially the same prior
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`art or arguments” raised in a previous Office proceeding than those at issue in
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`Medtronic. Medtronic also involved only one prior Office proceeding in contrast
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`to the multitude of prior proceedings present here.
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`The Board also denied a serial petition in Unified Patents, Inc. v. Personal
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`Web Technologies, LLC et al., IPR2014-00702, Paper No. 13 at 2-3 (July 24,
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`2014). The Board considered whether to institute an IPR where three other IPR
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`petitions, and one request for ex parte reexamination, had previously been filed by
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`other parties. Id. Like Apple did here, the petitioner in Unified Patents filed a
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`motion seeking joinder to an instituted IPR. Id. at 3. The Board denied institution
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`under 35 U.S.C. § 325(d), reasoning that the prior IPRs involved “the same
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`reference being asserted in this proceeding,” and that one or more of the prior IPRs
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`would thus address the same issues. Id. at 7-8.
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`While one of the IPRs addressed in Unified Patents was already at the
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`appeal stage, the facts present here provide even stronger reasons to deny
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`institution. First, Apple’s petitions are the eleventh and twelfth Office challenges
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`to the ’504 patentthree times the number of serial proceedings addressed in
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`Unified Patents. Id. at 2-3. And while the petitioner in Unified Patents had not
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`filed any of the prior serial petitions itself, here Apple itself filed three of the prior
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`Office challenges involving the ’504 patent. Just as the petition in Unified Patents
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`was denied in view of “the efficient administration of the Office,” here the same
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`factors present a stronger basis for denying Apple’s Petition.
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`The Board has also exercised its discretion under 35 U.S.C. § 325(d) to deny
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`IPR petitions based on prior examination (as opposed to reexamination or IPR) of
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`the challenged patent. See, e.g., Prism Pharma Co., Ltd. v. Choongwae Pharma
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`Corp., IPR2014-00315, Paper No. 14 at 2, 12-13 (July 8, 2014) (denying IPR
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`petition under 35 U.S.C. § 325(d) because “[t]he same prior art . . . and arguments
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`substantially the same as Petitioner’s current contention” were raised during
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`prosecution.) Here, an even stronger basis to invoke 35 U.S.C. §§ 315(d) and
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`325(d) is present, as the previous Office proceedings involving the ’504 patent
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`were all inter partes in nature, permitting the challenger, including Apple itself in
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`its ongoing reexamination, a full opportunity to participate in the proceedings and
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`be heard.
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`The Board has further noted that “the interests of fairness, economy, and
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`efficiency support” denying institution (though it is not statutorily barred) where a
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`petitioner, in similar situations, files a second petition relying on references and
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`arguments it could have raised in a first, unsuccessful petition. See Conopco, Inc.
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`v. Procter & Gamble Co., IPR2014-00628, Paper No. 21 at 11 (Oct. 20, 2014); see
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`11
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`also Standard Innovation Corp. v. Lelo, Inc., IPR2014-00907, Paper No. 10 at 4
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`Case No. IPR2015-00188
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`(Dec. 1, 2014) (denying institution where “[n]either the Petition nor the Motion for
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`Joinder presents cogent argument or evidence to explain why the grounds of
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`unpatentability asserted in the Petition could not have been asserted in the
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`[previous] IPR.”). To allow otherwise would encourage the filing of requests that
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`“hold[] back prior art for use in successive attacks, should the first petition be
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`denied.” Conopco, IPR2014-00628, Paper No. 21 at 11. This is Apple’s seventh
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`successive Office attack on the ’504 patent. Here too, “the interests of fairness,
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`economy, and efficiency” support denying institution.
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`These decisions demonstrate that the Board has appropriately used its
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`statutory authority to prevent serial harassment of patent owners and to preclude
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`petitioners from pursuing unnecessarily burdensome and duplicative proceedings
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`before the Office. In exercising its discretion whether to institute a trial here, the
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`Board should also consider Apple’s conduct in the prior proceedings filed by RPX.
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`Not only was Apple not named as a real party-in-interest in the RPX petitions, it
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`tried to hide its involvement in those proceedings. Denial of Apple’s new petitions
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`pursuant to the Board’s discretionary authority would further the Office’s policies
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`requiring candor by parties and accuracy in parties’ mandatory notices under
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`37 C.F.R. § 42.11 and promote the goal of “just” proceedings stated in 37 C.F.R.
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`§ 42.1(b).
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`Case No. IPR2015-00188
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`Given the extreme facts present here, the Board should similarly exercise its
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`discretion to deny institution.
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`IV.
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`Institution Would Prejudice VirnetX, Yet Denial of Institution Would
`Not Unduly Prejudice Apple
`Instituting this proceeding would prejudice VirnetX in several ways. First,
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`allowing another party (especially one who is time-barred) to join the already-
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`consolidated IPR2014-00614 proceeding would further tip the scale of resources in
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`favor of the petitioner. Second, by joining Apple despite the time-bar of 35 U.S.C.
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`§ 315(b), an unjust outcome could occur where Microsoft is terminated from the
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`proceeding, leaving Apple as sole petitioner. This is not permitted by statute for
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`the reasons VirnetX explained above and in its opposition to Apple’s motion for
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`joinder, but if the Board permits it to occur, it would wholly circumvent the 35
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`U.S.C. § 315(b) time-bar. Third, VirnetX is faced with devoting time and money
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`to yet another serial challenge involving the ’504 patent. This is all despite
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`Apple’s previous jury trial, Federal Circuit appeal, inter partes reexamination, and
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`four IPR petitions, and its inability to pursue its own IPR proceeding because it is
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`time-barred.
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`If Congress’s statements about avoiding serial harassment of patent owners
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`are to have any meaning, given the extreme facts of this case, the Board must
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`utilize the tools Congress gave it to deny these IPRs. As the Board recognized
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`when denying Apple’s previous IPR petitions filed by RPX, underlying the AIA is
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`13
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`“express legislative intent concerning the need for quiet title.” (IPR2014-00176,
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`Case No. IPR2015-00188
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`Paper No. 57 at 10 (redacted) (June 5, 2014).) With Apple now filing eleventh and
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`twelfth inter partes Office challenges to the ’504 patent, Apple asks for its private
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`interests to trump Congressional intent.
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`Although VirnetX would be unduly prejudiced, Apple would face no undue
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`prejudice from denial of the Petition. Apple has now filed seven inter partes
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`Office challenges to the ’504 patent, either by itself or as a real party-in-interest
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`through proxy RPX. One of these proceedings (the ’1,788 reexamination) is
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`ongoing. Apple also deployed a litigation attack to the validity of the ’504 patent,
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`but Apple’s validity arguments were rejected by both the jury and the Federal
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`Circuit.
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`While Apple contends that denial of institution would prejudice Apple, its
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`assertion is irrational. Apple asserts prejudice based on being “unable to
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`participate” in IPRs involving the ’504 patent. (Paper No. 4 at 5.) This could only
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`make sense if Apple had some right to participate in the IPRs, which it does not,
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`given its time-barred status. The Board has rejected similar arguments of prejudice
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`based on a petitioner’s inability to challenge certain claims of a patent. See, e.g.,
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`Standard Innovation Corp. v. Lelo, Inc., IPR2014-00907, Paper No. 10 at 10 (Dec.
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`1, 2014). Moreover, Apple has participated all along in its reexamination of the
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`14
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`’504 patent, so denying institution here would not leave Apple without its own
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`Case No. IPR2015-00188
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`
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`challenge to the ’504 patent.
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`Apple also argues it would be prejudiced because denying institution would
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`not allow “Apple to ensure the Board does not resolve an issue in this proceeding
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`that would impact” the pending reexaminations involving the ’504 patent. (Paper
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`No. 4 at 5-6.) Apple’s supposition that it may “ensure” the Board does or does not
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`do something is both an affront to the Board and an overstatement of Apple’s
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`capabilities.
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`Beyond the prejudice VirnetX would suffer from institution and Apple’s
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`lack of prejudice, “the efficient administration of the Office” and the strong
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`concern about “serial petitions challenging claims already involved in an instituted
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`proceeding” underpinning 35 U.S.C. §§ 315(d) and 325(d) should control in this
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`case. See SAS Institute, Inc. v. Complementsoft, LLC, IPR2013-00581, Paper No.
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`15 at 22-23 (Dec. 30, 2013). Consistent with these principles and the cases
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`applying them discussed above, Apple’s Petition should be denied.
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`V. Conclusion
`For all of the above reasons, VirnetX respectfully requests that the Board
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`deny Apple’s Petition.2
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`2 If trial is instituted, VirnetX may raise additional arguments as to why
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`Apple has failed to carry its burden and why the claims should be confirmed.
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`15
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`Dated: January 16, 2015
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`
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`Case No. IPR2015-00188
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`Respectfully submitted,
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`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
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`Counsel for VirnetX Inc.
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`16
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`Dated: January 16, 2015
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`
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`Case No. IPR2015-00188
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that I caused to be served
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`on the counsel for Petitioner a true and correct copy of the foregoing,
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`Patent Owner’s Preliminary Response to Petition for Inter Partes Review of
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`U.S. Patent No. 7,418,504, by electronic means on January 16, 2015 at the
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`following addresses of record:
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`Jeffrey P. Kushan
`Joseph A. Micallef
`Sidley Austin LLP
`jkushan@sidley.com
`jmicallef@sidley.com
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`Respectfully submitted,
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`By: /Joseph E. Palys/
`Joseph E. Palys
`Counsel for VirnetX Inc.
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