`Tel: 571-272-7822
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`Paper 13
`Entered: October 1, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`APPLE INC.,
`Petitioner,
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`v.
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`VIRNETX INC.,
`Patent Owner.
`_______________
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`Case IPR2015-00810
`Patent 8,868,705 B2
`_______________
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`Before KARL D. EASTHOM, JENNIFER S. BISK, and
`GREGG I. ANDERSON, Administrative Patent Judges.
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`ANDERSON, Administrative Patent Judge.
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`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
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`IPR2015-00810
`Patent 8,868,705 B2
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`SUMMARY
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`Patent Owner, VirnetX Inc., requests rehearing of the Board’s decision
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`(Paper 8) (“Decision to Institute or Dec.”), entered September 11, 2015, instituting
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`inter partes review of U.S. Patent 8,868,705 (Ex. 1001, “”the ’705 patent”). In the
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`Decision to Institute, we determined, on the present record, that Petitioner, Apple
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`Inc., had shown a reasonable likelihood that claims 1–4, 6–10, 12–26, and 28–34
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`would have been obvious over Beser1 combined with RFC 24012 and that claims 5,
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`11, and 27 would have been obvious over Beser, RFC 2401 and Brand.3 Paper 12
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`(“Req. Reh’g”). For the reasons that follow, Patent Owner’s request for rehearing
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`is denied.
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`DISCUSSION
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`The applicable standard for granting a request for rehearing of a petition
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`decision is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements for a
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`rehearing are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part:
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`A party dissatisfied with a decision may file a request for rehearing,
`without prior authorization from the Board. The burden of showing a
`decision should be modified lies with the party challenging the decision.
`The request must specifically identify all matters the party believes the
`Board misapprehended or overlooked, and the place where each matter
`was previously addressed in a motion, an opposition, or a reply.
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`Patent Owner argues that the Board erred by (1) overlooking the absence of
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`evidence in Apple’s Petition tending to show that RFC 2401 is a printed
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`publication (Req. Reh’g. 2–6) and (2) finding that RFC 2401 included indicia
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`1 U.S. Patent No. 6,496,867 B1 (Ex. 1007) (“Beser”).
`2 S. Kent and R. Atkinson, Security Architecture for the Internet Protocol, Request
`for Comments: 2401, BBN Corp., November 1998 (Ex. 1008) (“RFC 2401”).
`3 U.S. Patent No. 5,237,566 (Ex. 1012) (“Brand”).
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` 2
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`IPR2015-00810
`Patent 8,868,705 B2
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`sufficient to establish a reasonable likelihood that RFC 2401 is a printed
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`publication (id. at 7–10). Patent Owner bases its argument on its assertion that
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`“[t]he Board’s own case law . . . contradicts the Board’s conclusion that [the
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`indicia on the face of RFC 2401] were sufficient to meet Apple’s burden of
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`establishing that RFC 2401 constitutes a printed publication.” Req. Reh’g 2; see
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`also id. 2–10 (discussing several non-precedential Board cases with different facts
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`in which institution was denied on the reference at issue).
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`We are not persuaded that Patent Owner has identified any matters that we
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`misapprehended or overlooked.4 Instead, Patent Owner’s request reiterates
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`arguments contained in its Preliminary Response that we have already considered.
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`See Dec. 8–9 (acknowledging Patent Owner’s arguments related to RFC 2401’s
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`status as a printed publication). A request for rehearing is not an opportunity to
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`express disagreement with a decision.
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`Nonetheless, as noted in our Decision to Institute, we are persuaded that the
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`record contains enough evidence on this issue to proceed to a trial. Id. at 8–9. The
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`reasonable likelihood standard for instituting inter partes review asks whether the
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`same preponderance standard is reasonably likely to be met at a later time. Thus,
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`for institution purposes, we assess the persuasiveness of the petitioner’s evidence
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`while “recognizing that [we are] doing so without all evidence that may come out
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`at trial.” New England Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878, 883
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`(Fed. Cir. 1992) (reviewing a decision on a preliminary injunction where patentee
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`has the burden of demonstrating “that it will likely succeed on all disputed liability
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`4Patent Owner questions our citation to the Tamassia Declaration when it was not
`cited in the Petition. Req. Reh’g. 6, n1. However, Patent Owner raised the issue
`when it cited to paragraph 152 of the Tamassia Declaration in its Preliminary
`Response. Prelim. Resp. 4.
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` 3
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`IPR2015-00810
`Patent 8,868,705 B2
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`issues at trial”). Here, we have not decided that Petitioner has shown, for purposes
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`of a final decision, that RFC 2401 was publicly available as of the critical date, but
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`instead, that there is a reasonable likelihood that Petitioner may yet, during the
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`course of an inter partes review trial, adduce evidence sufficient to prove that fact.
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`Indeed, we specifically noted that Patent Owner will have further opportunities to
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`contest these issues during the trial, if desired. Dec. 9, n.8. We are not persuaded
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`of error in that decision.
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`ORDER
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`Patent Owner’s request for rehearing is denied.PETITIONER:
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`Jeffrey Kushan
`IPRNotices@sidley.com
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`Thomas A. Broughan, III
`tbroughan@sidley.com
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` 4
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`PATENT OWNER:
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`Joseph Palys
`josephpalys@paulhastings.com
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`Naveen Modi
`naveenmodi@paulhastings.com
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`Jason Stach
`jason.stach@finnegan