`
`Trials@uspto.gov
`Date: December 9, 2015
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00810
`Case IPR2015-00811
`Patent 8,868,705 B21
`____________
`
`
`Before KARL D. EASTHOM, JENNIFER S. BISK, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 The parties are not authorized to use this caption.
`
`
`
`IPR2015-00810, IPR2015-0811
`Patent 8,868,705 B2
`
`
`
`INTRODUCTION
`On December 9, 2015, a conference call was held in the above
`proceedings, among counsel for Apple, Inc. (“Petitioner”), counsel for
`VirnetX, Inc. (“Patent Owner”), and Judges Easthom, Bisk, and
`Anderson. Patent Owner requests authorization to file a motion requesting
`permission to file a request for certificate of correction under 37 C.F.R. §
`1.322(a)(3), which applies where the error is made by the Patent Office.
`DISCUSSION
`Patent Owner asserted in its Preliminary Response (“Prelim. Resp.,”
`Paper 3)2 that claims 1 and 21 of the ’705 patent incorrectly includes the
`word “transmitted” instead of “intercepted.” Prelim. Resp. 29, n.3 (citing
`Ex. 1002, 638–639, 641, 655–656). Patent Owner represented in the
`Preliminary Response that the error was made by the Office during
`prosecution. Id. Petitioner agrees the error was made by the Office.
`During the call, the parties stipulated that the change from
`“transmitted” to “intercepted” was not of patentable significance. Based on
`the stipulation, Petitioner agreed to Patent Owner’s filing of a request for
`certificate of correction without the need for the filing of a motion seeking
`our authorization.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`
`
`2 Citations are to IPR2015-00810. IPR2015-00811 raises the identical
`issues.
`
`
`
`2
`
`
`
`IPR2015-00810, IPR2015-0811
`Patent 8,868,705 B2
`
`
`ORDERED that Patent Owner is authorized to file a request for a
`certificate of correction changing the word “transmitted” in claims 1 and 21
`to “intercepted;”
`FURTHER ORDERED that the change of wording does not affect the
`patentable significance of claims 1 and 21; and
`FURTHER ORDERED that a copy of this Order will be filed in
`IPR2015-00810 and IPR2015-00811.
`
`
`
`
`3
`
`
`
`IPR2015-00810, IPR2015-0811
`Patent 8,868,705 B2
`
`PETITIONER:
`Jeffrey P. Kushan
`Scott Border
`Thomas A. Broughan III
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`sborder@sidley.com
`tbroughan@sidley.com
`
`
`
`PATENT OWNER:
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`Jason E. Stach
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`Jason.stach@finnegan.com
`
`
`
`
`4
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
