`Filed: September 25, 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
`
`
`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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`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 IPR2015-00811
`Patent No. 8,868,705
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`Patent Owner’s Request for Rehearing Under 37 C.F.R. § 42.71(d)(1)
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`I.
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`II.
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`Case No. IPR2015-00811
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`TABLE OF CONTENTS
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` Page
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`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
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`LEGAL STANDARD ..................................................................................... 1
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 2
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`A.
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`B.
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`The Board Legally Erred by Overlooking the Absence of
`Evidence in Apple’s Petition Tending to Show That RFC 2401
`Is a Printed Publication ......................................................................... 2
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`The Board Erroneously Found That RFC 2401 Included Indicia
`Sufficient to Establish a Reasonable Likelihood That RFC 2401
`Is a Printed Publication ......................................................................... 7
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`IV. CONCLUSION .............................................................................................. 10
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`Case No. IPR2015-00811
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Apple Inc. v. DSS Technology Management, Inc.,
`IPR2015-00369, Paper No. 9 (June 25, 2015) .............................................. 3, 4, 6
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`Apple Inc. v. DSS Technology Management, Inc.,
`IPR2015-00369, Paper No. 14 (August 12, 2015) ................................. 1, 3, 6, 10
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`Dish Network L.L.C. v. Dragon Intellectual Property, LLC,
`IPR2015-00499, Paper No. 7 (July 17, 2015) ............................................ 3, 4, 10
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`Elec. Frontier Found. v. Pers. Audio, LLC,
`IPR2014-00070, Paper No. 21 (Apr. 18, 2014) .................................................... 9
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`Google Inc. v. Art+Com Innovationpool GMBH,
`IPR2015-00788, Paper No. 7 (September 2, 2015) .................................. 3, 4, 6, 8
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`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009) ........................................................................ 8, 9
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`Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP,
`IPR2014-00514, Paper No. 18 (Sep. 9, 2014) ...................................................... 9
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`Square Inc. v. Unwired Planet, LLC,
`CBM2014-00156, Paper No. 22 (Feb. 26, 2015) ............................................. 4, 6
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`Symantec Corp. v. Trustees of Columbia Univ. in the City of N.Y.,
`IPR2015-00371, Paper No. 13 (July 17, 2015) ...........................................passim
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`Statutes
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`35 U.S.C. § 314(a) ................................................................................................. 4, 6
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`Other Authorities
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`37 C.F.R. § 42.71(c) ................................................................................................... 1
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`37 C.F.R. § 42.71(d) .................................................................................................. 1
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`ii
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`37 C.F.R. § 42.104(b)(5) ........................................................................................ 5, 9
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`Case No. IPR2015-00811
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`iii
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`I.
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`Case No. IPR2015-00811
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Patent Owner VirnetX Inc. requests rehearing of the Patent Trial and Appeal
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`Board’s Decision entered September 11, 2015 (“Decision”), instituting an inter
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`partes review of U.S. Patent No. 8,868,705 (“the ’705 patent”). As explained in
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`Patent Owner’s Preliminary Response (Paper No. 6), the Petition (Paper No. 1)
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`fails to establish a reasonable likelihood of prevailing with respect to any claim of
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`the ’705 patent and should be denied. Nonetheless, the Board instituted review and
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`in doing so, it legally erred and overlooked certain matters with respect to whether
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`Apple met its burden to show that one of the references at issue is a printed
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`publication.
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`II. LEGAL STANDARD
`“A party dissatisfied with a decision may file a request for rehearing.”
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`37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.” Id.
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`Institution decisions are reviewed on rehearing for an abuse of discretion.
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`See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s
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`based on an erroneous conclusion of law or clearly erroneous factual findings,
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`or . . . a clear error of judgment.” Apple Inc. v. DSS Technology Management, Inc.,
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`IPR2015-00369, Paper No. 14 at 3 (August 12, 2015) (hereinafter DSS Technology
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`Management Rehearing Decision) (citing PPG Indus. Inc. v. Celanese Polymer
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`Case No. IPR2015-00811
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`Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988)).
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`Patent Owner respectfully requests rehearing of the Decision because the
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`Board overlooked that the Petition offered no evidence tending to show that RFC
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`2401 (Ex. 1008) is a printed publication. Petitioner made only the naked assertion
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`that “RFC 2401 (Ex. 1008) was published in November 1998.” (Pet. at 24.) The
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`absence of evidence should have been enough for the Board to deny institution.
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`But the Board overlooked this deficiency in Apple’s Petition, and found that Apple
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`“made a threshold showing that RFC 2401 constitutes a prior art printed
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`publication.” (Decision at 11.) In doing so, the Board found that RFC 2401
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`included “indicia suggest[ing] that there is a reasonable likelihood the document
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`was made available to the public . . . .” (Id.) The Board’s own case law, however,
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`contradicts the Board’s conclusion that such “indicia” were sufficient to meet
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`Apple’s burden of establishing that RFC 2401 constitutes a printed publication.
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`A. The Board Legally Erred by Overlooking the Absence of
`Evidence in Apple’s Petition Tending to Show That RFC 2401 Is a
`Printed Publication
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`As explained in the Preliminary Response, to establish that RFC 2401 is a
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`printed publication, the Petitioner must establish that RFC 2401 would have been
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`sufficiently accessible to the public interested in the art on the alleged publication
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`2
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`date. (Prelim. Resp. at 2-3.) Indeed, the Board’s case law is quite clear on this
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`Case No. IPR2015-00811
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`point. See, e.g., DSS Technology Management Rehearing Decision, IPR2015-
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`00369, Paper No. 14 at 5-8 (explaining that for a petition to even be instituted, the
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`Petition must present sufficient evidence tending to show that a publication was
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`publicly accessible as of the alleged publication date); Symantec Corp. v. Trustees
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`of Columbia Univ. in the City of N.Y., IPR2015-00371, Paper No. 13 at 5-9 (July
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`17, 2015) (same); Dish Network L.L.C. v. Dragon Intellectual Property, LLC,
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`IPR2015-00499, Paper No. 7 at 10-11 (July 17, 2015) (same); Google Inc. v.
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`Art+Com Innovationpool GMBH, IPR2015-00788, Paper No. 7 at 6-11 (September
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`2, 2015) (same).
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`Petitioner, however, falls short of meeting its burden because, as noted in
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`Patent Owner’s Preliminary Response, the Petition does nothing more than make
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`the naked assertion that “RFC 2401 (Ex. 1008) was published in November 1998.”
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`(Prelim. Resp. at 3, citing Pet. at 24.) The Board has denied institution in similar
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`situations several times. For instance, in DSS Technology Management, where
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`Apple was also the Petitioner, Apple asserted, without more, that a cited reference
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`(Barber, an archived MIT Thesis) “was published at least as early as April 11,
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`1996.” Apple Inc. v. DSS Technology Management, Inc., IPR2015-00369, Paper
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`No. 9 at 12 (June 25, 2015) (hereinafter DSS Technology Management Institution
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`Decision). There, the Board denied institution because the Petition lacked any
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`3
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`explanation or citation to evidence tending to show that Barber became publicly
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`Case No. IPR2015-00811
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`accessible as of April 11, 1996—the date stamped on the cover of Barber. Id.
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`Citing to 35 U.S.C. § 314(a), which states that an institution decision must be made
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`based on “the information presented in the petition,” the Board explained that
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`Apple’s naked assertion of a publication date without more did not meet the
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`threshold for institution. Id.
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`The Board’s decision in DSS Technology Management is not without
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`precedent. In Square Inc. v. Unwired Planet, LLC, CBM2014-00156, Paper No.
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`22 at 4-5 (Feb. 26, 2015), the Petitioner likewise made a naked assertion that the
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`cited reference (Vazvan) was published on September 30, 1996 (the alleged
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`publication date). The Board denied institution because the Petition lacked any
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`explanation regarding the significance of the September 30, 1996, date printed on
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`the cover of Vazvan. Id. at 5-7. Specifically, the Board explained that “despite the
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`copyright notice in this case, we do not assume facts that Petitioner must prove
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`in its Petition, namely, that the September 30, 1996, ISBN date that appears on the
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`face of Vazvan is its publication date and that, as of that date, Vazvan was publicly
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`accessible.” Id. at 6-7 (emphasis in bold). Several other cases take the same
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`approach as the Board in DSS Technology Management and Square. See, e.g.,
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`Dish Network, Paper No. 7 at 10-11; Google, Paper No. 7 at 6-11; Symantec, Paper
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`No. 13 at 5-9.
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`4
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`Like the Petitions in DSS Technology Management and Square, Apple’s
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`Petition here (similar to its Petition in DSS Technology Management), includes
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`nothing more than a naked assertion that “RFC 2401 (Ex. 1008) was published in
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`November 1998.” (Pet. at 24; see also Prelim. Resp. at 3, 4, 6.) Following the
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`same protocol Apple followed in its petition in DSS Technology Management,
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`Apple did not offer any explanation in its Petition as to why November 1998 is the
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`publication date of RFC 2401 and how RFC 2401 was publicly accessible as of
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`November 1998. (Id.)
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`Nevertheless, the Board found that Apple “made a threshold showing that
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`RFC 2401 constitutes a prior art printed publication.” (Decision at 11.) To
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`support this finding, the Board performed its own analysis of RFC 2401 and
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`assumed that (1) RFC 2401 was actually published on November 1998, and (2)
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`that as of November 1998, RFC 2401 was sufficiently accessible to the public
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`interested in the art—despite that nothing that Apple presented links the November
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`1998 date with public accessibility in RFC 2401. (Id.) In doing so, the Board
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`erred in presuming facts that the Petitioner not only failed to establish, but failed to
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`even attempt to show a reasonable likelihood of, in its Petition. See Square, Paper
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`5
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`No. 22 at 6-7.1 Indeed, the Board’s decision is at odds with its own prior decisions
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`Case No. IPR2015-00811
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`and additionally violates 35 U.S.C. § 314(a), which requires the Board “to decide
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`whether to institute a trial based on ‘the information presented in the petition.’”
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`DSS Technology Management Institution Decision, Paper No. 9 at 12; see also
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`DSS Technology Management Rehearing Decision, Paper No. 14 at 11. Therefore,
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`Patent Owner respectfully submits that the Board legally erred in finding that
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`Apple met its threshold burden of proving that RFC 2401 is a printed publication
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`and available as prior art in this proceeding.
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`1 The Decision cites to Dr. Tamassia’s declaration to support its conclusion. (See
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`Decision at 11, citing Ex. 1005 at ¶¶ 148–155.) But the Board overlooked that the
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`Petition never cites to or discusses this testimony. (Prelim. Resp. at 4, n.1.)
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`Accordingly, it was improper for the Board to give any weight to this testimony.
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`37 C.F.R. § 42.104(b)(5); see also Google, Paper No. 7 at 10 (declining to give any
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`weight to expert testimony regarding public accessibility because it was neither
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`cited nor discussed in the Petition). As discussed in the next section and in the
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`Preliminary Response, even if given weight, Dr. Tamassia’s testimony cannot and
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`does not establish that RFC 2401 was publicly accessible as of November 1998.
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`6
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`B.
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`Case No. IPR2015-00811
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`The Board Erroneously Found That RFC 2401 Included Indicia
`Sufficient to Establish a Reasonable Likelihood That RFC 2401 Is
`a Printed Publication
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`The Board contends that RFC 2401 includes “indicia suggest[ing] that there
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`is a reasonable likelihood the document was made available to the public . . . .”
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`(Decision at 11.) The Board’s rationale for this conclusion is that “[o]n its face . . .
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`RFC 2401 is a dated ‘Request for Comments’ from the ‘Network Working Group,’
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`discussing a particular standardized security protocol for the Internet.” (Id.)
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`Furthermore, “RFC 2401 describes itself as a ‘document [that] specifies an Internet
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`standards track protocol for the Internet community, and requests discussion and
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`suggestions for improvements . . . . Distribution of this memo is unlimited.’” (Id.)
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`The Board’s case law, however, demonstrates that these “indicia” are insufficient
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`to constitute even a preliminary showing that RFC 2401 would have been
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`sufficiently accessible to the public interested in the art as of November 1998.
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`For example, in Symantec, the Petitioner submitted as prior art a thesis
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`whose cover page contained a date “March 1999,” with the further notation
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`“[a]pproved for public release; distribution unlimited.” IPR2015-00371, Paper No.
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`13 at 6-7. The Board acknowledged these notations, but denied institution because
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`Petitioner had “not provided evidence . . . tending to show when the thesis actually
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`may have been released or distributed to the public.” Id. at 8-9 (emphasis added).
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`The Board explained that “[t]he Petition points to no evidence, however, that the
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`7
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`thesis was entered into an electronic database prior to the critical date, much less
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`Case No. IPR2015-00811
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`into a publicly accessible database prior to the critical date.” Id. Similarly, in
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`Google, the Board held that the notation “Approved for Public Release;
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`Distribution Unlimited,” on a cited reference was not a sufficient indicia of public
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`accessibility because “[i]t is not enough that a reference is accessible, we must
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`‘consider whether anyone would have been able to learn of its existence and
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`potential relevance.’” IPR2015-00788, Paper No. 7 at 9-10 (emphasis added),
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`citing In re Lister, 583 F.3d 1307, 1314 (Fed. Cir. 2009).
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`As in Symantec, RFC 2401’s notation that “Distribution of this memo is
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`unlimited” does not indicate that RFC 2401 was “actually . . . released or
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`distributed to the public” to meet the requirement of public accessibility. IPR2015-
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`00371, Paper No. 13 at 8-9 (emphasis added); (see also Prelim. Resp. at 4).
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`Indeed, there are insufficient indicia of public accessibility because there is simply
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`no evidence in RFC 2401 or in the Petition tending to show that any researcher
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`interested in RFC 2401 could “locate and examine the reference.” In re Lister, 583
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`F.3d at 1311.
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`While RFC 2401 is purportedly from a “Network Working Group” and is a
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`“protocol for the Internet community, [requesting] discussion and suggestions for
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`improvements,” these vague statements provide no indication as to who is in the
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`“Network Working Group” or the “Internet community,” what the size of these
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`8
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`groups was as of November 1998, or whether anyone outside these groups could
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`Case No. IPR2015-00811
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`locate and examine RFC 2401 as of November 1998. Id.; (see also Prelim. Resp.
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`at 5, 6, citing Samsung Elecs. Co. v. Rembrandt Wireless Techs., LP, IPR2014-
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`00514, Paper No. 18 at 5-8 (Sep. 9, 2014) (finding that the petitioner had failed to
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`establish that a Draft IEEE Standard qualified as a printed publication because the
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`petitioner did not provide evidence as to whether the Draft Standard was made
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`available to persons outside of the IEEE “Working Group” responsible for the
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`Draft Standard and how members of the public would have known about the Draft
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`Standard); Elec. Frontier Found. v. Pers. Audio, LLC, IPR2014-00070, Paper No.
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`21 at 22-24 (Apr. 18, 2014) (finding that a reference was not a printed publication
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`where a “Petitioner fail[ed] to provide any information regarding [a reference]
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`posting, the group [to which the reference was posted], who is in the group, or the
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`size of the group.”).)
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`Furthermore, like in Symantec, the Petition presents no evidence that the
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`version of RFC 2401 with the November 1998 date on it was placed in a database
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`or similar location that would have allowed anyone interested in RFC 2401 to
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`retrieve and examine it. IPR2015-00371, Paper No. 13 at 8-9. Accordingly, the
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`Board erred in concluding that RFC 2401 includes “indicia” sufficient to constitute
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`a preliminary showing that RFC 2401 would have been sufficiently accessible to
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`the public interested in the art as of November 1998.
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`9
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`Case No. IPR2015-00811
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`Moreover, Dr. Tamassia’s testimony does not provide evidence sufficient to
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`make a preliminary showing that RFC 2401 was publicly accessible as of
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`November 1998.2 This is because neither Dr. Tamassia nor the Petition establish
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`or even allege that Dr. Tamassia has personal knowledge that RFC 2401 was
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`actually released to the public in November 1998. (Prelim. Resp. at 4.). Neither
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`has Dr. Tamassia been established as someone familiar with, let alone an expert in,
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`the workings of the Internet Engineering Task Force (IETF) – the body responsible
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`for the RFCs such that he can opine on when and how RFC 2401 was made
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`available to the public. Accordingly, Dr. Tamassia’s testimony regarding RFC
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`2401’s public accessibility should not be accorded any weight. See DSS
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`Technology Management Rehearing Decision, Paper No. 14 at 7-8; Dish Network,
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`Paper No. 7 at 11.
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`IV. CONCLUSION
`In view of the above, Patent Owner respectfully submits that the Board
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`abused its discretion in finding that Apple made a preliminary showing that RFC
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`2401 is a printed publication. Because all of Apple’s proposed rejections rely on
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`2 As discussed earlier, Dr. Tamassia’s should not be accorded any weight because
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`the Petition never cites to or discusses this testimony. (Prelim. Resp. at 4, n 1.); 37
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`C.F.R. § 42.104(b)(5).
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`10
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`RFC 2401, the Petition should be denied because Apple has failed to show a
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`Case No. IPR2015-00811
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`reasonable likelihood of prevailing with respect to any claim of the ’705 patent.
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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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`Dated: September 25, 2015
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`11
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`Case No. IPR2015-00811
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`Certificate of Service
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`I certify that I caused to be served on the counsel identified below a true and
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`correct copy of the foregoing Patent Owner’s Request for Rehearing Under 37
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`C.F.R. § 42.71(d)(1) by electronic means on September 25, 2015:
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`Counsel for Apple Inc.:
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`iprnotices@sidley.com
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
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`Respectfully submitted,
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` /Joseph Palys/
`Joseph E. Palys
`Reg. No. 46,508
`Counsel for VirnetX Inc.
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`Dated: September 25, 2015