`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 IPR2015-00811
`Patent 8,868,705 B2
`_______________
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`
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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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`IPR2015-00811
`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”). Paper
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`12 (“Req. Reh’g”). In the Decision to Institute, we determined, on the present
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`record, that Petitioner Apple Inc. had shown a reasonable likelihood that: (1)
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`claims 1–3, 6, 14, 16–25, 28, 31, 33, and 34 would have been obvious over
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`Aventail Connect1 and RFC 24012; (2) claims 8–10, 12, 15, 30, and 32 would have
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`been obvious over Aventail Connect, RFC 2401, and RFC 25433; (3) claims 4, 5,
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`7, 26, 27, and 29 would have been obvious over Aventail Connect, RFC 2401, and
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`Brand4; and (4) claims 11 and 13 would have been obvious over Aventail Connect,
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`RFC 2401, RFC 2543, and Brand. Dec. 24. For the reasons that follow, Patent
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`Owner’s request for rehearing 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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`1 Aventail Connect v3.01/v2.51 Administrator’s Guide (“Aventail Administrator
`Guide,” Ex. 1009), Aventail Connect v3.01/v2.51 User’s Guide (1996-
`1999)(Exhibit 1010), and Aventail ExtraNet Center v3.0 Administrator’s Guide
`(NT and UNIX)(Exhibit 1011).
`2 S. Kent and R. Atkinson, Security Architecture for the Internet Protocol, Request
`for Comments: 2401, BBN Corp., November 1998 (Ex. 1008) (“RFC 2401”).
`3Handley, M., et al., SIP: Session Initiation Protocol, Request for Comments: 2453
`(Ex. 1013)(“RFC 2453).
`4 U.S. Patent No. 5,237,566 (Ex. 1012) (“Brand”).
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`IPR2015-00811
`Patent 8,868,705 B2
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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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`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.5 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. 10–11 (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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`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. 5.
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`IPR2015-00811
`Patent 8,868,705 B2
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`record contains enough evidence on this issue to proceed to a trial. Id. at 10–11.
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`The reasonable likelihood standard for instituting inter partes review asks whether
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`the same preponderance standard is reasonably likely to be met at a later time.
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`Thus, for institution purposes, we assess the persuasiveness of the petitioner’s
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`evidence while “recognizing that [we are] doing so without all evidence that may
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`come out at trial.” New England Braiding Co. v. A.W. Chesterton Co., 970 F.2d
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`878, 883 (Fed. Cir. 1992) (reviewing a decision on a preliminary injunction where
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`patentee has the burden of demonstrating “that it will likely succeed on all disputed
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`liability issues at trial”). Here, we have not decided that Petitioner has shown, for
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`purposes of a final decision, that RFC 2401 was publicly available as of the critical
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`date, but instead, that there is a reasonable likelihood that Petitioner may yet,
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`during the course of an inter partes review trial, adduce evidence sufficient to
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`prove that fact. Indeed, we specifically noted that Patent Owner will have further
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`opportunities to contest these issues during the trial, if desired. Dec. 11, n.8. We
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`are not persuaded of error in that decision.
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`Patent Owner’s request for rehearing is denied.
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`ORDER
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`IPR2015-00811
`Patent 8,868,705 B2
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`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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`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.com
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