`
`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