Trials@uspto.gov
`Tel: 571-272-7822
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`
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`Paper 13
`Entered: October 1, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-00812
`Patent 8,850,009 B2
`_______________
`
`
`
`Before KARL D. EASTHOM, JENNIFER S. BISK, and GREGG I. ANDERSON,
`Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
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`
`
`
`
`
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`
`
`

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`IPR2015-00812
`Patent 78,850,009 B2
`
`
`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 claims 1–8, 10–20, and 22–25 of U.S. Patent 8,850,009 (Ex.
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`1001, “”the ’009 patent”) based on obviousness over Beser1 combined with RFC
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`2401.2 Paper 12 (“Req. Reh’g”). For the reasons that follow, Patent Owner’s
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`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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`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, and (2) finding that RFC 2401 included indicia sufficient to Establish
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`a reasonable likelihood that RFC 2401 is a printed publication. Req. Reh’g. Patent
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`Owner bases its argument on its assertion that “[t]he Board’s own case law . . .
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`contradicts the Board’s conclusion that [the indicia on the face of RFC 2401] were
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`sufficient to meet Apple’s burden of establishing that RFC 2401 constitutes a
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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”).
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` 2
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`

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`IPR2015-00812
`Patent 78,850,009 B2
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`printed publication.” Req. Reh’g 2; see also id. 3–10 (discussing several non-
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`precedential Board cases with different facts in which institution was denied on the
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`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.3 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. 6–7 (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 7–8. 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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`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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`3 Patent Owner questions our citation to the Tamassia Declaration when it was not
`cited in the Petition. Req. Reh’g. 6 n.1. However, Patent Owner raised the issue
`when it cited to paragraph 152 of the Tamassia Declaration (Ex. 1005) in its
`Preliminary Response. Paper 6, 4.
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` 3
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`IPR2015-00812
`Patent 78,850,009 B2
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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. 7 n.6. We are not persuaded
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`of error in that decision.
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`Patent Owner’s request for rehearing is denied.
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` 4
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`PETITIONER:
`
`Jeffrey Kushan
`IPRNotices@sidley.com
`
`Thomas A. Broughan, III
`tbroughan@sidley.com
`
`
`
`PATENT OWNER:
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`Joseph Palys
`josephpalys@paulhastings.com
`
`Naveen Modi
`naveenmodi@paulhastings.com
`
`Jason Stach
`Jason.stach@finnegan.com