VIRNETX EXHIBIT 2017
`Apple v. VirnetX
`Trial IPR2015-00812
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`Page 1 of 9
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`Apple v. VirnetX
`Trial IPR2015-00812
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`Page 1 of 9
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`Appiieation No. 13./615,557
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`Furt11ermoi‘e, the iitstaitt patent is tsuireiitiy invoiveti in 1PR2015—0O8 10 and 1PR2015—
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`0081 1. The Paterit "E1131 and Appeal BO?1,1‘(ii)”1 these proceedings issued an order, eopy a.t'ta.e1ied
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`with this request, O1‘C1€i‘1I‘ig that the Patent Owner is authorizeti to tiie a request for 21 certificate of
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`cor'ret:tion £?1’1Ei1‘}gi1’1g'[i1€ word “tr-an siriitterf’ in claims I and 21 to “inte1‘eepted,” and1'iirtiiei'
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`ortiered that the change of weniing does not affect the patentabie significance of eiainis 1 and 21.
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`No fee is beiieved to be due. However, piease charge any required fees to Deposit
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`Aceouiit No. 50~1 133. Piease also credit any excess fees to such deposit account.
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`Date:
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`__£2.95:s:i;n_t2et_f2i_;Z_Ql_§_________.
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`Respetttfuiiy submitted,
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`MC.D ERl\«:1OTT WI1.,1., & E}v{1ERY L1,?
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`__________________________________________________________________.
`Kenneth C. Clieitey, Reg. No. 61,841
`4 1’a,rE<: 1’Ea.;,7;a
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`Suite 1700
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`1rvirie, California 92614-"‘559
`Teiepiionet (949) 757511 1 1
`Pacsin1i1e:
`{9r-'19) 851-9348
`131-rnaiit
`1{Cr1‘i€:}”1€_V@}.1’I‘i‘v‘~/'€.C0111
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`DM_US 683271377-i.0775%§0.0177
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`fix.)
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`-
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`Page 2 of 9
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`Page 2 of 9
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`PTO/SB/44 (09-07)
`Approved for use through 08/31/2013. OMB 0651-0033
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Underthe Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`Also Form PTO-1050
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`CERTIFICATE OF CORRECTION
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`PATENT NO.
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`: 8,858,705
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`APPLICATION NO.:
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`‘E 3/815,55?
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`ISSUE DATE
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`: ec:obe:—2t,2e;n4
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`INVENTORISI
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`Victor Larson et at
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`It is certified that an error appears or errors appear in the above-identified patent and that said Letters Patent
`is hereby corrected as shown below:
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`in the Claims
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`Claim 1, Got. 55, line 54, "address transmitted in step (1‘;“ should read ——address irttemepted in step ('l)——
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`Clalm 21, cut. 5?’, line 2, "transmitted in step (1‘;“ should read ——iltterr:epted in step ('l)——
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`MAILING ADDRESS OF SENDER (Please do not use customer number below):
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`This collection of information is required by 37 CFR 1.322, 1.323, and 1.324. The information is required to obtain or retain a benefit by the public which is to file
`(and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 1.0 hour to
`complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any
`comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer,
`U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED
`FORMS To THIS ADDRESS. SEND TO: Attention Certificate of Corrections Branch, Commissioner for Patents, P.O. Box 1450, Alexandria,
`VA 22313-1450.
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`If you need assistance in completing the form, ca/I 1-800-PTO-9199 and select option 2.
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`Page 3 of 9
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`Page 3 of 9
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`Tria1s@uspto. gov
`571-272-7822
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`Paper 24
`Date: December 9, 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.,
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`Petitioner,
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`V.
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`VIRNETX INC.,
`Patent Owner.
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`Case IPR2015-00810
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`Case IPR2015-00811
`Patent 8,868,705 B21
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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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`ORDER
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`Conduct of the Proceedings
`37 C.F.R. § 42.5
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`1 The parties are not authorized to use this caption.
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`Page 4 of 9
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`IPR20l5-00810, IPR20l5-0811
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`Patent 8,868,705 B2
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`INTRODUCTION
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`On December 9, 2015, a conference call was held in the above
`
`proceedings, among counsel for Apple, Inc. (“Petitioner”), counsel for
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`VirnetX, Inc. (“Patent Owner”), and Judges Easthom, Bisk, and
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`Anderson. Patent Owner requests authorization to file a motion requesting
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`permission to file a request for certificate of correction under 37 C.F.R. §
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`1.322(a)(3), which applies where the error is made by the Patent Office.
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`DISCUSSION
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`Patent Owner asserted in its Preliminary Response (“Prelim Resp,”
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`Paper 3)2 that claims 1 and 21 of the ’705 patent incorrectly includes the
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`word “transmitted” instead of “intercepted.” Prelim. Resp. 29, n3 (citing
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`Ex. 1002, 638-639, 641, 655-656). Patent Owner represented in the
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`Preliminary Response that the error was made by the Office during
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`prosecution. Id. Petitioner agrees the error was made by the Office.
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`During the call, the parties stipulated that the change from
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`“transmitted” to “intercepted” was not of patentable significance. Based on
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`the stipulation, Petitioner agreed to Patent Owner’s filing of a request for
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`certificate of correction without the need for the filing of a motion seeking
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`our authorization.
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`In consideration of the foregoing, it is hereby:
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`ORDER
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`2 Citations are to IPR2015-00810. IPR2015-00811 raises the identical
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`issues.
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`Page 5 of 9
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`IPR2015-00810, IPR2015-0811
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`Patent 8,868,705 B2
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`ORDERED that Patent Owner is authorized to file a request for a
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`certificate of correction changing the word “transmitted” in claims 1 and 21
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`to “intercepted;”
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`FURTHER ORDERED that the change of wording does not affect the
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`patentable significance of claims 1 and 21; and
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`FURTHER ORDERED that a copy of this Order will be filed in
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`IPR2015-00810 and IPR2015-00811.
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`Page 6 of 9
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`Page 6 of 9
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`IPR2015-00810, IPR2015-0811
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`Patent 8,868,705 B2
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`PETITIONER:
`
`Jeffrey P. Kushan
`Scott Border
`
`Thomas A. Broughan III
`SIDLEY AUSTIN LLP
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`kush 3:" 5%} ex? .<:om
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`%%:b<)I’{§Si aiiex.-V‘ 0 mm
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`‘§:§)1'e;:m,;:‘§:3 an
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`PATENT OWNER:
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`Joseph E. Palys
`Naveen Modi
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`PAUL HASTINGS LLP
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`nave em”: edi
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`
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`zwzmih asizé :1
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`, (:0 an
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`Jason E. Stach
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`FINNEGAN, HENDERSON, FARABOW,
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`GARRETT & DUNNER, L.L.P.
`J:-:.sr-312 .s::J:-mi": fimae 2:312 .e£m;1
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`Electronic Acknowledgement Receipt
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`T—
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`Title of Invention:
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`AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS USING SECURE
`DOMAIN NAMES
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`I
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`Payment information:
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`File Listing:
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`Document
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`File Size(Bytes)/
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`Multi
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`Pages
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`222507
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`85f0
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`Request for Certificate of Correction
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`077580-0177_Request_Certific
`ate_Correction.pdf
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`050aa378f7aea745bc48Cf81461b441efb29
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`Page 8 of 9
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`Total Files Size (in bytes)
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`222507
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`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/E0/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/R0/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
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`Page 9 of 9
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`Page 9 of 9
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