Paper 14
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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 No. IPR2015-00871
`Patent No. 8,560,705
`____________________
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`
`
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a)
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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 No. IPR2015-00871
`Patent No. 8,560,705
`____________________
`
`
`
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a)
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`IPR2015-00871
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`Paper 14
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`Table of Contents
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`I.
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`II.
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`Introduction .................................................................................................... 1
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`Background .................................................................................................... 2
`Legal Standard .................................................................................... 2
`A.
`This Proceeding ................................................................................... 4
`B.
`
`III. Argument ........................................................................................................ 4
`Petitioner’s Motion Is Timely and the Supplemental Information
`A.
`Is Relevant as Required by § 42.123(a) ............................................. 5
`1.
`Exhibits 1057-1059 Support the Board’s Finding that Aventail
`Is Prior Art .................................................................................. 5
`Exhibits 1060-1065 Support the Board’s Finding that RFC
`2401 Is Prior Art ......................................................................... 9
`Consideration of the Supplemental Information Relating to the
`Public Availability of Prior Art References Is Appropriate ......... 11
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`B.
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`2.
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`IV. Conclusion .................................................................................................... 13
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`i
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`IPR2015-00871
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`I.
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`Introduction
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`Paper 14
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`Petitioner Apple Inc. (“Petitioner”) respectfully moves to submit Exhibits
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`1057 to 10651 as supplemental information under 37 C.F.R. § 42.123(a). Each of
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`these exhibits is relevant to a claim at issue in this trial as required by 42.123(a)(2).
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`Exhibits 1057 to 1059 are relevant because they are evidence of the public
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`availability of the Aventail reference prior to February 2000, the effective filing
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`date of the challenged patent. These exhibits include testimony, offered in related
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`proceedings, from Aventail Corp.’s co-founder Chris Hopen. Exhibits 1060 to
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`1065 are relevant because they are evidence that RFC 2401 was published and
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`publicly available in November 1998. These exhibits include a declaration and
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`deposition testimony concerning RFC 2401 and numerous other RFCs by Sandy
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`Ginoza, a representative of the Internet Engineering Task Force (“IETF”), and
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`additional documentation that addresses RFC 2401’s public availability.
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`The Board should admit these exhibits into the record because they are
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`“additional evidence that allegedly confirms the public accessibility of” prior art
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`
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`1 Petitioner has moved to submit Exhibits 1057 to 1065 as supplemental
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`information in the proceedings that primarily rely on Aventail (IPR2015-00811
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`and -00871), and Exhibits 1060 to 1065 in the proceedings that primarily rely on
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`Beser (IPR2015-00810, -00812, -00866, -00868, and -00871).
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`1
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`IPR2015-00871
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`Paper 14
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`references at issue in this trial. Palo Alto Networks, Inc v. Juniper Networks, Inc.,
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`IPR2013-00369, Paper 37 at 3 (Feb. 5, 2014). So, apart from being relevant to the
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`claims at issue, these exhibits merely supplement information already present in
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`the record, do not alter the scope of the instituted grounds, and their consideration
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`will not unduly delay the trial’s schedule. Id. at 3-4 (granting motion under
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`§ 42.123(a) based on consideration of these factors). Accordingly, Petitioner
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`respectfully requests that its motion be granted.
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`II. Background
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`A. Legal Standard
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`A party may submit supplemental information under 37 C.F.R. § 42.123(a)
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`if: (1) a “request for the authorization to file a motion to submit supplemental
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`information is made within one month of the date the trial is instituted” and (2) the
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`“supplemental information [is] relevant to a claim for which the trial has been
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`instituted.” Unlike supplemental information submitted later in trial (§ 42.123(b))
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`or information not relevant to a claim for which trial was instituted (§ 42.123(c)), a
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`motion under § 42.123(a) need not “show why the supplemental information
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`reasonably could not have been obtained earlier, and that consideration of the
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`supplemental information would be in the interests-of-justice.”
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`Instead, under § 42.123(a) the Board has considered whether the information
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`changes “the grounds of unpatentability authorized in this proceeding” or “the
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`evidence initially presented in the Petition to support those grounds of
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`unpatentability.” Palo Alto Networks, IPR2013-00369, Paper 37 at 3; see also
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`Biomarin Pharma. Inc., v. Genzyme Therapeutic Prods Limited Partnership,
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`IPR2013-00534, Paper 80 at 5 (Jan. 7, 2015) (considering the same factors under
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`§ 42.123(b)). The Board has also considered whether granting the motion would
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`prevent the just, speedy, and inexpensive resolution of the proceeding, Palo Alto,
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`IPR2013-00369, Paper 37 at 4, or would prejudice the other party, Unified Patents
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`Inc., v. Dragon Intellectual Property, LLC, IPR 2014-01252, Paper 43 at 3 (Apr.
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`14, 2015); see also Rackspace US, Inc. v. Personal Web Techs., LLC, IPR2014-
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`00058, Paper 16 at 6 (Apr. 30, 2014) (denying motion to submit supplemental
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`expert report that was presented to challenge the Board’s claim constructions).
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`Where a party has sought to submit information that confirms the public
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`accessibility of a prior art reference at issue in the trial, the Board has repeatedly
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`found such evidence to be proper supplemental information. See, e.g., Biomarin,
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`IPR2013-00534, Paper 80 at 5 (granting motion under stricter standard of
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`§ 42.123(b)); Valeo North Am., Inc. v. Magna Elecs, Inc., IPR2014-01204, Paper
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`26 at 2-5 (Apr. 10, 2015); Palo Alto Networks, IPR2013-00369, Paper 37 at 2-5;
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`Motorola Sol’ns, Inc. v. Mobile Scanning Techs, LLC, IPR2013-00093, Paper 39 at
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`2 (July 16, 2013). As the Board has recognized, “a trial is, first and foremost, a
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`search for the truth.” Edmund Optics, Inc., v. Semrock, Inc., IPR2014-00599,
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`3
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`Paper 44 at 4 (May 5, 2015) (granting motion to submit supplemental information)
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`(citing TechSearch LLC v. Intel Corp., 286 F.3d 1360, 1378 (Fed. Cir. 2002)).
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`B.
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`This Proceeding
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`On October 1, 2015, the Board instituted trial in this proceeding on all
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`grounds presented in the Petition, including grounds based on Aventail Connect
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`v3.01/v2.51 Administrator’s Guide (“Aventail”), RFC 2401, “Security
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`Architecture for the Internet Protocol” (“RFC 2401”), and RFC 2543, “SIP:
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`Session Initiation Protocol” (“RFC 2543”). See Paper 8 at 2, 7, 21. The Board
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`found that the evidence supported a finding that RFC 2401 and RFC 2543 are prior
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`art printed publications. Id. at 9-10. The Board implicitly found the same with
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`respect to Aventail. Id. at 21.
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`In several papers it filed in this proceeding, Patent Owner VirnetX, Inc. has
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`raised challenges as to whether the RFC 2401, RFC 2543, and Aventail references
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`were publicly available. In its Preliminary Response, Patent Owner VirnetX Inc.
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`contended that RFC 2401 and RFC 2543 were not accessible to the public as of the
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`relevant date to qualify as prior art in this proceeding. See Paper 6 at 2-10. In its
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`Objections to Petitioner’s Exhibits, Patent Owner raised hearsay objections to the
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`three declarations (Exs. 1022, 1023, and 1043) the Petition presented as evidence
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`of the public availability of Aventail. See Paper 12 at 1.
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`III. Argument
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`A.
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`Petitioner’s Motion Is Timely and the Supplemental Information
`Is Relevant as Required by § 42.123(a)
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`Petitioner requested authorization to file a motion to submit supplemental
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`information via email on October 8, 2015, within one month of institution of trial.
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`Thus, Petitioner’s motion is timely under § 42.123(a)(1). In addition, the
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`information Petitioner requests to submit into the record is “relevant to a claim [at
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`issue in] the trial” as required by § 42.123(a)(2). As explained below, each exhibit
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`is relevant because it supports Petitioner’s assertions and the Board’s preliminary
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`findings about the publication and public availability of RFC 2401 or Aventail.
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`Petitioner thus submits that the supplemental information is proper under
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`§ 42.123(a)(1) and should be entered into the record.
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`1.
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`Exhibits 1057-1059 Support the Board’s Finding that
`Aventail Is Prior Art
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`Exhibits 1057-1059 contain testimony from Aventail Corp.’s cofounder
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`Chris Hopen that support the Board’s preliminary finding that Aventail is prior art
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`to the challenged claims.2 See Pet. at 18; Ex. 1023 at ¶¶ 13-16.
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`2 Ex. 1057-1059 are offered as supplemental information to show that Aventail is
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`prior art. They are also “supplemental evidence” under § 42.64(b)(2) because they
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`corroborate the reliability of Exhibits 1022, 1023, and 1043. See, e.g., Valeo,
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`IPR2014-01204, Paper 26 at 5 (an exhibit may be both supplemental evidence and
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`Exhibit 1057 is a rough transcript of Chris Hopen’s deposition in the
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`VirnetX, Inc. v. Apple Inc., 10-cv-00417 (E.D. Tx.) litigation,3 and Exhibit 1058 is
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`an exhibit from that deposition. See, e.g., Ex. 1057 at pp. 4-6, 191; Ex. 1058 at i
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`(marked as deposition exhibit “P4”). Mr. Hopen’s deposition was taken on April
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`11, 2012. At his deposition, Mr. Hopen testified about the publication of Aventail.
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`For example, Mr. Hopen testified:
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`Q. And it says there on the last sentence that the Aventail extranet
`center which starts at $7,995 is available from digital sun -- I'm sorry.
`Let me back up. Which starts at 7,995 is available. Does that confirm
`to you that the product was available in October 19th, 1998?
`A. Yes.
`
`
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`supplemental information). Patent Owner objected to Exhibits 1022, 1023, and
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`1043 as hearsay, Paper 11 at 1, and in response, Petitioner served Exhibits 1057-
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`1059 as supplemental evidence.
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`3 The final transcript of Mr. Hopen’s deposition is subject to a protective order.
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`However, on May 3, 2012, VirnetX submitted a redacted version of the rough
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`transcript of that deposition to the United States Patent and Trademark Office as
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`part of an IDS in U.S. Appl. No. 13/339,257 (which became U.S. Patent No.
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`8,504,697). Exhibit 1057 is the redacted rough draft submitted to the Office by
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`Patent Owner.
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`Q. And by product I mean the Aventail extranet center 3.0?
`A. Yes.
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`Ex. 1057 at 79: 25-80:9; id. at 100:2-104:7 (explaining the Avential extranet center
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`3.0 included the Aventail Connect v3.01/v2.51 Administrator’s Guide); id. at
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`83:10-84:16 (“Q. Do you recall whether or not this document was publicly
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`disseminated by Aventail in the 1998 timeframe? A. Yeah, I personally had
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`distributed copies of this document to either prospects or customers. . . . Q. Would
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`it have been prior to January 1999? MR. CURRY: Objection. Form. THE
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`WITNESS: Yes.”). As another example, Mr. Hopen testified:
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`Q. What kind of product literature would Aventail distribute as part of
`its installation CD?
`A. Are you asking specifically literature or are you talking about just
`collateral and documentation in general.
`Q. I'm talking about specific literature describing the features of the
`product?
`A. Okay. So I mean, it would contain like, you know, administrator's
`guides, user guides.
`Ex. 1057 at 91:20-92:2.
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`During Mr. Hopen’s deposition, Patent Owner cross-examined Mr. Hopen
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`about his testimony. See, e.g., Ex. 1057 at 148:1-209:8. Patent Owner also cross-
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`examined Mr. Hopen about a declaration that Mr. Hopen provided to Apple as part
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`of an inter partes reexamination involving U.S. Patent No. 6,502,135 (Control No.
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`95/001,682). In that declaration (Ex. 1058), Mr. Hopen testified that the Aventail
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`guides were published and publicly distributed before January 1999. Ex. 1058 at
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`¶¶ 13-16; accord Ex. 1023 at ¶¶ 13-16 (declaration signed by Mr. Hopen and
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`submitted in Control No. 95/001,697 involving U.S. Patent No. 7,490,151).
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`During his deposition, Mr. Hopen confirmed that he agreed with the substance of
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`the declaration he submitted in the ’135 reexam. Ex. 1057 at 191:10-16 (marking
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`Exhibit P4), 211:10-14 (by Patent Owner’s counsel: “Q. Okay. And signature [sic]
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`here today do you still agree with the substance that’s contained in this
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`declaration? A. Yes. Q. Plaintiff’s Exhibit P4? A. Yes.”); Ex. 1058 (Exhibit P4
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`from Mr. Hopen’s deposition).
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`Exhibit 1059 is a transcript of part of the trial in VirnetX, Inc. v. Microsoft
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`Corp., 07-cv-00080 (E.D. Tx.), that took place in March 2010. Ex. 1059 at 1:1-9.
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`During the trial, deposition testimony from Mr. Hopen was played in which Mr.
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`Hopen testified that the Aventail product documentation was publicly distributed
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`prior to February 2000. Ex. 1059 at pp. 20-32. For example, Mr. Hopen testified
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`that: “Q. How was the – well, was the Aventail Connect Administrator’s Guide
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`distributed to anyone? A. It was part of the product that we would distribute to any
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`prospect or – or end customer.” Ex. 1059 at 23:6-11; see also id. at 24:16-27:17.
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`These exhibits support Petitioner’s assertions that Aventail is prior art to the
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`challenged claims. Pet. at 17; see also Ex. 1023 at ¶¶ 13-16; Ex. 1022 at ¶¶ 14-19;
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`Ex. 1043 at ¶¶ 6-7, 12-14.
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`2.
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`Exhibits 1060-1065 Support the Board’s Finding that RFC
`2401 Is Prior Art
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`Exhibits 1060-1065 are evidence that RFC 2401 is a printed publication that
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`was publicly available via the Internet by November 1998. See Paper 8 at 9; Ex.
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`1005 at ¶¶ 186-193; Ex. 1036 at 6, 8; Pet. at 27.
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`Exhibit 1060 is a declaration from Sandy Ginoza, acting as a designated
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`representative of the IETF, created in response to a subpoena served as part of an
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`investigation initiated by Patent Owner before the International Trade Commission
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`(337-TA-858). Ex. 1060 at ¶¶ 1-5; Ex. 1063 at 6:23-7:4, 10:5-14. In her
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`declaration, Ms. Ginoza testified that RFC 2401 was published on the RFC
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`Editor’s website and was publicly available in November 1998. Ex. 1060 at
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`¶¶ 105-107. For example, Ms. Ginoza explained:
`
`Based on a search of RFC Editor records, I have determined that the
`RFC Editor maintained a copy of RFC 2401 in the ordinary course of
`its regularly conducted activities. RFC 2401 has been publicly
`available through the RFC Editor’s web site or through other means
`since its publication in November 1998.
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`Ex. 1060 at ¶ 107. Ms. Ginoza similarly testified that numerous other RFCs were
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`published on the RFC Editor’s website and were publicly available since the date
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`on the face of the documents. E.g., Ex. 1060 at ¶¶ 168-170. Exhibit 1061 is the
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`bates stamped copy of RFC 2401 that IETF produced in conjunction with Ms.
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`Ginoza’s declaration. Exhibit 1062 is a redline comparison showing there are no
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`substantive differences between Exhibit 1061 and Exhibit 1008, the copy of RFC
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`2401 Petitioner previously filed in this proceeding.
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`Exhibit 1063 is the transcript of Ms. Ginoza’s February 8, 2013 deposition
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`that was taken as part of the ITC action. At her deposition, Ms. Ginoza testified:
`
`Q []: You've just been handed what's been marked as Exhibit 16. It is
`titled "Request for Comments: 2401" with a Bates number of 337-TA-
`858-IETF001122 through 1183. Is that correct?
`A Yes.
`Q Was RFC 2401 produced in response to the subpoena?
`A Yes.
`* * *
`Q Is the document produced at this bits [sic] range a true and correct
`copy of the record of RFC 2401 as it's kept in the files of the RFC
`Editor?
`A Yes.
`* * *
`Q Was RFC 2401 publicly available as of the date listed on its face?
`A Yes.
`Q What date was RFC 2401 made publicly available?
`A November 1998.
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`Ex. 1063 at 39:14-24; see id. at 10:5-11:22 (confirming her knowledge of IETF
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`publishing practices as they relate to RFCs). Ms. Ginoza offered similar testimony
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`with respect to numerous other RFCs. E.g., Ex. 1063 at 45:5-46:17. During the
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`February 8, 2013 deposition, Patent Owner cross-examined Ms. Ginoza about her
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`testimony and declaration. See id. at 55:3-16; see also id. at 50:7-69:1.
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`Exhibit 1064 is an article from InfoWorld magazine (dated August 16, 1999)
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`and Exhibit 1065 is an article from NetworkWorld magazine (dated March 15,
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`1999). Each exhibit is an excerpt from an industry publication that states it was
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`known that RFCs, and RFC 2401 specifically, were publicly available through the
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`Internet, such as through the IETF’s website. See, e.g., Ex. 1064 at 9 (discussing
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`RFCs 2401 to 2408 and stating “All of these documents are available on the IETF
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`website: www.ietf.org/rfc.html”); Ex. 1065 at 3 (discussing IP security protocols
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`and stating “See the IETF documents RFC 2401 ‘Security Architecture for the
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`Internet Protocol’ at www.ietf.org/rfc/rfc2401.txt”).
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`These exhibits support Petitioner’s assertions that RFC 2401 is prior art to
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`the challenged claims.
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`B. Consideration of the Supplemental Information Relating to the
`Public Availability of Prior Art References Is Appropriate
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`The exhibits proffered by Petitioner satisfies other factors the Board has
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`considered when evaluating motions to submit supplemental information.
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`First, Petitioner’s exhibits provide additional evidence that the prior art for
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`each of the instituted grounds are indeed prior art, and as such does not change
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`“the grounds of unpatentability authorized in this proceeding” or “the evidence
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`initially presented in the Petition to support those grounds of unpatentability.” See,
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`e.g., Palo Alto Networks, Inc v. Juniper Networks, Inc. IPR2013-00369, Paper 37
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`at 3. Exhibits 1057 to 1059 supplement the information presented with the Petition
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`with respect to Aventail. See Pet. at 15-16; Ex. 1023 at ¶¶ 13-16; Ex. 1022 at
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`¶¶ 14-19; Ex. 1043 at ¶¶ 6-7, 12-14. Exhibits 1060 to 1065 supplement the
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`information presented with the Petition with respect to RFC 2401, and are
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`additional evidence that an RFC is published as of the date listed on its face. See
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`Pet. at 27; Ex. 1005 at ¶¶ 148-155; Ex. 1036 at 6, 8; see also Ex. 1036 at 19-21.
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`Public availability evidence is precisely the type of information that is properly
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`submitted as supplemental information.
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`Second, Petitioner’s supplemental information will not prejudice Patent
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`Owner or delay the proceedings. Patent Owner will have limited need (if any) to
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`investigate the proffered information because Patent Owner already investigated
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`most of the exhibits during one of the concurrent litigation proceedings. For
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`example, Patent Owner received Ms. Ginoza’s declaration and RFC 2401 (Exs.
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`1060-1061) as part of the Section 337 action in 2013, and it had the opportunity to
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`cross-examine Ms. Ginoza about RFC 2401’s publication date. See Ex. 1063 at
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`50:7-69:1. Similarly, Patent Owner has been in possession of Mr. Hopen’s
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`declaration (Ex. 1058) since May 2011, and it cross-examined him about that
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`testimony in April 2012 (Ex. 1057). Patent Owner also understood that Mr.
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`Hopen’s testimony was relevant to Aventail’s publication date because it submitted
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`that testimony during prosecution of the ’697 patent. Ex. 1057 at cover. In
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`addition, Petitioner has served all of the exhibits on Patent Owner concurrently
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`with this motion.4
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`Consideration of the supplemental information will not frustrate the Board’s
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`ability to complete this proceeding in a timely manner. The evidence supports the
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`Board’s preliminary findings, and Patent Owner will have an opportunity to
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`address the evidence in its Patent Owner response.
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`IV. Conclusion
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`For the foregoing reasons, Petitioner respectfully requests that it be
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`4 Petitioner notes that while some panels of the Board have found it improper to
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`file supplemental information as exhibits concurrently with the filing of the
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`motion, see, e.g., Unified Patents, IPR 2014-01252, Paper 43 at 3 (“Our
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`authorization to file the Motion was not an authorization to file the supplemental
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`information as an exhibit with the Motion.”), other panels have found that “filing
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`proffered supplemental information” concurrently with the motion “facilitates
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`review of a motion to submit that information,” see, e.g., Valeo, IPR2014-1204,
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`Paper 26 at 5. Because the Board did not explicitly authorize Petitioner to file the
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`supplemental information as part of this motion, Petitioner is not concurrently
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`filing it with this motion.
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`permitted to submit Exhibits 1057 to 1065 as supplemental information.
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`Dated: October 16, 2015
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`Respectfully Submitted,
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`
`
`/ Jeffrey P. Kushan /
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
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`IPR2015-00871
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`PETITIONER’S MOTION TO SUBMIT
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`SUPPLEMENTAL INFORMATION
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`Attachment A:
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`Exhibit List
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`Exhibit List - i
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`IPR2015-00871
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`Ex. # Reference Name
`1001 U.S. Patent 8,458,341
`1002 U.S. Patent 8,458,341 File History
`1003 U.S. Patent 8,516,131
`1004 U.S. Patent 8,516,131 File History
`1005 Declaration of Roberto Tamassia
`1006 Curriculum Vitae of Roberto Tamassia
`1007 U.S. Patent 6,496,867 to Beser
`1008 Kent, S., et al., RFC 2401, “Security Architecture for
`the Internet Protocol” (November 1998)
`1009 Aventail Connect v3.01/v2.51 Administrator’s Guide
`(1996-1999)
`1010 Aventail Connect v3.01/v2.51 User’s Guide (1996-
`1999)
`1011 Aventail ExtraNet Center v3.0 Administrator’s Guide
`(NT and UNIX)
`1012 U.S. Patent 5,237,566 to Brand
`1013 Handley, M., et al., RFC 2543, SIP: Session Initiation
`Protocol (March 1999)
`1014 RFC 793, DARPA Internet Program Protocol
`Specification (September 1991)
`1015 U.S. Patent Number 6,430,176 to Christie
`1016 U.S. Patent Number 6,930,998 to Sylvain
`1017
`Patent Owner Preliminary Response, IPR2014-00237,
`Paper 12 (March 6, 2014)
`1018 Leech, M., et al., RFC 1928, SOCKS Protocol Version 5
`(March 1996)
`1019 Microsoft Computer Dictionary (4th Ed.)
`1020 U.S. Patent Number 6,408,336 to Schneider
`1021 U.S. Patent Number 5,633,934 to Hember
`
`Filing Status
`3/17/2015
`3/17/2015
`3/17/2015
`3/17/2015
`3/17/2015
`3/17/2015
`3/17/2015
`3/17/2015
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`3/17/2015
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`3/17/2015
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`3/17/2015
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`3/17/2015
`3/17/2015
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`3/17/2015
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`3/17/2015
`3/17/2015
`3/17/2015
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`3/17/2015
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`3/17/2015
`3/17/2015
`3/17/2015
`
`Exhibit List - ii
`
`
`
`IPR2015-00871
`
`
`
`
`
`Paper 14
`
`Filing Status
`3/17/2015
`
`1026
`
`1027
`
`Exhibit List - iii
`
`Ex. # Reference Name
`1022 Declaration of James Chester, Reexamination
`95/001,697
`1023 Declaration of Chris Hopen, Reexamination 95/001,697 3/17/2015
`1024 U.S. Patent 6,557,037 to Provino
`3/17/2015
`1025 Gunter, M., “Virtual Private Networks Over the
`3/17/2015
`Internet” (1998)
`Patent Owner Preliminary Response, IPR2014-00404,
`Paper 9 (May 19, 2014)
`von Sommering, S., Space Multiplexed-Electrochemical
`Telegraph
`1028 Licklider, J.C.R., Memorandum for Members and
`Affiliates of the Intergalactic Computer Network
`(December 11, 2001)
`1029 BBN Report No. 1822, Interface Message Processor
`(January 1976)
`1030 Koblas, D., et al., “SOCKS-Usenix Unix Security
`Symposium III”
`1031 Windows NT for Dummies
`1032 Mockapetris, P., RFC 882, “Domain Names – Concepts
`and Facilities” (November 1983)
`1033 Mockapetris, P., RFC 883, “Domain Names –
`Implementation and Specification” (November 1983)
`1034 Mockapetris, P., RFC 1034, “Domain Names –
`Concepts and Facilities” (November 1987)
`1035 Mockapetris, P. RFC 1035, “Domain Names –
`Implementation and Specification” (November 1987)
`1036 Bradner, S., RFC 2026, “The Internet Standards Process
`– Revision 3” (October 1996)
`1037 Rosen, E., et al., RFC 2547, “BGP/MPLS VPNs”
`(March 1999)
`1038 W3C and WAP Forum Establish Formal Liason
`Relationship (December 8, 1999)
`1039 Wireless Application Protocol (WAP) Architecture
`Specification (April 30, 1998)
`1040 H.323 ITU-T Recommendation (February, 1998)
`
`3/17/2015
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`3/17/2015
`
`3/17/2015
`
`3/17/2015
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`3/17/2015
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`3/17/2015
`3/17/2015
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`3/17/2015
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`3/17/2015
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`3/17/2015
`
`3/17/2015
`
`3/17/2015
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`3/17/2015
`
`3/17/2015
`
`3/17/2015
`
`
`
`IPR2015-00871
`
`
`
`
`
`Ex. # Reference Name
`1041 Kiuchi, T., et al., “C-HTTP – The Development of a
`Secure, Closed HTTP-Based Network on the Internet”
`(IEEE 1996) LOC Stamped
`1042 VirnetX’s Opening Claim Construction brief, VirnetX,
`Inc. v. Cicso Systems, Inc., et al., Civil Action No. 6:10-
`cv-417 (EDTX) (November 4, 20111)
`1043 Declaration of Michael Fratto, Reexamination
`95/001,682
`1044 U.S. Patent 5,898,830 to Wesinger
`1045
`Steiner, J., et al., “Kerberos: An Authentication Service
`for Open Network Systems” (January 12, 1988)
`1046 Harkins, D., et al., RFC 2409, “The Internet Key
`Exchange (IKE) (November 1998)
`1047 Maughan, D., et al., “Internet Security Association and
`Key Management Protocol (ISAKMP)” (November
`1998)
`1048 Data-Over-Cable Interface Specifications (DOCIS),
`Radio Frequency Interface Specification (March 26,
`1997)
`1049 U.S. Patent 6,886,095 to Hind et al.
`1050 U.S. Patent 8,560,705
`1051 U.S. Patent 8,560,705 File History
`1052 U.S. Patent 6,609,148 to Salo et al.
`1053 Dell Computer Corp., Fiscal 1999 in Review (1999)
`1054 Charlie Scott et al., Virtual Private Networks (2nd ed.
`1999)
`1055 Deposition of Fabien Newman Monrose, PhD.,
`IPR2014-00237, Exhibit 1083 (October 23, 2014)
`1056 Declaration of Scott M. Border
`1057
`Information Disclosure Statement, U.S. Appl. No.
`[New]
`13/339,257 (May 3, 2012) (issued as U.S. Patent No.
`8,504,697), including Rough Transcript of April 11,
`2012 Deposition of Chris Hopen, VirnetX Inc. v. Cisco
`
`Exhibit List - iv
`
`Paper 14
`
`Filing Status
`3/17/2015
`
`3/17/2015
`
`3/17/2015
`
`3/17/2015
`3/17/2015
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`3/17/2015
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`3/17/2015
`
`3/17/2015
`
`3/17/2015
`3/17/2015
`3/17/2015
`3/17/2015
`3/17/2015
`3/17/2015
`
`3/17/2015
`
`10/7/2015
`Not filed;
`served with
`this motion
`
`
`
`Paper 14
`
`Filing Status
`
`Not filed;
`served with
`this motion
`
`Not filed;
`served with
`this motion
`Not filed;
`served with
`this motion
`
`Not filed;
`served with
`this motion
`Not filed;
`served with
`this motion
`Not filed;
`served with
`this motion
`Not filed;
`served with
`this motion
`Not filed;
`served with
`this motion
`
`IPR2015-00871
`
`
`
`
`
`1058
`[New]
`
`1059
`[New]
`
`1060
`[New]
`
`Ex. # Reference Name
`Systems, Inc., Case No. 6:10-cv-00417 (E.D. Tex.)
`Declaration of Chris Hopen, Control No. 95/001682,
`filed as Exhibit P4 in April 11, 2012 Deposition of Chris
`Hopen, VirnetX Inc. v. Cisco Systems, Inc., Case No.
`6:10-cv-00417 (E.D. Tex.)
`Transcript of Jury Trial in VirnetX v. Microsoft
`Corporation, Case No. 6:07-cv-00080, Dkt. No. 398
`(E.D. Tex) (March 15, 2010)
`Declaration of Sandy Ginoza on behalf of the RFC
`Publisher for the Internet Engineering Task Force, dated
`January 23, 2013, submitted in Investigation No. 337-
`TA-858
`Kent, S., et al., RFC 2401, “Security Architecture for
`the Internet Protocol” (November 1998), bearing Bates
`Nos. 337-TA-858-IETF001122 through 001183
`Redline comparison of Exhibit 1008 (IPR2015-00810)
`to Exhibit 1061
`
`1061
`[New]
`
`1062
`[New]
`
`1063
`[New]
`
`Transcript of Feb. 8, 2013 deposition of Sandy Ginoza,
`ITC Inv. No. 337-TA-858
`
`1064
`[New]
`
`The Reality of Virtual Private Networks, InfoWorld,
`Aug. 16, 1999 (Advertising Supplement)
`
`1065
`[New]
`
`Mark Gibbs, IP Security: Keeping your business
`private, NetworkWorld, Mar. 15, 1999
`
`
`
`Exhibit List - v
`
`
`
`Paper 14
`
`
`
`
`
`PETITIONER’S MOTION TO SUBMIT
`
`SUPPLEMENTAL INFORMATION
`
`
`
`Attachment B:
`
`Proof of Service
`
`
`
`IPR2015-00871
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-00871
`
`
`
`
`
`Paper 14
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), this is to certify that on this 16th day of
`
`October, 2015, I caused to be served a true and correct copy of the foregoing
`
`Petitioner’s Motion to Submit Supplemental Information and Exhibits 1057-1065
`
`on the following counsel for Patent Owner:
`
`Joseph E. Palys
`E-mail: josephpalys@paulhastings.com
`
`Naveen Modi
`E-mail: naveenmodi@paulhastings.com
`
`Jason E. Stach
`E-mail: Jason.stach@finnegan.com
`
`Dated:
`
`
`
`
`
`
`
`
`
`October 16, 2015
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Jeffrey P. Kushan/
`
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`(202) 736-8914
`Attorney for Petitioner
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