`Filed: February 8, 2016
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: naveenmodi@paulhastings.com
`
`
`Filed on behalf of: VirnetX Inc.
`By:
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: josephpalys@paulhastings.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`THE MANGROVE PARTNERS MASTER FUND, LTD., and APPLE INC.,
`Petitioner
`
`v.
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`VIRNETX INC.,
`Patent Owner
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`
`
`
`
`
`
`
`Case IPR2015-010461
`Patent No. 6,502,135
`
`
`
`
`
`
`
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`Patent Owner’s Request for Rehearing Under 37 C.F.R. § 42.71(d)(1) of
`Institution Decision in IPR2016-00062
`
`
`1 Apple Inc., who filed a petition in IPR2016-00062, has been joined as a Petitioner
`in the instant proceeding.
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`
`
`
`
`
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`
`
`I.
`
`II.
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`
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`Case No. IPR2015-01046
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`Table of Contents
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`INTRODUCTION AND PRECISE RELIEF REQUESTED ......................... 1
`
`BACKGROUND ............................................................................................. 2
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`III. LEGAL STANDARD ..................................................................................... 5
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`IV. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 6
`
`A.
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`B.
`
`The Decision Incorrectly Applied § 315(b) in Failing to
`Conclude Apple Is Time-Barred ........................................................... 6
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`The Decision Incorrectly Applied § 325(d) and Ignored Apple’s
`Numerous Serial and Concurrent Attacks to Validity ........................10
`
`V.
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`PATENT OWNER REQUESTS REHEARING BY AN EXPANDED
`PANEL THAT INCLUDES THE CHIEF JUDGE .......................................12
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`VI. CONCLUSION ..............................................................................................14
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`
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`i
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`Case No. IPR2015-01046
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Cases
`Achates Reference Publishing, Inc. v. Apple Inc.,
`803 F.3d 652 (Fed. Cir. 2015) .............................................................................. 9
`
`Apple Inc. v. DSS Technology Management, Inc.,
`IPR2015-00369, Paper No. 14 (Aug. 12, 2015) ................................................... 6
`
`Butamax Adv. Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581, Paper No. 8 (Oct. 14, 2014) ...................................................... 7
`
`Chevron U.S.A. Inc. v. Natural Res. Def. Council Inc.,
`467 U.S. 837 (1984) .............................................................................................. 8
`
`Conopco, Inc. v. Procter & Gamble Co.,
`IPR2014-00506, Paper No. 25 (Dec. 10, 2015) .................................................. 10
`
`Conopco, Inc. v. Procter & Gamble Co.,
`IPR2014-00628, Paper No. 21 (Oct. 20, 2014) .................................................. 11
`
`Google Inc. v. SimpleAir, Inc.,
`CBM2015-00019, Paper No. 15 (Aug. 19, 2015) .............................................. 12
`
`Oshkosh Truck Corp. v. United States,
`123 F.3d 1477 (Fed. Cir. 1997) ............................................................................ 9
`
`Prism Pharma, Co., Ltd. v. Choongwae Pharma Corp.,
`IPR2014-00315, Paper No. 14 (July 8, 2014) .................................................... 11
`
`Standard Innovation Corp. v. Lelo, Inc.,
`IPR2014-00907, Paper No. 10 (Dec. 1, 2014) .................................................... 10
`
`Target Corp. v. Destination Maternity Corp.,
`IPR2014-00508, Paper No. 28 (Feb. 12, 2015) .............................................. 8, 13
`
`Unified Patents, Inc. v. Personal Web Techs., LLC,
`IPR2014-00702, Paper No. 13 (July 24, 2014) .................................................. 11
`
`VirnetX, Inc. v. Cisco Sys., Inc,
`767 F.3d 1308 (Fed. Cir. 2014) ............................................................................ 5
`
`ii
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`
`
`
`Zhongshan Ocean Motor Co. v. Nidex Motor Corp.,
`IPR2015-00762, Paper No. 16 (Oct. 5, 2015) ................................................ 8, 13
`
`Case No. IPR2015-01046
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`Statutes
`35 U.S.C. § 315(b) ............................................................................................passim
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`35 U.S.C. § 315(c) ............................................................................................. 6, 7, 8
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`35 U.S.C. § 325(d) ............................................................................................passim
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`Other Authorities
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`37 C.F.R. § 42.71(c) ................................................................................................... 5
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`37 C.F.R. § 42.71(d) .................................................................................................. 5
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`37 C.F.R. § 42.122(b) ............................................................................................ 6, 8
`
`157 Cong. Rec. S1041 (daily ed. Mar. 1, 2011) ................................................ 10, 14
`
`Standard Operating Procedure 1, Rev. 14 ............................................................ 2, 12
`
`
`
`
`
`iii
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`
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`I.
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`Case No. IPR2015-01046
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`INTRODUCTION AND PRECISE RELIEF REQUESTED
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`Patent Owner VirnetX Inc. requests rehearing of the Patent Trial and Appeal
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`Board’s Institution Decision entered January 25, 2016 (Paper No. 28 in
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`IPR2015-01046, “Decision”), granting Apple Inc.’s petition and instituting trial in
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`IPR2016-00062 and joining that proceeding with IPR2015-01046.
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`The patent-at-issue has been subjected to eleven office challenges—six of
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`the eleven challenges were either filed directly by Apple or, worse, filed on
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`Apple’s behalf by RPX Corporation in an attempt to evade the one-year statutory
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`bar under 35 U.S.C. § 315(b). (Prelim. Resp. in IPR2016-00062 at 4-7.) The
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`Decision discounted VirnetX’s argument that Apple’s Petition is barred under
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`§ 315(b) without any substantive analysis of VirnetX’s statutory interpretation.
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`(Decision at 4.) However, as discussed in the Preliminary Response and below,
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`strong dissenting opinions by Members of the Board suggest that VirnetX’s
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`statutory interpretation is correct and that joining Apple to IPR2015-01046, despite
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`the one-year bar, is not only improper but also an ultra vires action.
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`Setting aside § 315(b), if there was ever a case where the Board should deny
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`institution under 35 U.S.C. § 325(d), it is this case. Despite the extreme facts, with
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`Apple actively trying to evade the statutory one-year bar, the Decision completely
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`omits any discussion of § 325(d). Previous decisions dictate the Board should
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`have exercised its discretion to deny Apple’s Petition. The Decision took the
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`1
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`
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`opposite approach, and has even allowed Apple to take the driver’s seat in
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`Case No. IPR2015-01046
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`IPR2015-01046.
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`VirnetX requests rehearing by an expanded panel that includes the Chief
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`Judge in deciding this request. Standard Operating Procedure 1, Rev. 14, Section
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`III.D (“When a judge, a merits panel, or an interlocutory panel . . . receives a
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`suggestion for an expanded panel, the judge, merits panel, or interlocutory panel
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`shall notify the Chief Judge, Deputy Chief Judge, and the Vice Chief Judges of the
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`suggestion, in writing.”). An expanded panel that includes the Chief Judge is
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`necessary given the exceptional importance of, and the need for uniformity relating
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`to, the § 315(b) and § 325(d) issues in this proceeding.
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`In short, VirnetX requests that rehearing be granted and Apple’s petition be
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`denied.
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`II. BACKGROUND
`Apple’s Petition in IPR2016-00062 is one of eleven challenges to the
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`validity of U.S. Patent No. 6,502,135 (“the ’135 patent”) in inter partes
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`proceedings before the Office. These challenges have included three inter partes
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`reexamination proceedings and eight IPRs. They began over six years ago when
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`Microsoft filed a request for inter partes reexamination of the ’135 patent on
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`December 8, 2009, which the Office assigned Control No. 95/001,269 and in
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`which the Office confirmed the patentability of all the challenged claims. Cisco
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`2
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`filed a second request for inter partes reexamination of the ’135 patent on July 8,
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`Case No. IPR2015-01046
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`2011, which
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`the Office assigned Control No. 95/001,679 (“the ’1,679
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`reexamination”), and remains pending. The ’1,679 reexamination involves the
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`same Kiuchi reference asserted in Apple’s Petition and in Mangrove’s IPR2015-
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`01046 proceeding. Soon after, Apple filed a third request for inter partes
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`reexamination of the ’135 patent on July 11, 2011, which the Office assigned
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`Control No. 95/001,682 (“the ’1,682 reexamination”), and which also remains
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`pending.
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`Apple filed its first two IPR petitions against the ’135 patent on June 12,
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`2013, in IPR2013-00348 and IPR2013-00349, respectively. The Board denied
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`both these petitions because Apple was time-barred under 35 U.S.C. § 315(b) as it
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`had been served with a complaint alleging infringement of the ’135 patent in
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`August 2010, more than a year before it filed its IPR petitions. IPR2013-00348,
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`Paper No. 14 at 5 (Dec. 13, 2013), reh’g denied Paper No. 18 (Feb. 12, 2014);
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`IPR2013-00349, Paper No. 14 at 5 (Dec. 13, 2013), reh’g denied Paper No. 18
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`(Feb. 12, 2014).
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`The third IPR petition against the ’135 patent was filed by New Bay Capital,
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`LLC on June 23, 2013. That proceeding was terminated in favor of VirnetX,
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`pursuant to New Bay’s request for adverse judgment. IPR2013-00375, Paper No.
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`16 (Nov. 12, 2013).
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`3
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`RPX Corporation, which the Board found was acting as a proxy for time-
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`barred Apple, concurrently filed two other IPR petitions against the ’135 patent on
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`November 20, 2013, in IPR2014-00171 and IPR2014-00172 (i.e., the fourth and
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`fifth IPR petitions). As VirnetX explained, Apple tried to hide its involvement in
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`the RPX proceedings in several ways, giving the false impression that Apple and
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`RPX were unconnected entities without a privity or real party-in- interest
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`relationship. IPR2014-00171, Paper No. 55 at 5-7 (redacted) (Mar. 6, 2014);
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`IPR2014-00172, Paper No. 55 at 5-7 (redacted) (Mar. 6, 2014). Despite these
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`efforts, the Board found that Apple was a real party-in-interest for both of RPX’s
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`petitions, and accordingly denied institution given Apple’s time-barred status.
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`IPR2014-00171, Paper No. 57 at 3 (redacted) (June 5, 2014); IPR2014-00172,
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`Paper No. 57 at 3 (redacted) (June 5, 2014).
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`Microsoft then filed a sixth IPR petition in IPR2014-00558 on March 31,
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`2014 challenging the ’135 patent. The Board denied the petition because
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`Microsoft was time-barred under 35 U.S.C. § 315(b). IPR2013-00558, Paper No.
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`13 at 8 (July 23, 2014), reh’g denied Paper No. 16 (Sep. 5, 2014).
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`The Mangrove Partners Master Fund, Ltd. filed the seventh IPR petition in
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`IPR2015-01046 on April 14, 2015 challenging the ’135 patent. The Board
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`instituted the proceeding. IPR2015-01046, Paper No. 11 (Oct. 7, 2015). Apple
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`filed the eighth IPR petition in IPR2016-00062, which is at issue in this request.
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`4
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`According to Apple, the grounds and declarations submitted with its Petition are
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`Case No. IPR2015-01046
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`the same as those in the Mangrove petition, (Paper No. 2 in IPR2016-00062 at 4;
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`Exs. 1003 in each proceeding), although Apple’s Petition also raises new issues
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`and introduces new exhibits (Paper No. 1 in IPR2016-00062 at 39-42).
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`Apple’s challenges to the validity of the ’135 patent have not been limited to
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`challenges before the Office. Apple also challenged the validity of the ’135 patent
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`in a litigation that included a jury trial. In that litigation, VirnetX Inc. v. Cisco Sys.
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`Inc. et al., Case No. 6:10-cv-00417 (E.D. Tex.), Apple failed to establish that any
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`claim of the ’135 patent was invalid. (Ex. 2004 in IPR2016-00062, Jury Verdict
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`Form (E.D. Tex. Nov. 6, 2012).) Apple appealed to the U.S. Court of Appeals for
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`the Federal Circuit, which affirmed that “none of the asserted claims are invalid.”
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`VirnetX, Inc. v. Cisco Sys., Inc, 767 F.3d 1308, 1313-14 (Fed. Cir. 2014).
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`III. LEGAL STANDARD
`“A party dissatisfied with a decision may file a request for rehearing.”
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`37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.” Id.
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`Institution decisions are reviewed on rehearing for an abuse of discretion.
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`See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s
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`based on an erroneous conclusion of law or clearly erroneous factual findings, or
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`5
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`. . . a clear error of judgment.” Apple Inc. v. DSS Technology Management, Inc.,
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`Case No. IPR2015-01046
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`IPR2015-00369, Paper No. 14 at 3 (Aug. 12, 2015) (citing PPG Indus. Inc. v.
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`Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988)).
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`IV. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. The Decision Incorrectly Applied § 315(b) in Failing to Conclude
`Apple Is Time-Barred
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`Just like the first two IPRs filed by Apple, and the two IPRs filed by RPX on
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`Apple’s behalf, Apple’s Petition in IPR2016-00062 should have been denied under
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`§ 315(b). (Prelim. Resp. in IPR2016-00062 at 1-3.) The Board, relying on 37
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`C.F.R. § 42.122(b), instead found that “the one-year time limit [in § 315(b)] ‘shall
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`not apply when the petition is accompanied by a request for joinder.’” (Decision at
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`4.) The Board’s Decision is inconsistent with the statutory language in §§ 315(b)
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`and (c), which provide:
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`(b) Patent Owner’s Action. –
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`An inter partes review may not be instituted if the
`petition requesting the proceeding is filed more than 1
`year after the date on which the petitioner, real party in
`interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent. The time
`limitation set forth in the preceding sentence shall not
`apply to a request for joinder under subsection (c).
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`(c) Joinder. –
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`If the Director institutes an inter partes review, the
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`6
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`Case No. IPR2015-01046
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`Director, in his or her discretion, may join as a party to
`that inter partes review any person who properly files a
`petition under section 311 that the Director, after
`receiving a preliminary response under section 313 or the
`expiration of the time for filing such a response,
`determines warrants the institution of an inter partes
`review under section 314.
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`35 U.S.C. §§ 315(b), (c) (emphasis added). As a result of these provisions, before
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`a request for joinder may be considered, the Board must first determine that the
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`petition accompanying the request for joinder warrants institution. Id.; see also
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`Butamax Adv. Biofuels LLC v. Gevo, Inc., IPR2014-00581, Paper No. 8 at 7 (Oct.
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`14, 2014). If a party “properly files a petition” within the one-year deadline, and
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`then files a “request for joinder under subsection (c)” after the one-year deadline,
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`§ 315(b) would permit the Board to grant the request for joinder. 35 U.S.C. §§
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`315(b), (c). This is so because the petition, assuming it is otherwise sufficient,
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`would have warranted institution. Id. A petition filed after the one-year deadline
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`does not warrant institution—in fact, it is expressly barred by statute, see 35 U.S.C.
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`§ 315(b)—and so a request for joinder associated with such a petition cannot be
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`properly considered. Id.
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`That a petition is not a request for joinder is clear from the language of the
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`statute. Within § 315(b) itself, the statute uses the terms “petition” and “request
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`for joinder” separately. Even the Office’s own rules distinguish between petitions
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`7
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`and requests for joinder. See 37 C.F.R. § 42.122(b) (“. . . the petition is
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`Case No. IPR2015-01046
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`accompanied by a request for joinder”). As Members of the Board have observed
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`in analogous circumstances, the Decision’s interpretation “effectively rewrites the
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`second sentence of § 315(b) as follows with added material underlined: The time
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`limitation set forth in the preceding sentence shall not apply to a petition
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`accompanied by a request for joinder under subsection (c) if that request is
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`granted.” Target Corp. v. Destination Maternity Corp., IPR2014-00508, Paper No.
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`28, Dissent slip op. at 18 (Feb. 12, 2015) (emphasis original). This is improper.
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`The Office is not permitted to modify the clear intent of Congress. See Chevron
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`U.S.A. Inc. v. Natural Res. Def. Council Inc., 467 U.S. 837, 842 (1984) (“If the
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`intent of Congress is clear, that is the end of the matter; for the court, as well as the
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`agency, must give effect to the unambiguously expressed intent of Congress.”).
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`The Office may not “convert[] the statutory bar set forth [in § 315(b)] into a
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`discretionary bar in certain circumstances.” Target, Dissent slip op. at 18.
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`Allowing Apple to participate in this proceeding is an ultra vires action by
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`the Board. Zhongshan Ocean Motor Co. v. Nidex Motor Corp., IPR2015-00762,
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`Paper No. 16, Dissent slip op. at 1 (Oct. 5, 2015) (“the majority’s determination
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`that 35 U.S.C. §§ 315(b) and 315(c) provide discretion to join time-barred issues to
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`an inter partes review proceeding is ultra vires”). Even if the Decision is correct
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`that its finding as to Apple is consistent with 37 C.F.R. § 42.122(b) (Decision at 4),
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`8
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`§ 315(b) should control. Oshkosh Truck Corp. v. United States, 123 F.3d 1477,
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`Case No. IPR2015-01046
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`1481 (Fed. Cir. 1997) (agency regulation receives no deference where it is at odds
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`with the statutory language). The Decision should have denied Apple’s Petition.
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`The Decision states that it “considered Patent Owner’s arguments” regarding
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`this interpretation of § 315(b), but does “not find these arguments persuasive for at
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`least the reasons set forth by Petitioner.” (Decision at 4.) However, the only
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`“reason” provided by Apple (other than reliance on an interpretation of the
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`Office’s rules and non-precedential Board decisions) is that “VirnetX’s reading of
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`§ 315(b) would render its second sentence a legal nullity – it would never apply, as
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`no petition filed more than a year after service could ever be the basis of
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`participation in any proceeding.” (Reply in IPR2016-00062 at 3 (emphasis
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`original) (citing U.S. v. Atl. Research, 551 U.S. 128, 137 (2007).) Apple’s reason
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`is simply not true; § 315(b)’s second sentence would apply when a petition is filed
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`before the one-year deadline, but a request for joinder is filed after the one-year
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`deadline.2 The Decision’s adoption of Apple’s argument was legal error. Just like
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`Apple’s first four attempts at evading the statutory one-year bar, Apple’s Petition
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`2 The Federal Circuit’s observation, in dicta in Achates Reference Publishing, Inc.
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`v. Apple Inc., 803 F.3d 652, 657 (Fed. Cir. 2015), that “an otherwise time-barred
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`party may nonetheless participate in an inter partes review proceeding if another
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`party files a proper petition” is consistent with this principle.
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`9
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`in the present proceeding should have been rejected under § 315(b).
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`Case No. IPR2015-01046
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`B.
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`The Decision Incorrectly Applied § 325(d) and Ignored Apple’s
`Numerous Serial and Concurrent Attacks to Validity
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`Even if the Board concludes that Apple’s Petition is not statutorily barred,
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`Apple’s past conduct and the numerous challenges to the ’135 patent nonetheless
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`compel that the Petition be denied under § 325(d).
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` (Prelim. Resp. in
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`IPR2016-00062 at 4-11.) The Decision incorrectly overlooked VirnetX’s analysis
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`of § 325(d), not even discussing it in any manner at all.
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`In enacting § 325(d), Congress had a clear intent to provide the Board a tool
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`to discourage serial challenges to the same patent through inter partes reviews,
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`which unnecessarily burden the resources of the Board and patent owners. See 157
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`Cong. Rec. S1041-42 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl) (the purpose
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`of § 325(d) is to avoid “serial challenges” and the resulting burden on the patent
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`owners and Office in managing multiple proceedings involving the same patent).
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`The Board has defined the contours of how § 325(d) should be applied in
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`numerous past cases. See, e.g., Conopco, Inc. v. Procter & Gamble Co., IPR2014-
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`00506, Paper No. 25 at 3-4 (Dec. 10, 2015) (designated informative) (not allowing
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`a petitioner to file a “follow-on” second petition to “correct deficiencies noted” as
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`to a first petition, since doing so would “tax Board resources, and force patent
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`owners to defend multiple attacks”); Standard Innovation Corp. v. Lelo, Inc.,
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`IPR2014-00907, Paper No. 10 at 4 (Dec. 1, 2014) (denying institution where
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`10
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`“[n]either the Petition nor the Motion for Joinder presents cogent argument or
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`Case No. IPR2015-01046
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`evidence to explain why the grounds of unpatentability asserted in the Petition
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`could not have been asserted in the [previous] IPR”); Conopco, Inc. v. Procter &
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`Gamble Co., IPR2014-00628, Paper No. 21 at 11 (Oct. 20, 2014) (noting that “the
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`interests of fairness, economy, and efficiency support” denying institution where a
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`petition files a second petition relying on references and arguments it could have
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`raised in a first unsuccessful petition); Unified Patents, Inc. v. Personal Web
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`Techs., LLC, IPR2014-00702, Paper No. 13 at 2-3, 7-8 (July 24, 2014) (declining
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`to institute an IPR where three other IPR petitions, and one request for ex parte
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`reexamination, had previously been filed by other parties); Prism Pharma, Co.,
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`Ltd. v. Choongwae Pharma Corp., IPR2014-00315, Paper No. 14 at 2, 12-13 (July
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`8, 2014) (denying IPR petition under § 325(d) because “[t]he same prior art . . .
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`and arguments substantially the same as Petitioner’s current contention” were
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`raised during prosecution).
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`To name just a few of the facts compelling application of § 325(d) in this
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`case, discussed in more detail above in Section II: (1) the ’135 patent has been
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`subjected to eleven inter partes challenges at the Office (Prelim. Resp. in
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`IPR2016-00062 at 1, 4, 7, 9); (2) six of the eleven challenges were either filed
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`directly by Apple or on Apple’s behalf by RPX in an attempt to evade the one-year
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`statutory bar under § 315(b) (id. at 1, 4-6); (3) Apple already tried to establish that
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`11
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`any claim of the ’135 patent was invalid in litigation, but Apple’s validity
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`Case No. IPR2015-01046
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`arguments were rejected by both the jury and the Federal Circuit (id. at 4, 13); (4)
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`Apple is a third-party requester in a pending inter partes reexamination of the ’135
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`patent (id. at 5); and (5) the same Kiuchi reference at issue in Apple’s Petition is
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`also at issue in another pending inter partes reexamination of the ’135 patent (id. at
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`4-5). The Decision’s non-application of § 325(d) cannot be reconciled with the
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`decisions of numerous other panels, such as those noted above. Apple’s Petition
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`should have been denied under § 325(d).
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`V.
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`PATENT OWNER REQUESTS REHEARING BY AN EXPANDED
`PANEL THAT INCLUDES THE CHIEF JUDGE
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`Patent Owner requests that an expanded panel that includes the Chief Judge
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`consider this request for rehearing. See Standard Operating Procedure 1, Rev. 14
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`(May 8, 2015), Section III.C; see also Google Inc. v. SimpleAir, Inc., CBM2015-
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`00019, Paper No. 15 at 8 (Aug. 19, 2015) (considering a request for expanded
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`panel review under Standard Operating Procedure 1, Rev. 14). Patent Owner is
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`making this request because (1) the proceeding “involves an issue of exceptional
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`importance,” and (2) “[c]onsideration by an expanded panel is necessary to secure
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`and maintain uniformity of the Board’s decisions, such as where different panels of
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`the Board render conflicting decisions on issues of statutory interpretation . . ., or a
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`substantial difference of opinion among judges exists on issues of statutory
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`interpretation.” Standard Operating Procedure 1, Rev. 14, Section III.A.
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`For example, as discussed above in Section IV.A, the correct interpretation
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`of § 315(b) is hotly debated within the Board itself. Two previous expanded
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`panels considering (among other issues) whether § 315(b)’s one-year bar applies to
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`a petition accompanied by a request for joinder have resulted in closely split
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`decisions; the Target decision (4-3) and the Zhongshan decision (3-2), neither of
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`which is precedential, demonstrate that an expanded panel that includes the Chief
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`Judge should consider the issue, which is critical to the proper scope of the Board’s
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`statutory authority. Given that the Board’s willingness to join a time-barred party
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`has been viewed as ultra vires (i.e., beyond the Board’s legal authority) by at least
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`some judges, this is an issue of tremendous importance. Zhongshan Ocean Motor
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`Co., IPR2015-00762, Paper No. 16, Dissent slip op. at 1.
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`An expanded panel is also needed because the Decision’s application of
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`§ 325(d) is inconsistent with that of many past panels. See supra Section IV.B.
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`The ’135 patent is at issue in three separate pending office challenges (including
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`IPR2015-01046 and Control Nos. 95/001,679 and 95/001,682), had its validity
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`confirmed in one office challenge (Control No. 95/001,269), had its validity
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`confirmed by a jury and the Federal Circuit, and was at issue in six IPRs that were
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`dismissed. Apple itself has been associated with six of the office challenges to the
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`’135 patent, including two in which Apple improperly hid its involvement to try to
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`sidestep its time-barred status. The Decision’s grant of Apple’s Petition and
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`joinder of Apple is inconsistent with Congress’s intent for § 325(d) and previous
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`decisions by the Board applying § 325(d).
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`VI. CONCLUSION
`When Congress established the inter partes review process, it had a clear
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`concern that patent owners would be subjected to serial attacks. 157 Cong. Rec.
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`S1041-42 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl). It is no mistake that
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`§§ 315(b) and 325(d) appear in the statute; both provide tools to alleviate the
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`concern for harassment. The proper and consistent application of these provisions
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`is necessary. For at least these reasons, VirnetX respectfully requests rehearing of
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`the Decision and denial of Apple’s Petition.
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`Respectfully submitted,
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`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
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`Counsel for VirnetX Inc.
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`Dated: February 8, 2016
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`Case No. IPR2015-01046
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Petitioner a true and correct copy of the foregoing Patent Owner’s
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`Request for Rehearing Under 37 C.F.R. § 42.71(d)(1) of Institution Decision in
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`IPR2016-00062 by electronic means on the date below at the following addresses
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`of record:
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`Abraham Kasdan (akasdan@wiggin.com)
`James T. Bailey (jtb@jtbaileylaw.com)
`IP@wiggin.com
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`Jeffrey P. Kushan
`Scott Border
`Thomas A. Broughan III
`iprnotices@sidley.com
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`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
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`Counsel for VirnetX Inc.
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`Dated: February 8, 2016