`571-272-7822
`
`
`
`
`Paper 38
`Date: February 26, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD. and APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2015-010461
`Patent 6,502,135 B1
`____________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`1 Apple Inc., which filed a petition in IPR2016-00062, has been joined as a
`Petitioner in the instant proceeding.
`
`
`
`
`
`
`
`IPR2015-01046
`Patent 6,502,135 B1
`
`I.
`
`BACKGROUND
`VirnetX Inc. (“Patent Owner”), in its Request for Rehearing, Paper 35
`(“Req. Reh’g” or “Request”), seeks reversal of the Board’s Decision
`granting institution in IPR2016-00062 and joining IPR2016-00062 with
`IPR2015-01046. See Req. Reh’g 1. The Board denies the requested relief.
`
`II. DISCUSSION
`In the Decision dated January 25, 2016, Paper 28 (“Decision”), we
`granted institution of IPR2016-00062 (filed by Apple Inc.) and joined
`IPR2016-00062 with the instant matter (i.e., IPR2015-01046). Decision 6.
`Patent Owner argues that we incorrectly granted institution of
`IPR2016-00062 under 35 U.S.C. § 315(b). See, e.g., Req. Reh’g 6–10.
`Contrary to Patent Owner’s contention, our granting of institution of
`IPR2016-00062 is in accordance with 35 U.S.C. § 315(b) for at least the
`reasons previously discussed. Decision 3–4. Patent Owner reiterates that an
`alternative interpretation of 35 U.S.C. § 315(b) should be adopted to permit
`denial of institution of IPR2016-00062. See, e.g., Req. Reh’g 6–10. In
`support of this contention, Patent Owner continues to cite the dissent in
`Target Corp. v. Destination Maternity Corp., Case IPR2014-00508, dissent
`slip op. at 18 (PTAB Feb. 12, 2015) (Fitzpatrick, Bisk, & Weatherly,
`A.P.JJ., dissenting) (Paper 28) but does not explain why a dissent in this
`cited matter should compel us to adopt an alternate interpretation of
`35 U.S.C. § 315(b). We therefore continue not to do so.
`Patent Owner argues that “Apple’s past conduct and the numerous
`challenges to the ’135 patent nonetheless compel that the Petition be denied
`under § 325(d).” Req. Reh’g 10. According to 35 U.S.C. § 325(d), “the
`
`2
`
`
`
`
`
`
`IPR2015-01046
`Patent 6,502,135 B1
`
`
`Director may take into account whether, and reject the petition or request,
`because the same or substantially the same prior art or arguments previously
`were presented to the Office.” Having carefully considered Patent Owner’s
`arguments (Req. Reh’g 10–12), we decline to exercise our discretion to
`reject the Petition because the same or substantially the same prior art or
`arguments previously were presented (allegedly) to the Office, even
`assuming that the same or substantially the same prior art or arguments
`were, in fact, previously presented to the Office. Apple has been joined in
`this proceeding. Supra note 1. Also, Patent Owner’s Request indicates that
`most, if not all, of the prior petitions were denied for time bar reasons, and
`that the Office has not reached a final decision on the merits based on the
`same or substantially same prior art in an IPR or a reexamination
`proceeding. See Req. Reh’g 2–5.
`Patent Owner requests rehearing by an expanded panel that includes
`the Chief Judge. Id. at 12–14. Discretion to expand a panel rests with the
`Chief Judge, who, on behalf of the Director, may act to expand a panel on a
`suggestion from a judge or panel. AOL Inc. v. Coho Sicensing LLC, Case
`IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015)(Paper 12)(informative).
`Patent Owner’s suggestion was considered by the Acting Chief
`Administrative Patent Judge, who declined to expand the panel.
`We have considered Patent Owner’s arguments in the Request but
`find them unpersuasive to demonstrate that we misapprehended or
`overlooked any points.
`
`
`
`
`3
`
`
`
`
`
`
`
`
`IPR2015-01046
`Patent 6,502,135 B1
`
`III. CONCLUSION
`Patent Owner’s Request is granted to the extent that the Board has
`reconsidered its Decision, but Patent Owner’s requested relief for a reversal
`of the Decision is denied because Patent Owner has not shown that the
`Decision overlooks or misapprehends a material point.
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that the Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`5
`
`
`IPR2015-01046
`Patent 6,502,135 B1
`
`
`PETITIONER:
`Abraham Kasdan
`WIGGIN AND DANA LLP
`akasdan@wiggin.com
`
`James T. Bailey
`jtb@jtbaileylaw.com
`
`Jeffrey P. Kushan
`Scott M. Border
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`sborder@sidley.com
`
`PATENT OWNER:
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
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