`Filed: September 17, 2013
`
`
`Filed on behalf of: VirnetX Inc.
`By:
`Joseph E. Palys
`
`Naveen Modi
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
`Telephone: 571-203-2700
`Facsimile: 202-408-4400
`E-mail: joseph.palys@finnegan.com
` naveen.modi@finnegan.com
`
`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
`
`v.
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`VIRNETX INC.
`Patent Owner
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`
`
`Case IPR2013-00348
`Patent 6,502,135
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`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 6,502,135
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`MANGROVE 1015
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`I.
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`II.
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`Case No. IPR2013-00348
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`Table of Contents
`
`Introduction ...................................................................................................... 1
`
`The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review ......................................................................................... 3
`
`A.
`
`The Petition Must Be Denied Under 35 U.S.C. § 315(b) ..................... 5
`
`1.
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`2.
`
`3.
`
`Procedural History Relevant to § 315(b) .................................... 6
`
`The Plain Meaning of § 315(b) and the Board’s
`Precedent Bar the Petition ........................................................... 7
`
`The Legislative History Confirms that the Petition Is
`Barred ........................................................................................10
`
`4.
`
`Denying the Petition Is Not Unjust ...........................................12
`
`The Petition Fails to Comply with 37 C.F.R. § 42.104(b)(4) .............13
`
`The Board Should Not Institute Based on the Petition’s
`Redundant Grounds .............................................................................15
`
`B.
`
`C.
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`III. The Petition’s Claim Constructions Are Flawed and Should Be
`Rejected .........................................................................................................18
`
`A. Overview of the ’135 Patent ................................................................19
`
`B.
`
`“Virtual Private Network (VPN)” (Claims 1, 4, 6, 9, 10, 12, and
`18) ........................................................................................................21
`
`C.
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`“Virtual Private Link” (Claim 13) .......................................................26
`
`D.
`
`“Domain Name” (Claims 1, 3, 10, 13, and 18) ...................................27
`
`E.
`
`F.
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`“Domain Name Service” (Construe as Part of “Domain Name
`Service (DNS) Request”) ....................................................................29
`
`“Domain Name Service (DNS) Request” (Claims 1, 3-5, and
`18) ........................................................................................................30
`
`G.
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`“DNS Server” (Claims 2, 8, and 18) ...................................................31
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`MANGROVE 1015
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`Case No. IPR2013-00348
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`H.
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`“DNS Proxy Server” (Claims 8 and 10) .............................................32
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`I.
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`J.
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`“Secure [Target] Web Site” (Claims 1, 3, 8, 10, and 18)....................33
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`“Web Site” (Construe as Part of “Secure [Target] Web Site”) ...........36
`
`K.
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`“Secure Web Computer” (Claim 10) ..................................................37
`
`L.
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`“Target Computer” (Claims 1, 4-7, 9-11, and 18) ..............................39
`
`M.
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`“IP Address Hopping Scheme” (Claim 6) ..........................................40
`
`N.
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`“Determining” (Claims 1, 3-5, and 18) ...............................................42
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`O.
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`“Client Computer” (Claims 1-7, 9-13, 17, and 18) .............................43
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`P.
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`“Transparently Creating a Virtual Private Network (VPN)”
`(Claims 1, 10, and 18) .........................................................................46
`
`Q.
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`“Automatically Initiating the VPN” (Claims 1, 4, 5, and 18) .............47
`
`R.
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`“Passes Through the Request to a DNS Server” (Claim 8) ................48
`
`S.
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`T.
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`“Gatekeeper Computer” (Claims 7 and 10-12) ...................................49
`
`“Allocates VPN Resources” (Claim 7), “Allocates Resources
`for the VPN” (Claim 10), and “Allocating Resources to
`Establish a Virtual Private Link” (Claim 13) ......................................50
`
`IV.
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`If Trial Is Instituted, VirnetX Requests an 18-Month Schedule ...................51
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`V.
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`Conclusion .....................................................................................................52
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`ii
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`MANGROVE 1015
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`FEDERAL CASES
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`Table of Authorities
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`Case No. IPR2013-00348
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`Page(s)
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`Baldwin Graphic Sys., Inc. v. Siebert, Inc.,
`512 F.3d 1338 (Fed. Cir. 2008) ............................................................................ 8
`
`Conn. Nat’l Bank v. Germain,
`503 U.S. 249 (1992) ............................................................................................ 10
`
`Electro Sci. Indus., Inc. v. Dynamic Details, Inc.
`307 F.3d 1343 (Fed. Cir. 2002) .......................................................................... 47
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001 (Jan. 9, 2013) Paper No. 15 ................................................ 19, 25
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 25
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) ............................................................................ 19
`
`LaRose Indus., LLC v. Capriola Corp.,
`IPR2013-00120 (July 22, 2013) Paper No. 20 ............................................. 15, 18
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003 (Oct. 25, 2012) Paper No. 7 ............................................passim
`
`Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC,
`IPR2013-00093 (Apr. 29, 2013) Paper No. 28 ............................................. 19, 25
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .............................................. 19, 30, 42
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co.,
`182 F.3d 1298 (Fed. Cir. 1999) .......................................................................... 47
`
`Universal Remote Control, Inc. v. Universal Elecs., Inc.,
`IPR2013-00168 (Aug. 26, 2013) Paper No. 9 .................................................. 5, 9
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`iii
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`MANGROVE 1015
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`FEDERAL STATUTES
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`Case No. IPR2013-00348
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`35 U.S.C. § 102 ........................................................................................................ 17
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`35 U.S.C. § 311 .......................................................................................................... 3
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`35 U.S.C. § 313 .......................................................................................................... 1
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`35 U.S.C. § 315 .................................................................................................passim
`
`FEDERAL REGULATIONS
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`37 C.F.R. § 42.100(b) .............................................................................................. 18
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`37 C.F.R. § 42.100(c) ............................................................................................... 52
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`37 C.F.R. § 42.104(b)(4) .......................................................................... 4, 13, 14, 15
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`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`OTHER AUTHORITIES
`
`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) ................................................ 11, 12
`
`Meeting of the H. Comm. on Judiciary, Transcript of Markup of H.R. 1249
`(Apr. 14, 2011) .................................................................................................... 12
`
`M.P.E.P. § 2111.01(I) .............................................................................................. 25
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`iv
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`MANGROVE 1015
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`I.
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`Introduction
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`Case No. IPR2013-00348
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`Patent Owner VirnetX Inc. (“VirnetX” or “Patent Owner”) respectfully
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`submits this Preliminary Response in accordance with 35 U.S.C. § 313 and
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`37 C.F.R. § 42.107, responding to the Petition for Inter Partes Review (Paper
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`No. 1, the “Petition”) filed by Apple Inc. (“Apple”).
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`This is one of seven inter partes reviews requested by Apple against
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`VirnetX’s patents. In these inter partes reviews, Apple seeks its third and fourth
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`opportunities to challenge the validity of U.S. Patent No. 6,502,135 (“the ’135
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`patent”). Apple’s first opportunity arose in litigation, where it challenged the
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`validity of certain claims of the ’135 patent in the Eastern District of Texas. But
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`the court entered final judgment in VirnetX’s favor, and Apple has appealed that
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`ruling. (Ex. 2002, Jury Verdict Form Against Apple in VirnetX, Inc. v. Apple Inc.,
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`Case No. 6:10-CV-417 (E.D. Tex. Nov. 6, 2012) (“the ’417 Litigation”); Ex. 2006,
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`Final Judgment Against Apple in the ’417 Litigation (E.D. Tex. Feb. 28, 2013).)
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`Apple mounted its second validity challenge by requesting inter partes
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`reexamination of the ’135 patent during that litigation. That reexamination
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`(Control No. 95/001,682) is ongoing. Despite having a validity challenge pending
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`before the Office, Apple attempts to initiate its third and fourth validity challenges
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`by filing two inter partes review petitions against the ’135 patent (Case No.
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`IPR2013-00349 (“the ’349 Petition”) and this Petition). But, as explained below,
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`1
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`MANGROVE 1015
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`institution of these proceedings is statutorily barred, and there is no reason to give
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`Case No. IPR2013-00348
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`Apple these additional opportunities.
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`In addition to these challenges by Apple, claims of the ’135 patent have been
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`challenged and upheld several other times in the Office and in U.S. district court.
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`In 2010, a jury in the Eastern District of Texas found the asserted claims of the
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`’135 patent not invalid and infringed by Microsoft Corporation. (Ex. 2007 at 2,
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`Verdict Form in VirnetX, Inc. v. Microsoft Corp., Case No. 6:07-CV-80 (E.D. Tex.
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`Mar. 16, 2010).) Concurrent with the trial in Texas, Microsoft sought
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`reexamination of the ’135 patent, but the Office confirmed all challenged claims
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`during the proceeding. (See Control No. 95/001,269; Ex. 1001.) More recently,
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`following a trial in the Eastern District of Texas separate from Apple’s trial in the
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`’417 Litigation, the court issued a final judgment that the ’135 patent claims
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`asserted against Cisco Systems, Inc. (“Cisco”) were not invalid. (Ex. 2008, Jury
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`Verdict Form as to Cisco in the ’417 Litigation (E.D. Tex. Mar. 14, 2013); Ex.
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`2009, Final Judgment as to Cisco in the ’417 Litigation (E.D. Tex. Mar. 19, 2013.)
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`There are also two other ongoing proceedings at the Office against the
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`’135 patent. One is an inter partes reexamination filed by Cisco (Control No.
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`95/001,679). The Office merged that proceeding with Apple’s Control No.
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`95/001,682. The second is an inter partes review requested by New Bay Capital
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`(Case No. IPR2013-00375). As a result, there are now five post-grant challenges
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`2
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`MANGROVE 1015
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`Case No. IPR2013-00348
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`
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`before the Office concerning the ’135 patent, a patent which the Office previously
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`confirmed in reexamination: Apple’s and Cisco’s inter partes reexaminations,
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`New Bay’s inter partes review petition, and Apple’s two inter partes review
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`petitions. These proceedings are largely duplicative of one another, and instituting
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`Apple’s inter partes reviews will only serve to duplicate efforts already undertaken
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`in litigation and in pending (and prior) reexamination of the ’135 patent. Indeed,
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`Apple’s Petition proposes rejections based on Beser alone or in combination with
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`RFC 2401, Blum, or Aventail, which are also asserted in Apple’s ongoing
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`reexamination of the ’135 patent. (Compare Petition with Ex. 2010, Request for
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`Inter Partes Reexamination Under 35 U.S.C. § 311, filed July 10, 2011, in Control
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`No. 95/001,682.)
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`Apple’s petitions are also defective in a number of ways described below.
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`As one example, Apple proposes several defective claim constructions that do not
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`represent the broadest reasonable interpretation of the claims in light of the
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`specification. Because its proposed rejections are based on incorrect constructions,
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`Apple cannot demonstrate a reasonable likelihood of prevailing for any claim of
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`the ’135 patent. Accordingly, the Board should not institute these proceedings.
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`II. The Petition Fails to Meet the Requirements for Instituting an
`Inter Partes Review
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`The Board need not waste its resources on Apple’s latest attempt to
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`challenge the ’135 patent because the Petition does not comply with the
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`3
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`MANGROVE 1015
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`Case No. IPR2013-00348
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`requirements for instituting inter partes review. Each ground will be discussed in
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`more detail in the sections below, but in short, one defect that disposes of the entire
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`Petition is that it is time-barred under 35 U.S.C. § 315(b). The Petition was filed
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`more than one year after Apple was served with a complaint alleging infringement
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`of the ’135 patent. Accordingly, the Petition should be denied based on the plain
`
`language of the statute, the Board’s precedent, and the relevant legislative history.
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`Apple also violates 37 C.F.R. § 42.104(b)(4) because the Petition fails to
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`“specify where each element of the claim is found in the prior art patents or printed
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`publications relied upon.” 37 C.F.R. § 42.104(b)(4). It cites exclusively to three
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`voluminous declarations accompanying the Petition and not to the asserted
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`references at all. Moreover, Apple fails to identify the features of the cited
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`references that allegedly correspond to each ’135 claim feature. Instead, Apple
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`broadly generalizes the disclosure of each reference without discussing specific
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`aspects of them.
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`Apple also proposes grounds of rejection that are redundant of one another
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`and also redundant of the proposed rejections in Apple’s other petition for
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`inter partes review of the ’135 patent, the ’349 Petition. Apple does not explain
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`any differences between its parallel proposed rejections, or explain how any
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`particular proposed rejection improves on another in any way. Addressing these
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`redundant grounds would significantly burden the Board and the patent owner, and
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`4
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`MANGROVE 1015
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`it would cause unnecessary delay of the inter partes review proceedings, all
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`without any added benefit. Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
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`Case No. IPR2013-00348
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`CBM2012-00003 (Oct. 25, 2012) Paper No. 7.
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`A. The Petition Must Be Denied Under 35 U.S.C. § 315(b)
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`The plain language of 35 U.S.C. § 315(b) compels dismissal of the Petition.
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`The statute prohibits inter partes review of a patent based on a petition filed more
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`than one year after the petitioner has been served with “a complaint” alleging
`
`infringement of the patent. It is undisputed that VirnetX served Apple with “a
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`complaint” alleging infringement of the ’135 patent more than one year before the
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`Petition was filed. Apple asks the Board to ignore this fact and instead focus on a
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`later-served complaint, which Apple contends resets the one-year time period for
`
`filing a petition for inter partes review. The Board has already addressed this same
`
`issue in another proceeding, where it rejected Apple’s view and adopted VirnetX’s
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`interpretation of § 315(b). Universal Remote Control, Inc. v. Universal Elecs.,
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`Inc., IPR2013-00168 (Aug. 26, 2013) Paper No. 9. As discussed below, the
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`Board’s and VirnetX’s interpretation is also supported by the relevant legislative
`
`history.
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`Apple’s argument that dismissing the Petition would “unfairly foreclose use
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`of the IPR system” also rings hollow given that Apple has repeatedly availed itself
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`5
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`MANGROVE 1015
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`of the district court and the Office to challenge the ’135 patent, including in a still-
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`Case No. IPR2013-00348
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`pending inter partes reexamination proceeding.1
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`1. Procedural History Relevant to § 315(b)
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`VirnetX filed its first complaint against Apple on August 11, 2010, in the
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`’417 Litigation, alleging infringement of claims 1, 3, 7-10, and 12 of the ’135
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`patent (“the August 2010 Complaint”). (Ex. 2001, VirnetX Inc.’s Original
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`Complaint in the ’417 Litigation (E.D. Tex. Aug. 11, 2010).) VirnetX served the
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`complaint on Apple on August 18, 2010. (Ex. 2011, Proof of Service of VirnetX’s
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`Original Complaint on Apple in the ’417 Litigation (E.D. Tex. Aug 18, 2010).) As
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`explained above, in the litigation involving this complaint, which was amended2 at
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`times throughout the case, Apple challenged the validity of the ’135 patent. It did
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`1 Apple’s Petition should also not be joined with New Bay’s, if instituted, for
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`the reasons discussed in VirnetX’s Opposition to Apple’s Motion for Joinder, filed
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`August 28, 2013.
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`2 In the ’417 Litigation, VirnetX served Apple with amended complaints
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`alleging infringement of the ’135 patent on February 4, 2011, and April 5, 2011.
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`(Ex. 2012, Plaintiff VirnetX Inc.’s First Amended Complaint in the ’417 Litigation
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`(E.D. Tex. Feb. 4, 2011); Ex. 2005, Plaintiff VirnetX Inc.’s Second Amended
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`Complaint in the ’417 Litigation (E.D. Tex. Apr. 5, 2011).)
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`6
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`MANGROVE 1015
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`not succeed. A jury upheld the validity of the asserted claims, and the district court
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`Case No. IPR2013-00348
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`entered judgment finding those claims valid. (Exs. 2002, 2006.)
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`After obtaining the favorable jury verdict, VirnetX served Apple with
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`another complaint (Ex. 1050) on December 31, 2012 (“the 2012 Complaint”).
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`(Ex. 2013 at 2, Proof of Service of VirnetX Inc.’s Complaint in VirnetX Inc. v.
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`Apple Inc., No. 6:12-CV-00855 (E.D. Tex. Dec. 31, 2012), at 2.) The 2012
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`Complaint asserts the same ’135 patent claims as asserted in the August 2010
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`Complaint, but it alleges infringement by several Apple products that were not
`
`included in the earlier complaint. (Ex. 1050 at 4-11.)
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`Concurrent with the above litigations, Apple has also challenged the validity
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`of the ’135 patent in the Office by initiating an inter partes reexamination Control
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`No. 95/001,682, which remains pending. Although Apple has availed itself of
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`several opportunities to challenge the validity of the ’135 patent, it now seeks two
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`more opportunities by filing the Petition at issue here and a separate petition for
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`inter partes review in Case No. IPR2013-00348. These two petitions were filed in
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`June 2013, long after Apple was first served with a complaint alleging
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`infringement of the ’135 patent.
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`2. The Plain Meaning of § 315(b) and the Board’s Precedent Bar
`the Petition
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`Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if
`
`the petition requesting the proceeding is filed more than 1 year after the date on
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`7
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`MANGROVE 1015
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`Case No. IPR2013-00348
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`
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`which the petitioner, real party in interest, or privy of the petitioner is served with a
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`complaint alleging infringement of the patent.” 35 U.S.C. § 315(b) (emphasis
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`added). The language “a complaint” is not restrictive, and Apple agrees that it
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`means “any complaint.” (Petition at 2.) Thus, the directive of § 315(b) is clear: if
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`a petition is filed more than one year after the petitioner is served with any
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`complaint, inter partes review may not be instituted. Here, Apple filed its Petition
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`in June 2013, more than one year after it was served with the August 2010
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`Complaint. Under the plain language of § 315(b), therefore, an inter partes review
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`may not be instituted and Apple’s Petition must be dismissed.
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`Apple contends that VirnetX’s service of the later 2012 Complaint resets the
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`clock for purposes of § 315(b), making its Petition timely. (See Petition at 2.)
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`Apple’s proposed statutory construction, however, turns § 315(b) on its head.
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`According to Apple, “a petition filed within 1 year of the date any complaint
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`alleging infringement of the patent is served on a petitioner is timely . . . .”
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`(Petition at 2, emphases added.) But § 315(b) does not permissively define when a
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`petition “is timely.” Instead, it restrictively prohibits untimely petitions, stating
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`that an inter partes review “may not be instituted” if the petition is “filed more
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`than 1 year after” the petitioner has been served with a complaint alleging
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`infringement. See 35 U.S.C. § 315(b) (emphases added). Apple’s attempt to
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`8
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`MANGROVE 1015
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`rewrite § 315(b)’s statutory bar into a permissive, standing-creating provision is
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`Case No. IPR2013-00348
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`contrary to the statute’s plain language and structure.
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`Apple also argues that Ҥ 315(b) does not specify a one-year deadline that
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`runs from the date of the first complaint served on a petitioner.” (Petition at 2.)
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`But the statute need not do so because it specifies that the one-year deadline runs
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`from service of “a complaint,”
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`i.e., any complaint.
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` Apple’s proposed
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`constructioni.e., the one-year period is reset each time a patent owner serves a
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`complaintwould require rewriting § 315(b) to replace “a complaint” with “the
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`most recent complaint.” This is not what the statute says, and Apple cannot
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`rewrite it to say so.
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`Apple’s argument also conflicts with the Board’s precedent construing
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`§ 315(b). In Universal Remote Control, IPR2013-00168 Paper No. 9, the Board
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`considered whether the one-year bar under § 315(b) would be reset if a second
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`infringement complaint was served by the patent owner on the petitioner. The first
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`complaint was served in 2001 while the second complaint was served in 2012. Id.
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`at 3. Although the second complaint was served less than 12 months before the
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`petitioner filed its petition for inter partes review, the first complaint was not. Id.
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`The Board rejected the petition as time-barred under § 315(b). Id. at 4. In
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`particular, the Board disagreed that “the one-year grace period applies only to the
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`last of a chain of multiple lawsuits or that the filing of a later lawsuit renders the
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`9
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`service of a complaint in an earlier lawsuit to be a nullity as Petitioner argues.” Id.
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`Here, Apple’s request that the Board consider only the 2012 Complaint, and ignore
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`the August 2010 Complaint, is directly contrary to the Board’s decision in
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`Universal Remote Control.
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`3. The Legislative History Confirms that the Petition Is Barred
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`Apple also asserts that resetting the one-year period with each new
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`complaint would be consistent with Congress’s design for the AIA. Because the
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`plain language of the statute is clear, however, it is unnecessary to rely on
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`legislative history or other extrinsic evidence to show congressional intent. Conn.
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`Nat’l Bank v. Germain, 503 U.S. 249, 253-54 (1992) (“We have stated time and
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`again that courts must presume that a legislature says in a statute what it means and
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`means in a statute what it says there. When the words of a statute are
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`unambiguous, then, this first canon is also the last: ‘judicial inquiry is complete.’”
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`(citations omitted)).
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`To the extent the Board considers the legislative history, it supports
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`VirnetX’s interpretation, not Apple’s. When adopting the one-year bar in § 315(b)
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`instead of a proposed six-month deadline, Congress made clear that “it is important
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`that the section 315(b) deadline afford defendants a reasonable opportunity to
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`identify and understand the patent claims that are relevant to the litigation. It is
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`10
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`MANGROVE 1015
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`thus appropriate to extend the section 315(b) deadline to one year.” 157 Cong.
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`Case No. IPR2013-00348
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`Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Sen. Kyl) (emphasis added).
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`Thus, Congress intended the one-year period to allow defendants a
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`reasonable opportunity to identify and understand the relevant patent claims. Here,
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`Apple has already litigated claims of the ’135 patent to a verdict based on the
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`August 2010 Complaint and its subsequent amendments, and the 2012 Complaint
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`involves those same ’135 patent claims. In addition, Apple filed inter partes
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`reexaminations on all claims of those patents by October 2011. Apple cannot
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`claim that it needed until its 2013 petition filing date to identify and understand the
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`relevant claims of the ’135 patent.
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`Apple’s arguments also contravene Congress’s intent. Congress sought to
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`avoid an open-ended process in which a petitioner could harass a patent owner
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`with serial challenges. Congress noted that “[t]he inter partes proceeding in H.R.
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`1249 has been carefully written to balance the need to encourage its use while at
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`the same time preventing the serial harassment of patent holders.” Ex. 2003 at 72,
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`Meeting of the H. Comm. on Judiciary, Transcript of Markup of H.R. 1249
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`(Apr. 14, 2011) (statement of Judiciary Committee Chairman Lamar Smith).
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`Congress was also mindful of the “enhanced estoppels” built into the new statute,
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`and determined that one year from the date of service of a complaint for
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`infringement was sufficient for a defendant to determine whether to seek an inter
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`11
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`partes review. See 157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of
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`Case No. IPR2013-00348
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`Sen. Kyl).
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`Nothing in the legislative history of § 315(b) suggests that Congress
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`intended to reset the one-year clock every time a patent owner served a defendant
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`with a new complaint involving the same patent. To the contrary, Congress
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`wanted to provide a reasonable, but limited, time in which a defendant could elect
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`to initiate an inter partes review proceeding after being accused of infringement.
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`Apple’s more expansive view of § 315(b) conflicts with congressional intent.
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`4. Denying the Petition Is Not Unjust
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`Apple also argues that “reading § 315(b) to foreclose [these] petition[s]
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`based on the August 2010 complaint would be particularly unjust in this case”
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`because IPR proceedings were unavailable prior to September 16, 2012. (Petition
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`at 3.) Apple’s cries of injustice lack merit because Apple has, and continues to
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`avail itself of, multiple avenues to challenge the ’135 patent, including those in
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`district court and in pending inter partes reexamination. Given its ongoing inter
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`partes reexamination—the pre-AIA counterpart to inter partes review—Apple
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`cannot claim that dismissing its Petition would be unjust or leave it without
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`recourse.
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`12
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`MANGROVE 1015
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`B.
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`The Petition Fails to Comply with 37 C.F.R. § 42.104(b)(4)
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`Apple’s Petition is also defective for reasons apart from the time bar. A
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`Case No. IPR2013-00348
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`petition for inter partes review “must specify where each element of the claim is
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`found in the prior art patents or printed publications relied upon.” 37 C.F.R.
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`§ 42.104(b)(4). Apple’s Petition fails to satisfy this requirement. Far from
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`identifying where claim elements are found in the asserted prior art, the Petition
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`never cites the asserted references. Instead, the Petition discusses only its three
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`accompanying declarations. This voluminous body of declarant testimony serves
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`to obscure rather than “specify” the grounds of invalidity asserted in the Petition.
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`Moreover, for many claim features, the Petition broadly generalizes the asserted
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`prior art, and in doing so, fails to identify the specific aspects of the references
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`relied upon. The Board and Patent Owner are left to piece together, or simply
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`guess at, the specific grounds of invalidity.
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`The Petition contains no citations to the Beser, RFC 2401, Blum, Aventail,
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`and Hoke references themselves. Instead, the Petition relies entirely on three
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`accompanying declarations (Exs. 1003, 1005, 1006), totaling 246 pages. For each
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`of claims 1-10, 12-15, and 18, the Petition merely provides commentary based on
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`the declarations. Thus, the Petition does not “specify where each element of the
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`claim is found in the prior art . . . relied upon.” 37 C.F.R. § 42.104(b)(4).
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`13
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`Case No. IPR2013-00348
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`The Petition’s deficient proposed rejections, aside from failing to cite any
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`particular aspect of the prior art in many instances, further improperly rely on
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`broad generalities about what each asserted reference allegedly teaches. For
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`example, the Petition asserts that Beser discloses the “virtual private network
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`(VPN)” recited in independent claims 1, 10, and 18, and the “virtual private link”
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`recited in independent claim 13. But the Petition does not explain what particular
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`features in Beser teach a VPN or virtual private link. (See Petition at 16-20, 22-
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`25.) Instead, the Petition discusses Beser in generalities that paraphrase the claim
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`language. (See, e.g., id. at 16, “IP traffic sent over the public network in an IP
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`tunneling association ordinarily is encrypted”; id. at 17, “Beser shows that after
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`receiving a request, the trusted-third-party network device compares the unique
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`identifier in a request (e.g., a domain name) to an internal database of users or end
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`devices,” and “[i]f there is a match, the trusted-third-party network device initiates
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`a tunneling association.”) The Petition does not identify what in Beser constitutes
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`the purported VPN or virtual private link.
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`Accordingly, the Petition fails to comply with § 42.104(b)(4). The Petition
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`itself does not specify where each element of the claims is found in each prior art
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`reference: Beser, RFC 2401, Blum, Aventail, and Hoke. Nor does the Petition’s
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`general discussion of the references identify what aspects of the prior art it relies
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`on. Apple’s Petition instead invites the Board and the Patent Owner to guess at the
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`14
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`Case No. IPR2013-00348
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`proposed basis for instituting an IPR proceeding. Because the Petition contravenes
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`§ 42.104(b)(4), it does not demonstrate a reasonable likelihood of showing that any
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`of claims 1-10, 12-15, and 18 are anticipated or rendered obvious by Beser,
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`RFC 2401, Blum, Aventail, and Hoke.
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`C. The Board Should Not Institute Based on the Petition’s
`Redundant Grounds
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`In addition to its pending inter partes reexamination of the ’135 patent,
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`Apple has filed two petitions requesting inter partes review of the same claims of
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`the ’135 patent (this Petition and the one in Case No. IPR2013-00349). The Board
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`should reject this Petition because it raises grounds of rejection that are internally
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`redundant and are redundant in view of the proposed grounds in the ’349 Petition.
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`The Board has held that it will not consider redundant grounds of rejection like
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`Apple’s because the Board must issue a final written decision in inter partes
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`review proceedings within one year of institution (or 18 months for good cause).
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`Liberty Mut., CBM2012-00003 Paper No. 73 Redundant grounds place a
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`3 Although Liberty Mutual is a decision in a covered business method
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`review, the Board has applied its reasoning to inter partes reviews based on the
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`similar considerations that apply in both types of proceedings. See, e.g., LaRose
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`Indus., LLC v. Capriola Corp., IPR2013-00120 (July 22, 2013) Paper No. 20 at 4
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`(citing Liberty Mutual, CBM2012-00003 Paper No. 7 at 2-12).
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`significant burden on the Board and the patent owner, and they cause unnecessary
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`delay that jeopardizes completing the inter partes review by the statutory deadline.
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`Case No. IPR2013-00348
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`Id.
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`In Liberty Mutual, the Board identified two types of redundant rejections:
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`(1) “horizontally” redundant rejections and (2) “vertically” redundant rejections.
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`Id. at 3. The Board explained that horizontally redundant rejections apply “a
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`plurality of prior art references . . . not in combination to complement each other
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`but as distinct and separate alternatives.” Id. In this type of redundancy, the
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`references “provide essentially the same teaching to meet the same claim
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`limitation, and the associated arguments do not explain why one reference more
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`closely satisfies the claim limitation at issue in some respects than another
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`reference, and vice versa.” Id.
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`Vertical redundancy “exists when there is assertion of an additional prior art
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`reference to support another ground of unpatentability when a base ground already
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`has been asserted against the same claim without the additional reference and the
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`Petitioner has not explained what are the rela