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
`
`
`
`Paper No. ____
`Filed: May 17, 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
`
`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
`
`
`
`
`
`
`
`
`PATENT OWNER’S IDENTIFICATION OF IMPROPER ARGUMENTS IN
`PETITIONERS’ CONSOLIDATED REPLY BRIEF AND PETITIONER
`APPLE INC.’S SEPARATE REPLY FILING
`
`
`1 Apple Inc., who filed a petition in IPR2016-00062, has been joined as a Petitioner
`in the instant proceeding.
`
`
`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
`
`
`
`Paper No. ____
`Filed: May 17, 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
`
`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
`
`
`
`
`
`
`
`
`PATENT OWNER’S IDENTIFICATION OF IMPROPER ARGUMENTS IN
`PETITIONERS’ CONSOLIDATED REPLY BRIEF AND PETITIONER
`APPLE INC.’S SEPARATE REPLY FILING
`
`
`1 Apple Inc., who filed a petition in IPR2016-00062, has been joined as a Petitioner
`in the instant proceeding.
`
`
`
`Case IPR2015-01046
`
`
`I.
`
`Introduction
`
`Pursuant to the Patent Trial and Appeal Board’s authorization on May 13,
`
`2016, Patent Owner identifies the sections of Petitioners’ Consolidated Reply Brief
`
`(Paper No. 50, “Consol. Br.”) and Petitioner Apple Inc.’s Separate Reply Filing
`
`(Paper No. 53, “Apple Br.”) believed to be improper. Specifically, as identified
`
`below, the consolidated reply brief presents new claim mappings, and Apple’s
`
`separate reply presents an argument that goes beyond responding to Patent
`
`Owner’s Response. As such, the briefs and supporting evidence are improper and
`
`should be stricken.
`
`II.
`
`Petitioners’ Consolidated Reply Brief
`
`The Petitioners’ consolidated reply brief presents a number of improper new
`
`claim mappings:2
`
`New Position #1: The brief proposes three mappings in alleging that Kiuchi
`
`discloses the claimed “Domain Name Service (DNS) request” generated in claim
`
`
`2 Patent Owner notes that the brief presents other arguments that build on one or
`
`more of the identified new positions. But given the Board’s limited authorization
`
`in its email of May 13, 2016, and consistent with the Board’s practice, Patent
`
`Owner has not “attempt[ed] to sort the proper from improper portions of the
`
`reply.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
`
`2012).
`
`1
`
`
`
`Case IPR2015-01046
`
`1, including “(a) ‘C-HTTP name service request’ sent to the name server,” “(b) ‘a
`
`request for connection to the server-side proxy,’” and “(c) ‘C-HTTP requests’ to
`
`the server-side proxy.” Consol. Br. at 10. At a minimum, mappings (b) and (c) are
`
`new. See, e.g., Paper No. 5 at 27; Paper No. 1 in IPR2016-00062 at 28.
`
`New Position #2: The brief alleges “the hostname in a URL [in Kiuchi]
`
`corresponds to an institution’s server-side proxy,” relying on Kiuchi’s appendices.
`
`Consol. Br. at 7 (emphasis added); see also id. at 4, 5, 7, 10, 16. But the petitions
`
`did not rely on Kiuchi’s appendices, and instead asserted “the hostname
`
`corresponds to an origin server” that is only “associated with a server-side proxy.”
`
`See Paper No. 5 at 22 (emphasis added); Paper No. 1 in IPR2016-00062 at 23.
`
`New Position #3: RFC 1945 (Exhibit 1014) was neither cited nor relied
`
`upon in the petitions, but the brief relies on it to assert that RFC 1945 “defin[es]
`
`HTTP/1.0 used in Kiuchi” and that it “explains the ‘host’ is the domain name
`
`component of an HTTP URL.” Consol. Br. at 6-7 (citing Ex. 1014 at 15).
`
`New Position #4: The brief alleges “the client-side proxy and C-HTTP
`
`name server each (and collectively) ‘determin[e]’ whether access to a secure
`
`website was requested.” Consol. Br. at 4. But the petitions did not rely on the
`
`“collective[]” actions of the client-side proxy and C-HTTP name server for the
`
`claimed “determining.” Paper No. 5 at 28; Paper No. 1 in IPR2016-00062 at 29.
`
`2
`
`
`
`Case IPR2015-01046
`
`New Position #5: In addressing claim 10, the brief alleges “Patent Owner
`
`nowhere explains how returning the IP address to the client-side proxy (another
`
`‘client computer’) does not meets [sic] this claim element.” Consol. Br. at 18
`
`(emphasis original). But the petitions relied only on Kiuchi’s user agent, not the
`
`client-side proxy, for the claimed “client computer.” See Paper No. 5 at 34; Paper
`
`No. 1 in IPR2016-00062 at 35.
`
`III. Petitioner Apple Inc.’s Separate Reply Filing
`In its separate reply brief, Petitioner Apple asserts that, “[i]f the Board
`
`determines that Mangrove should [update its disclosure of RPIs], the Board should
`
`exercise its discretion and maintain the current schedule.” Apple Br. at 3-4. Apple
`
`then presents numerous accusations against Patent Owner. Id. at 3-5. This section
`
`of the separate reply brief is improper and goes beyond responding to Patent
`
`Owner’s Response. Patent Owner’s Response did not suggest changes to the
`
`schedule. See Paper No. 44.
`
`IV. Conclusion
`Given the reply briefs include improper sections as identified above, the
`
`briefs and supporting evidence should be stricken from the record.
`
`Dated: May 17, 2016
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`Counsel for VirnetX, Inc.
`
`3
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2015-01046
`
`
`I hereby certify that on this 17th day of May 2016, a copy of the foregoing
`
`Patent Owner’s Identification of Improper Arguments In Petitioners’ Consolidated
`
`Reply Brief and Petitioner Apple Inc.’s Separate Reply Filing was served by
`
`electronic mail upon the following:
`
`Abraham Kasdan (akasdan@wiggin.com)
`Wiggin and Dana LLP
`450 Lexington Avenue
`New York, NY 10017
`IP@wiggin.com
`
`James T. Bailey (jtb@jtbaileylaw.com)
`504 W. 136th St. #1B
`New York, NY 10031
`
`Jeffrey P. Kushan
`Scott Border
`Thomas A. Broughan III
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`iprnotices@sidley.com
`
`
`Respectfully submitted,
`
` /Joseph E. Palys/
`Joseph E. Palys
`Counsel for VirnetX Inc.
`
`
`
`Dated: May 17, 2016
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
