`By:
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`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
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`
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`Paper No. ____
`Filed: May 17, 2016
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`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
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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
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`v.
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`VIRNETX INC.,
`Patent Owner
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`Case IPR2015-010461
`Patent 6,502,135
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`PATENT OWNER’S IDENTIFICATION OF IMPROPER ARGUMENTS IN
`PETITIONERS’ CONSOLIDATED REPLY BRIEF AND PETITIONER
`APPLE INC.’S SEPARATE REPLY FILING
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`1 Apple Inc., who filed a petition in IPR2016-00062, has been joined as a Petitioner
`in the instant proceeding.
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`Case IPR2015-01046
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`I.
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`Introduction
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`Pursuant to the Patent Trial and Appeal Board’s authorization on May 13,
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`2016, Patent Owner identifies the sections of Petitioners’ Consolidated Reply Brief
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`(Paper No. 50, “Consol. Br.”) and Petitioner Apple Inc.’s Separate Reply Filing
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`(Paper No. 53, “Apple Br.”) believed to be improper. Specifically, as identified
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`below, the consolidated reply brief presents new claim mappings, and Apple’s
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`separate reply presents an argument that goes beyond responding to Patent
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`Owner’s Response. As such, the briefs and supporting evidence are improper and
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`should be stricken.
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`II.
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`Petitioners’ Consolidated Reply Brief
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`The Petitioners’ consolidated reply brief presents a number of improper new
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`claim mappings:2
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`New Position #1: The brief proposes three mappings in alleging that Kiuchi
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`discloses the claimed “Domain Name Service (DNS) request” generated in claim
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`2 Patent Owner notes that the brief presents other arguments that build on one or
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`more of the identified new positions. But given the Board’s limited authorization
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`in its email of May 13, 2016, and consistent with the Board’s practice, Patent
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`Owner has not “attempt[ed] to sort the proper from improper portions of the
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`reply.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14,
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`2012).
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`1
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`Case IPR2015-01046
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`1, including “(a) ‘C-HTTP name service request’ sent to the name server,” “(b) ‘a
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`request for connection to the server-side proxy,’” and “(c) ‘C-HTTP requests’ to
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`the server-side proxy.” Consol. Br. at 10. At a minimum, mappings (b) and (c) are
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`new. See, e.g., Paper No. 5 at 27; Paper No. 1 in IPR2016-00062 at 28.
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`New Position #2: The brief alleges “the hostname in a URL [in Kiuchi]
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`corresponds to an institution’s server-side proxy,” relying on Kiuchi’s appendices.
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`Consol. Br. at 7 (emphasis added); see also id. at 4, 5, 7, 10, 16. But the petitions
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`did not rely on Kiuchi’s appendices, and instead asserted “the hostname
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`corresponds to an origin server” that is only “associated with a server-side proxy.”
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`See Paper No. 5 at 22 (emphasis added); Paper No. 1 in IPR2016-00062 at 23.
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`New Position #3: RFC 1945 (Exhibit 1014) was neither cited nor relied
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`upon in the petitions, but the brief relies on it to assert that RFC 1945 “defin[es]
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`HTTP/1.0 used in Kiuchi” and that it “explains the ‘host’ is the domain name
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`component of an HTTP URL.” Consol. Br. at 6-7 (citing Ex. 1014 at 15).
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`New Position #4: The brief alleges “the client-side proxy and C-HTTP
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`name server each (and collectively) ‘determin[e]’ whether access to a secure
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`website was requested.” Consol. Br. at 4. But the petitions did not rely on the
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`“collective[]” actions of the client-side proxy and C-HTTP name server for the
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`claimed “determining.” Paper No. 5 at 28; Paper No. 1 in IPR2016-00062 at 29.
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`2
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`Case IPR2015-01046
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`New Position #5: In addressing claim 10, the brief alleges “Patent Owner
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`nowhere explains how returning the IP address to the client-side proxy (another
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`‘client computer’) does not meets [sic] this claim element.” Consol. Br. at 18
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`(emphasis original). But the petitions relied only on Kiuchi’s user agent, not the
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`client-side proxy, for the claimed “client computer.” See Paper No. 5 at 34; Paper
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`No. 1 in IPR2016-00062 at 35.
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`III. Petitioner Apple Inc.’s Separate Reply Filing
`In its separate reply brief, Petitioner Apple asserts that, “[i]f the Board
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`determines that Mangrove should [update its disclosure of RPIs], the Board should
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`exercise its discretion and maintain the current schedule.” Apple Br. at 3-4. Apple
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`then presents numerous accusations against Patent Owner. Id. at 3-5. This section
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`of the separate reply brief is improper and goes beyond responding to Patent
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`Owner’s Response. Patent Owner’s Response did not suggest changes to the
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`schedule. See Paper No. 44.
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`IV. Conclusion
`Given the reply briefs include improper sections as identified above, the
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`briefs and supporting evidence should be stricken from the record.
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`Dated: May 17, 2016
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`Respectfully submitted,
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`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`Counsel for VirnetX, Inc.
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`3
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`CERTIFICATE OF SERVICE
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`Case IPR2015-01046
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`I hereby certify that on this 17th day of May 2016, a copy of the foregoing
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`Patent Owner’s Identification of Improper Arguments In Petitioners’ Consolidated
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`Reply Brief and Petitioner Apple Inc.’s Separate Reply Filing was served by
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`electronic mail upon the following:
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`Abraham Kasdan (akasdan@wiggin.com)
`Wiggin and Dana LLP
`450 Lexington Avenue
`New York, NY 10017
`IP@wiggin.com
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`James T. Bailey (jtb@jtbaileylaw.com)
`504 W. 136th St. #1B
`New York, NY 10031
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`Jeffrey P. Kushan
`Scott Border
`Thomas A. Broughan III
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`iprnotices@sidley.com
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`Respectfully submitted,
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` /Joseph E. Palys/
`Joseph E. Palys
`Counsel for VirnetX Inc.
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`Dated: May 17, 2016