`571-272-7822
`
`
`
`
`Paper 42
`Date: February 26, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD., APPLE INC.,
`and BLACK SWAMP IP, LLC,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2015-010471
`Patent 7,490,151 B2
`____________
`
`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. and Black Swamp IP, LLC, which filed petitions in IPR2016-
`00063 and IPR2016-00167, respectively, have been joined as Petitioners in
`the instant proceeding.
`
`
`
`
`
`
`
`IPR2015-01047
`Patent 7,490,151 B2
`
`I.
`
`BACKGROUND
`VirnetX Inc. (“Patent Owner”), in its Request for Rehearing, Paper 38
`(“Req. Reh’g” or “Request”), seeks reversal of the Board’s Decision
`granting institution in IPR2016-00167 and joining IPR2016-00167 with
`IPR2015-01047. See Req. Reh’g 1. The Board denies the requested relief.
`
`II. DISCUSSION
`In the Decision dated February 4, 2016, IPR2016-00167, Paper 12
`(“Decision”), we granted institution of IPR2016-00167 (filed by Black
`Swamp IP, LLC) and joined IPR2016-00167 with the instant matter (i.e.,
`IPR2015-01047). Decision 7.
`Patent Owner argues that institution of IPR2016-00167 is improper
`because “the ’167 IPR is entirely devoid of any supporting expert testimony”
`but expert testimony was supposedly submitted in IPR2015-01047. Req.
`Reh’g 3–4. As previously explained, however, the record reflects that
`Petitioner has demonstrated a reasonable likelihood of prevailing and Patent
`Owner fails to demonstrate sufficiently that the absence of expert testimony
`alone indicates the failure to demonstrate a reasonable likelihood of
`prevailing in proving unpatentability of a challenged claim. See, e.g.,
`Decision 4.
`Patent Owner also argues that institution of trial in IPR2016-00167 is
`improper because the technology of the ’151 patent is “complex,”
`technology that “is complex” requires expert testimony, and Petitioner does
`not provide expert testimony. Req. Reh’g 5–6. Patent Owner does not
`demonstrate sufficiently, however, the degree of “complexity” of technology
`in order to properly classify the technology as “complex” as opposed to
`
`2
`
`
`
`
`
`
`IPR2015-01047
`Patent 7,490,151 B2
`
`
`“simple,” the degree of the alleged “complexity” of the ’151 patent even
`assuming that the ’151 patent is categorized as “complex” at all, the degree
`of the alleged necessary level of “complexity” to warrant a requirement for
`expert testimony even if such a requirement exists, and the relative levels of
`the “complexity” of the ‘151 patent to the alleged required level of
`“complexity” to require (supposedly) expert testimony. Without such a
`showing, the alleged “complexity” of the ’151 patent as well as the alleged
`necessary level of “complexity” for any requirement of expert testimony
`(and, hence, the need for expert testimony itself) are merely speculative.
`More importantly, such speculation is insufficient to defeat Petitioner’s
`demonstration of a reasonable likelihood of prevailing.
` Patent Owner requests rehearing by an expanded panel that includes
`the Chief Judge. Id. at 8–9. 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.
`
`III. CONCLUSION
`Based on the foregoing discussion, 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
`
`3
`
`
`
`
`IPR2015-01047
`Patent 7,490,151 B2
`
`
`
`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
`
`
`IPR2015-01047
`Patent 7,490,151 B2
`
`
`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
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
