No. 2016-____
`
`
`
`IN THE
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`_______________
`
`IN RE VIRNETX INC.,
`Petitioner.
`_______________
`On Petition for a Writ of Mandamus
`to the United States Patent and Trademark Office,
`Patent Trial and Appeal Board in
`Nos. IPR2015-01046 & IPR2015-01047.
`_______________
`
`
`
`PETITION FOR A WRIT OF MANDAMUS
`_______________
`
`
`
` Naveen Modi
`Joseph E. Palys
`Igor V. Timofeyev
`PAUL HASTINGS LLP
`875 15th St., N.W.
`Washington, D.C. 20005
`(202) 551-1700
`
`Counsel for Petitioner VirnetX Inc.
`
`
`
`March 4, 2016
`
`
`

`
`CERTIFICATE OF INTEREST
`
`Pursuant to Federal Circuit Rule 47.4, counsel of record for Petitioner VirnetX Inc.
`certify as follows:
`
`1. The full name of every party or amicus represented by us is:
`
`VirnetX Inc.
`
`2. The name of the real party in interest represented by us is:
`
`VirnetX Inc.
`
`3. All parent corporations and any publicly held companies that
`own 10 percent or more of the stock of the party or amicus curiae
`represented by us are:
`
`VirnetX Inc. is a wholly owned subsidiary of VirnetX Holding
`Corporation (“VHC”). VHC’s stock is publicly traded on the New
`York Stock Exchange.
`
`4. The names of all law firms and the partners or associates that appeared
`for the parties represented by us in the trial court, or are expected to
`appear in this Court, are:
`
`Paul Hastings LLP:
`Naveen Modi, Joseph E. Palys, Igor V. Timofeyev, Srikala P.
`Atluri*, and Daniel Zeilberger
`
`Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP:
`Jason Stach
`
`*no longer with the Firm
`
`Dated: March 4, 2016
`
`/s/Naveen Modi
`Naveen Modi
`Counsel for Petitioner VirnetX Inc.
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................. 1
`
`II. STATEMENT OF RELIEF SOUGHT AND ISSUES PRESENTED .............. 3
`
`III. FACTUAL AND PROCEDURAL BACKGROUND ...................................... 3
`
`A. Apple’s Initial Attempts To Avoid Section 315(b)’s Time Bar ................ 4
`
`B. The Mangrove Inter Partes Review Petitions ........................................... 7
`
`C. Apple’s New Petitions and Requests for Joinder .................................... 10
`
`IV. LEGAL STANDARD ..................................................................................... 12
`
`V. REASONS WHY THE WRIT SHOULD ISSUE ........................................... 12
`
`A. VirnetX Has a Clear and Indisputable Right to Relief ............................ 12
`
` The Inter Partes Review Statute Prohibits Joinder of 1.
`
`
`Apple’s Time-Barred Petitions ....................................................... 13
`
` The Board’s Patently Erroneous Interpretation Ignores the 2.
`
`
`Statutory Language, Legislative Intent, and the Canons of
`Statutory Construction .................................................................... 20
`
` The Board’s Interpretation Contravenes the Statutory 3.
`
`
`Purpose ............................................................................................ 23
`
`B. Mandamus Is an Appropriate Remedy in this Case ................................ 26
`
`VI. CONCLUSION ................................................................................................ 30
`
`
`
`
`
`i
`
`

`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Allen,
`701 F.3d 734 (5th Cir. 2012) .............................................................................. 27
`
`Allen v. Siebert,
`552 U.S. 3 (2007) ................................................................................................ 22
`
`Artuz v. Bennett,
`531 U.S. 4 (2000) ................................................................................................ 22
`
`Austin v. Dep’t of Commerce,
`742 F.2d 1417 (Fed. Cir. 1984) .......................................................................... 22
`
`Davis v. Michigan Dep’t of Treasury,
`489 U.S. 803 (1989) ............................................................................................ 23
`
`Drug Plastics & Glass Co. v. NLRB,
`44 F.3d 1017 (D.C. Cir. 1995) ............................................................................ 23
`
`In re EMC Corp.,
`677 F.3d 1351 (Fed. Cir. 2012) ........................................................ 12, 13, 28, 30
`
`Escondido Mut. Water Co. v. La Jolla, Rincon, San Pasqual,
`Pauma, & Pala Bands of Mission Indians,
`466 U.S. 765 (1984) ............................................................................................ 20
`
`Kerr v. U.S. Dist. Ct.,
`426 U.S. 394 (1976) ................................................................................ 12, 13, 26
`
`Loughrin v. United States,
`134 S. Ct. 2384 (2014) ........................................................................................ 15
`
`Mallard v. U.S. Dist. Ct.,
`490 U.S. 296 (1989) ............................................................................................ 12
`
`In re Nintendo Co., Ltd.,
`544 F. App’x 934 (Fed. Cir. 2013) ................................................... 12, 13, 18, 27
`
`ii
`
`
`

`
`NLRB v. Allis-Chalmers Mfg. Co.,
`388 U.S. 175 (1967) ............................................................................................ 20
`
`Oshkosh Truck Corp. v. United States,
`123 F.3d 1477 (Fed. Cir. 1997) .......................................................................... 17
`
`Pace v. DiGuglielmo,
`544 U.S. 408 ....................................................................................................... 22
`
`In re Procter & Gamble Co.,
`749 F.3d 1376 (Fed. Cir. 2014) .......................................................................... 28
`
`Ex Parte Rep. of Peru,
`318 U.S. 578 (1943) ............................................................................................ 12
`
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008) .......................................................................... 30
`
`In re United States,
`877 F.2d 1568 (Fed. Cir. 1989) .......................................................................... 27
`
`United States v. Mendoza,
`581 F.2d 89 (5th Cir. 1978) (en banc) ................................................................ 23
`
`United States v. Spilotro,
`884 F.2d 1003 (7th Cir. 1989) ............................................................................ 27
`
`United States v. U.S. Dist. Court,
`509 F.2d 1352 (9th Cir. 1975) ............................................................................ 27
`
`Util. Air Regulatory Grp. v. EPA,
`134 S. Ct. 2427 (2014) ........................................................................................ 16
`
`VirnetX, Inc. v. Cisco Sys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014) ...................................................................... 4, 25
`
`In re Volkswagen of Am., Inc.,
`545 F.3d 304 (5th Cir. 2008) .............................................................................. 30
`
`Adminstrative Decisions
`Target Corp. v. Destination Maternity Corp.,
`IPR2014-00508, Paper No. 28 (P.T.A.B. Feb. 12, 2015) ............................. 16, 26
`
`iii
`
`
`

`
`Zhongshan Ocean Motor Co. v. Nidex Motor Corp.,
`IPR2015-00762, 2015 WL 5895802 (P.T.A.B. Oct. 5, 2015) ...................... 25, 26
`
`Statutes
`
`8 U.S.C. § 1154 ........................................................................................................ 23
`
`28 U.S.C. § 2244(d)(2)............................................................................................. 21
`
`35 U.S.C. § 311 .................................................................................................. 23, 24
`
`35 U.S.C. § 311(c) ................................................................................................... 16
`
`35 U.S.C. § 312(a)(1)-(3) ......................................................................................... 18
`
`35 U.S.C. § 312(a)(4) ............................................................................................... 18
`
`35 U.S.C. § 314(b) ................................................................................................... 16
`
`35 U.S.C. § 314(d) ............................................................................................. 26, 27
`
`35 U.S.C. § 315(b) ............................................................................................passim
`
`35 U.S.C. § 315(c) ............................................................................................passim
`
`35 U.S.C. § 316(d)(2)............................................................................................... 18
`
`35 U.S.C. § 316(d)(3)............................................................................................... 18
`
`35 U.S.C. § 316(d)(a) ............................................................................................... 18
`
`Rules and Regulations
`
`8 C.F.R. § 245.10 ..................................................................................................... 23
`
`37 C.F.R. § 42.122(b) .............................................................................................. 17
`
`Other Authorities
`
`154 Cong. Rec. S9988 (daily ed. Sept. 27, 2008) .................................................... 21
`
`157 Cong. Rec. S1041-42 (daily ed. Mar. 1, 2011) ................................................. 24
`
`157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) ...................................................... 21
`
`iv
`
`
`

`
`H.R. Rep. No. 112-98, reprinted in 2011 U.S.C.C.A.N. 67 (2011) ........................ 24
`
`Joe Matal, A Guide to the Legislative History of the America Invents
`Act: Part II of II, 21 Fed. Cir. B. J. 539 (2012) .................................................. 21
`
`
`
`v
`
`
`

`
`I.
`
`INTRODUCTION
`
`The time-bar provision of the America Invents Act, 35 U.S.C. § 315(b),
`
`prohibits the Patent Trial and Appeal Board (“the Board”) from instituting an inter
`
`partes review proceeding “if the petition requesting the proceeding is filed more
`
`than 1 year” after the petitioner (or a privy) was “served with a complaint alleging
`
`infringement of the patent.” This statutory provision also provides an exemption—
`
`but only for “a request for joinder,” which is filed when a petitioner seeks to join
`
`another, already instituted inter partes review proceeding. The joinder provision,
`
`in turn, mandates that the party seeking joinder must have “properly file[d] a
`
`petition” warranting the institution of inter partes review. 35 U.S.C. § 315(c).
`
`In the two inter partes review proceedings below, the Board granted Apple
`
`Inc.’s (“Apple’s”) requests for joinder based on petitions that were unquestionably
`
`time-barred. Apple filed its petitions over five years after VirnetX Inc.
`
`(“VirnetX”) first served Apple with a complaint alleging infringement of the
`
`patents at issue—U.S. Patent No. 6,502,135 (“the ’135 patent”) and U.S. Patent
`
`No. 7,490,151 (“the ’151 patent”). Apple previously filed (directly or through a
`
`proxy) seven inter partes review petitions against the same patents, in addition to
`
`having challenged
`
`their validity
`
`in
`
`two reexamination proceedings and
`
`(unsuccessfully) in district court litigation and on appeal before this Court. After
`
`the Board dismissed the first three petitions (filed in Apple’s own name) as time-
`
`1
`
`
`

`
`barred, Apple had its proxy—RPX Corporation (“RPX”)—file three new petitions
`
`challenging the same VirnetX patents. The Board dismissed these petitions as
`
`time-barred when VirnetX uncovered evidence that Apple was a real party in
`
`interest. Apple then tried another tack, and sought to join an inter partes review
`
`petition filed by Microsoft. Because the proceeding initiated by Microsoft was
`
`terminated based on a settlement, the Board dismissed Apple’s attempted joinder.
`
`In a latest effort to evade section 315(b)’s timing restriction, Apple sought to
`
`join two new inter partes review proceedings brought by Mangrove Partners
`
`Master Fund, Ltd. (“Mangrove”). Despite Apple’s time-barred status, the Board
`
`permitted the joinder. When VirnetX identified evidence of a connection between
`
`Mangrove and Apple’s previous proxy, RPX, the Board refused even to entertain a
`
`request for discovery into the full extent of that connection. The Board also
`
`refused to place any real limitations on Apple’s involvement in the Mangrove
`
`proceedings.
`
`The applicable statutory scheme, 35 U.S.C. § 315(b)-(c), unambiguously
`
`prohibits the joinder of Apple’s time-barred petitions to existing inter partes
`
`review proceedings. In authorizing this joinder, the Board effectively re-wrote the
`
`statute by extending the narrow statutory timing exemption, applicable only to
`
`joinder requests, to petitions as well. The Board’s statutory interpretation is
`
`patently erroneous, because it contradicts the plain statutory language, legislative
`
`2
`
`
`

`
`history, congressional purpose, and the Supreme Court’s precedent construing the
`
`key statutory term. The Board’s interpretation also unravels the careful balance
`
`struck by Congress between encouraging the use of inter partes review and
`
`“preventing the serial harassment of patent holders.” The injury is magnified here,
`
`where Apple (the time-barred party) has effectively taken over the proceedings.
`
`This Court’s immediate intervention is needed in order to prevent irremediable
`
`harm to VirnetX. A mandamus from this Court is both necessary and appropriate.
`
`II.
`
`STATEMENT OF RELIEF SOUGHT AND ISSUES PRESENTED
`
`VirnetX respectfully requests that this Court grant this petition for a writ of
`
`mandamus and direct the Board to revoke its decisions joining Apple to the
`
`Mangrove inter partes review proceedings based on Apple’s time-barred petitions.
`
`The issues presented are:
`
`and Appeal Board
`the Patent Trial
`Whether
`impermissibly exceeded its statutory authority by joining
`a time-barred entity to an existing inter partes review
`proceeding, in disregard of the unambiguous timing
`requirement of 35 U.S.C. § 315(b) and the corresponding
`requirement of 35 U.S.C. § 315(c) that a joinder request
`must be predicated on a timely filed petition?
`III. FACTUAL AND PROCEDURAL BACKGROUND
`At issue in this petition are the Board’s decisions to join two time-barred
`
`inter partes review petitions filed by Apple, IPR2016-00062 and IPR2016-00063,
`
`to the existing inter partes review proceedings initiated by Mangrove, IPR2015-
`
`3
`
`
`

`
`01046 and IPR2015-01047.1 The petitions in IPR2015-01046 and IPR2016-00062
`
`challenge the validity of claims of the ’135 patent, and the petitions in IPR2015-
`
`01047 and IPR2016-00063 challenge the validity of claims of the ’151 patent.
`
`A. Apple’s Initial Attempts To Avoid Section 315(b)’s Time Bar
`On August 11, 2010, VirnetX served Apple with a complaint alleging
`
`infringement of the ’135 and the ’151 patents, among others. See Complaint,
`
`VirnetX Inc. v. Cisco Sys., Inc., No. 6:10-cv-00417, Docket No. 1 (E.D. Tex.
`
`Aug. 11, 2010). In response, Apple challenged both patents as invalid and
`
`unenforceable. See Defendant Apple’s Original Answer, Affirmative Defenses,
`
`and Counterclaims, VirnetX Inc. v. Cisco Sys., Inc., No. 6:10-cv-00417, Docket
`
`No. 55 (E.D. Tex. Apr. 16, 2012).2 The district court upheld the validity of the
`
`’135 and the ’151 patents,3 and this Court affirmed those rulings. See VirnetX, Inc.
`
`
`1 The Board’s decision in IPR2015-01046/IPR2016-00062 is attached as Exhibit 1,
`and the decision in IPR2015-01046/IRP2016-00063 is attached as Exhibit 2.
`2 Apple also requested inter partes reexamination of both patents, which are
`ongoing. See Request for Inter Partes Reexamination, Control No. 95/001,682
`(July 11, 2011) (the ’135 patent); Request for Inter Partes Reexamination, Control
`No. 95/001,697 (July 25, 2011) (the ’151 patent).
`3 After trial, in November 2012, VirnetX served Apple with a related complaint
`involving the ’135 and the ’151 patents, among others. See Complaint, VirnetX
`Inc. v. Apple Inc., No. 6:12-cv-00855, Docket No. 1 (E.D. Tex. Nov. 6, 2012). In
`response, Apple again challenged both patents as invalid. See Defendant Apple’s
`Answer, Affirmative Defenses, and Counterclaims, VirnetX Inc. v. Apple Inc., No.
`6:12-cv-00855, Docket No. 77 (E.D. Tex. Jan. 23, 2013).
`
`4
`
`
`

`
`v. Cisco Sys., Inc., 767 F.3d 1308, 1313, 1323-24 (Fed. Cir. 2014).
`
`On June 12, 2013—almost three years after VirnetX originally asserted the
`
`patents at issue against Apple—Apple filed its first two inter partes review
`
`petitions challenging the ’135 patent, in IPR2013-00348 and IPR2013-00349.
`
`Around the same time, on June 17, 2013, Apple filed an inter partes review
`
`petition against the ’151 patent, in IPR2013-00354. On December 13, 2013, the
`
`Board denied all three petitions as time-barred under 35 U.S.C. § 315(b), because
`
`Apple had been served with a complaint alleging infringement in August 2010,
`
`more than a year before it filed its petitions. See Ex. 3 at 5; Ex. 4 at 5; Ex. 5 at 5.
`
`Apple then tried again. On November 20, 2013, shortly before Apple’s three
`
`petitions were denied, an entity named RPX Corporation filed two petitions
`
`challenging the ’135 patent, in IPR2014-00171 and IPR2014-00172, and another
`
`petition challenging the ’151 patent, in IPR2014-00173. RPX does not practice
`
`VirnetX’s patents, nor is it in the business of technological invention or
`
`manufacturing. RPX’s advertised business model is to “serve as an extension of a
`
`client’s in-house legal team” in an effort to “efficiently remove threatening patents
`
`from the market”; RPX represents clients who are accused of patent infringement,
`
`acting as their proxy to “selectively clear” liability for infringement as part of
`
`RPX’s “patent risk management solutions.” See Ex. 6; Ex. 7; Ex. 8 at 3-5, 26, 53.
`
`Apple tried to hide its involvement in the RPX proceedings, in an effort to produce
`
`5
`
`
`

`
`the impression that Apple and RPX were unconnected entities without a privity or
`
`real party-in-interest relationship. These efforts included failing to disclose that
`
`Apple and RPX shared counsel and representing that Apple and RPX had no pre-
`
`filing communications. VirnetX uncovered evidence to the contrary, including
`
`metadata demonstrating that Apple’s counsel had involvement in the preparation or
`
`review of RPX’s filings in those proceedings. See Ex. 9 at 5-7; Ex. 10 at 5-7;
`
`Ex. 11 at 6-8. Based on this evidence, the Board concluded that “RPX [was]
`
`acting as a proxy” for the time-barred Apple, and that Apple was a real party-in-
`
`interest for all three of RPX’s petitions. The Board then denied institution under
`
`section 315(b) because Apple, as the real party-in-interest, was time-barred. See
`
`Ex. 12 at 3, 10; Ex. 13 at 3, 10; Ex. 14 at 3, 10.
`
`On April 10, 2014, Microsoft filed an inter partes review petition
`
`challenging the ’151 patent, in IPR2014-00610, and the Board instituted the
`
`proceeding.4 On October 30, 2014, Apple filed its own petition in IPR2015-00187,
`
`and sought to join the Microsoft proceeding. The Board, however, terminated that
`
`proceeding based on VirnetX and Microsoft’s joint motion, see Ex. 15, and
`
`thereafter denied institution of Apple’s petition, both due to the termination of the
`
`Microsoft proceeding and due to Apple’s time-barred status. Ex. 16 at 2-3.
`
`
`4 On March 31, 2014, Microsoft also filed a petition challenging the ’135 patent, in
`IPR2014-00558. The Board denied institution because Microsoft was time-barred.
`
`6
`
`
`

`
`The Mangrove Inter Partes Review Petitions
`B.
`Having failed in initiating inter partes review of VirnetX’s patents either
`
`directly, or through a proxy, or by tagging onto Microsoft’s petition, Apple has
`
`embarked on a new attempt to evade the time bar of section 315(b). This new
`
`effort relates to the inter partes review petitions filed by Mangrove.
`
`On April 14, 2015, Mangrove—a hedge fund entity—filed inter partes
`
`review petitions challenging the ’135 and the ’151 patents, in IPR2015-01046 and
`
`IPR2015-01047, respectively. VirnetX has never served Mangrove with a
`
`complaint alleging infringement of either patent, nor, to VirnetX’s knowledge,
`
`does Mangrove practice VirnetX’s patents. On October 7, 2015, the Board
`
`instituted the proceedings based on Mangrove’s petitions. See Ex. 17; Ex. 18.
`
`Both petitions named Mangrove as
`
`the only real party-in-interest.
`
`Mangrove’s filings with the Securities and Exchange Commission (“SEC”), and
`
`the filings of entities that control Mangrove, however, revealed Mangrove to be
`
`part of a complex web of entities linked to a hedge fund registered in the Cayman
`
`Islands named (similarly) “Mangrove Partners.” See Ex. 19; Ex. 20; Ex. 21 at 3-4;
`
`Ex. 22 at 1-2; Ex. 23 at 1. At least six different entities or persons appeared to be
`
`connected to, or possibly having an interest in, Mangrove (and its petitions), in
`
`addition to Mangrove Partners’ unnamed investors. Id.
`
`7
`
`
`

`
`Evidence also demonstrated that Mangrove Partners pursued short positions
`
`in the publicly traded stock of VirnetX’s parent company, VirnetX Holding
`
`Corporation (“VHC”). Mangrove Partners held VHC stock two months before the
`
`petitions were filed, yet had divested of that stock a month after the filing. Ex. 24
`
`at 2; Ex. 25 at 3; Ex. 26 at 2. This timing suggested Mangrove Partners had
`
`interest in the outcome of Mangrove’s petitions. Mangrove Partners also appeared
`
`to have complete discretionary control over Mangrove; Mangrove Partners and its
`
`officers have signed every single public document associated with Mangrove that
`
`is available in the SEC’s EDGAR database. See, e.g., Ex. 27 at 12; Ex. 28 at 12;
`
`Ex. 29 at 11; Ex. 30 at 11; Ex. 31 at 11; Ex.32 at 11; Ex. 33 at 5.5
`
`After uncovering this evidence, which suggested that Mangrove had failed to
`
`disclose all the real parties in interest as required by the statute, VirnetX moved for
`
`additional discovery regarding the structure of the Mangrove entities. The Board
`
`initially denied the request. After VirnetX requested rehearing, Ex. 20; Ex. 36, the
`
`Board granted the request in small part, allowing discovery only as to
`
`
`5 The Chief Operating Officer of Mangrove Partners (and of another related entity
`called Mangrove Capital), Ward Dietrich, has been involved in the Mangrove inter
`partes review proceedings, despite having no identified connection to the
`Mangrove entity that filed the petitions and without either Mangrove Partners or
`Mangrove Capital being disclosed as real parties-in-interest. Indeed, Ward
`Dietrich held himself out as an “authorized person” to sign the Power of Attorney
`on behalf of Mangrove in the proceedings below. See Ex. 34 at 2; Ex. 35 at 2.
`
`8
`
`
`

`
`“communications and/or agreements pertaining to Ward Dietrich’s involvement in
`
`the preparation and filing” of Mangrove’s petitions Ex. 37 at 3; Ex. 38 at 3. This
`
`discovery is ongoing. The Board denied the request as to any other discovery.
`
`VirnetX also requested to file a motion for additional discovery related to
`
`Mangrove’s ties to RPX—the entity that had filed the prior inter partes review
`
`petitions where Apple was an undisclosed real party-in-interest. See supra at 5-6.
`
`VirnetX uncovered evidence that linked Mangrove specifically to RPX: (1) with
`
`respect to any proceedings before the Board, Mangrove’s backup counsel has
`
`worked only on these two inter partes review proceedings and a set of inter partes
`
`reviews explicitly filed by RPX; (2) during the pendency of the Mangrove
`
`proceedings, Mangrove has steadily gained increasing equity, into the millions, in
`
`RPX; and (3) RPX’s own public documents stated that it was seeking partnerships
`
`with financial companies like Mangrove, a hedge fund. See Ex. 39 at 7-9, 12-14.
`
`VirnetX also noted “the relationship between RPX and Apple” that was established
`
`in the RPX proceedings, and “[t]he pattern of filing of companies that are coming
`
`out of nowhere, challenging these patents [belonging to VirnetX], yet they have no
`
`relationship other than relationships with other companies that seem to have
`
`statutory bar issues.” Ex. 39 at 13. The Board, however, did not permit VirnetX
`
`even to file a motion for additional discovery into these issues, where VirnetX
`
`could have fully explained its basis for seeking this discovery. See Ex. 40.
`
`9
`
`
`

`
`C. Apple’s New Petitions and Requests for Joinder
`On October 26, 2015, shortly after the Board had instituted the Mangrove
`
`proceedings—and over five years after having been served with VirnetX’s
`
`infringement complaint—Apple filed new inter partes review petitions challenging
`
`the ’135 and ’151 patents in IPR2016-00062 and IPR2016-00063, respectively.
`
`Apple also sought to be joined in the two Mangrove proceedings. Apple claimed
`
`that the grounds and declarations submitted with its petitions were the same as
`
`those in the Mangrove petitions. Ex. 41 at 4; Ex. 42 at 4. Both petitions, however,
`
`also raised new issues and introduced new evidence. Ex. 43 at 39-42; Ex. 44 at 54-
`
`59. As an example, Apple introduced new arguments as to the alleged public
`
`availability of references at issue, including arguments based on a declaration from
`
`a new declarant. Ex. 43 at 39-42; Ex. 44 at 54-59.
`
`VirnetX challenged the joinder requests, arguing that because of Apple’s
`
`time-barred status under section 315(b), the petitions should be dismissed,
`
`similarly to the five prior petitions filed by Apple or by its proxy, RPX. See Ex. 45
`
`at 1-3; Ex. 46 at 1-3. The Board, relying on 35 U.S.C. § 315(b)’s provision stating
`
`that “[t]he time limit … shall not apply to a request for joinder,” instead concluded
`
`that section 315(b)’s time bar also does not apply to petitions accompanied by a
`
`joinder request. Ex. 47 at 4; Ex. 48 at 4. The Board instituted inter partes review
`
`based on Apple’s petitions, and joined them with the Mangrove proceedings.
`
`10
`
`
`

`
`Subsequent to the joinder, Apple assumed an active, and even leading, role
`
`in the Mangrove proceedings. For instance, Apple’s counsel prepared and
`
`defended the deposition of Mangrove’s expert and communicated with VirnetX’s
`
`counsel on behalf of all petitioners. Ex. 49; Ex. 50.6
`
`On February 8, 2016, VirnetX sought rehearing of the Board’s decision to
`
`institute proceedings based on Apple’s petitions and to join them with the
`
`Mangrove proceedings. Ex. 51; Ex. 52. On February 25, 2016, after the Board
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`took no action on VirnetX’s rehearing requests, and with a deadline for VirnetX to
`
`file
`
`its Patent Owner’s Responses to Mangrove’s and Apple’s petitions
`
`approaching, VirnetX sought the Board’s permission to submit a request for a stay
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`pending the Board’s decision on the rehearing requests. Ex. 53. VirnetX also
`
`indicated that, if the Board denied rehearing, it would seek a writ of mandamus
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`from this Court, and requested a stay pending the Court’s consideration of the
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`mandamus petition. Id.
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`The next day, on February 26, 2016, the Board issued its decisions denying
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`rehearing. Ex. 54; Ex. 55. On March 1, 2016, the Board denied, without any
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`
`6 On February 4, 2016, the Board also instituted inter partes review of the ’151
`patent based on a petition filed by Black Swamp IP, LLC (“Black Swamp”) in
`IPR2016-00167, and joined that petition with IPR2015-01047. Black Swamp was
`formed as a corporate entity six days before Mangrove filed its petitions. See
`Ex. 39 at 20. VirnetX has never asserted any of its patents against Black Swamp.
`
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`reasoned consideration, VirnetX’s request for a stay pending this Court’s
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`consideration of the mandamus petition. Ex. 56. The Board opined that VirnetX
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`“has failed to identify a sufficient rationale” for a stay, even though the Board
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`prohibits (under sanctions) any argument when requesting to file a stay motion.
`
`IV. LEGAL STANDARD
`Mandamus is proper when the movant shows (1) a clear and indisputable
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`right to relief (2) that cannot be obtained through other adequate means. Kerr v.
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`U.S. Dist. Ct., 426 U.S. 394, 403 (1976); see also In re EMC Corp., 677 F.3d 1351,
`
`1354 (Fed. Cir. 2012). The traditional use of mandamus has been to “confin[e] the
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`inferior [tribunal] to a lawful exercise of its prescribed jurisdiction.” Ex Parte Rep.
`
`of Peru, 318 U.S. 578, 583 (1943). Courts “have not limited the use of mandamus
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`by an unduly narrow and technical understanding of what constitutes a matter of
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`‘jurisdiction.’” Mallard v. U.S. Dist. Ct., 490 U.S. 296, 309 (1989) (internal
`
`quotation marks and citation omitted). Rather, mandamus is “appropriate in
`
`certain cases to further supervisory or instructional goals where issues are unsettled
`
`and important.” In re Nintendo Co., Ltd., 544 F. App’x 934, 936 (Fed. Cir. 2013)
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`(citing In re BP Lubricants USA Inc., 637 F.3d 1307, 1313 (Fed. Cir. 2011)).
`
`V. REASONS WHY THE WRIT SHOULD ISSUE
`A. VirnetX Has a Clear and Indisputable Right to Relief
`The writ of mandamus is an appropriate remedy where the movant can
`
`demonstrate a “clear and indisputable” right to relief. Kerr, 426 U.S. at 403. This
`12
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`
`Court has granted mandamus, and set aside a lower tribunal’s improper joinder
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`ruling, where that tribunal has applied an incorrect legal standard. See In re EMC
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`Corp., 677 F.3d at 1355, 1360; see also In re Nintendo, 544 F. App’x at 939-43
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`(granting mandamus where the district court improperly permitted joinder of new
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`claims). Here, mandamus should issue because the applicable statutory scheme
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`unambiguously prohibits the joinder of Apple’s time-barred petitions to existing
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`inter partes review proceedings.
`
`1.
`
`
`The Inter Partes Review Statute Prohibits Joinder of
`Apple’s Time-Barred Petitions
`Congress created the inter partes review scheme in 2011, when it enacted
`
`the America Invents Act. Enacted as part of that act, 35 U.S.C. § 315(b) imposes a
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`mandatory time bar on the institution of inter partes review proceedings:
`
`An inter partes review may not be instituted if the
`petition requesting the proceeding is filed more than 1
`year after the date on which the petitioner, real party in
`interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent.
`
`(Emphasis added.)
`
`Section 315(b) provides an exception from this time bar, but only for “a
`
`request for joinder”:
`
`The time limitation set forth in the preceding sentence
`shall not apply to a request for joinder under subsection
`(c).
`
`Id.
`
`13
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`The joinder provision, section 315(c), in turn, grants the Board (as delegated
`
`by the Director of the Patent and Trademark Office) discretion to join a party to an
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`existing inter partes review, provided certain criteria are met:
`
`If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to
`that inter partes review any person who properly files a
`petition under section 311 that the Director, after
`receiving a preliminary response under section 313 or the
`expiration of the time for filing such a response,
`determines warrants the institution of an inter partes
`review under section 314.
`
`35 U.S.C. § 315(c) (emphasis added).
`
`Under this statutory scheme, if a party “properly files a petition” within the
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`one-year deadline specified in section 315(b), and then files “a request for joinder
`
`under subsection (c)” after the one-year deadline, section 315(b) would permit the
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`Board to grant the joinder request. 35 U.S.C. § 315(b)-(c) (emphasis added). The
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`requirement that the petition be “properly filed” is the predicate for the
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`consideration of both the petition and the joinder request, and it encompasses the
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`requirement that the petition would have been filed within the one-year period
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`authorized under section 315(b).
`
`The Board did not disagree that Apple’s petitions in IPR2016-00062 and
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`IPR2016-00063 were time-barred under section 315(b) because they were filed
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`long after the one-year period from the service of VirnetX’s complaint alleging
`
`infringement. See Ex. 47 at 4; Ex. 48 at 4. In fact, the Board has previously
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`14
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`denied institution of Apple’s petitions challenging claims of the same patents as
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`time-barred. See supra at 5-6. The Board, however, interpreted the last sentence
`
`of section 315(b), which states that “[t]he time limit … shall not ap