UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box I450
`Alexandria, Virginia 223 I 3- I450
`www.usplu.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/00l,68Zfi'q_S' Ool SW7/l I/201]
`
`6,502,l35
`
`077580-0l32
`
`I074
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
`LLP
`901 NEW YORK AVENUE, NW
`wAsnmcroN,oc2ooo1—4m
`
`PEIKARI. BEHZAD
`
`3992
`
`O3/I3/20l3
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`Page 1 0f10
`
`‘ VIRNETX EXHIBIT 2065
`
`Mangrove V. Vi1‘netX
`Trial IPR2015-01047
`
`VIRNETX EXHIBIT 2065
`Mangrove v. VirnetX
`Trial IPR2015-01047
`
`Page 1 of 10
`
`

`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box I450
`_
`Alexandria. Virginia ZZJI3-I450
`www.usplo.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/001,679???/CM 2.07/08/_20II
`
`6502135
`
`43614.92
`
`9786
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
`LLP
`_
`90] NEW YORK AVENUE, NW
`wAsnmcro~,oc2ooo:-44n
`
`PEIKARI, BEHZAD
`
`3992
`
`03/I3/2013
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`Page 2 of 10
`
`Page 2 of 10
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-I450
`www.uspto.gov
`
`Date:
`‘
`
`’
`
`MAILED
`
`MAR I 2 £,,m
`
`mm REEXAMINATION umr
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`SIDLEY AUSTIN LLP
`
`717 NORTH HARWOOD
`SUITE 3400
`
`DALLAS, TX 75201
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 9500l682V ?$/ea [Q79
`PATENT NO. : 6502135
`
`ART UNIT : 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above-identified reexamination proceeding. 37 CFR 1.903.
`'
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file.
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`'
`
`Page 3 of 10
`
`Page 3 of 10
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`

`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box I450
`Alexandria, VA 22313-1450
`www.usp!0.gov
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`
`HAYNES AND BOONE, LLP
`
`Date:
`
`11> SECTION
`2323 VICTORY AVENUE, SUITE 700
`DALLAS, TX 75219
`
`'
`
`_
`
`MAR 12 2013
`
`CENTRM
`
`REEXAMINATION UNU
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95oo16794'9Sl°‘°" ‘>83’
`PATENT NO. : 6502135
`
`ART UNIT : 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above—identified reexamination proceeding. 37 CFR 1.903.
`-
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication,
`the third party requester of the inter partes reexamination may once file.
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`Page 4 of 10
`
`Page 4 of 10
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`

`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRET & DUNNER LLP
`901 New York Avenue, N.W.
`
`Washington, D.C. 20001-4413
`
`V
`
`Sidley Austin LLP
`717 North Harwood
`
`Suite 3400
`
`Dallas, Texas 75201
`
`David McCombs
`Haynes and Boone, LLP
`2323 Victory Avenue
`‘ Suite 700
`
`Dallas, Texas 75219
`
`Inter Partes Reexamination Proceeding
`Control No.: 95/001,679
`
`Filed: July 8, 2011
`For: U.S. Patent No. 6,502,135
`
`Inter Partes Reexamination Proceeding
`Control No.: 95/001,682
`
`Filed: July 11, 2011
`For: US.‘ Patent No. 6,502,135
`
`Commissioner for Patents
`United States Patent and Trademark Office
`1>.o. Box 1450
`Alexandria, VA 22313-1450
`WWW.I.1S2tO.gOV
`
`(For Patent Owner)
`
`MA
`
`‘LED
`
`MAR 12 2013
`CENTRAL REEXAMINATION Um?
`
`(For ‘ 1682 Requester)
`
`(For ‘ 1679 Requester)
`
`:
`: DECISION
`:
`' DISMISSING
`
`: PETITION TO
`: ALIGN SCHEDULES
`
`'
`
`This is a decision on the ‘1682 third party requester’s “Petition Under 37 CFR § 1.182 To Align
`Schedules of Related Proceedings” (“petition under 1.l82”), filed on December 5, 2012, and on
`“Patent Owner’s Petition In Opposition To Third-Party Requester Apple Inc.’s Petition To Align
`Schedules” (“the opposition”), filed on December 13, 2012.
`
`Page 5 of 10
`
`Page 5 of 10
`
`

`
`' Reexamination Control Nos. 95/001,682 and 95/001,679
`
`-2-
`
`The petition under 37 CFR 1.182 and the opposition are before the Office of Patent Legal
`Administration.
`
`The petition under 37 CFR 1.182 is dismissed for the reasons set forth herein.
`
`Note that all citations to 35 U.S.C. Chapter 31 are to the statute in effect as of the filing date of
`the inter partes reexamination proceedings.
`
`BACKGROUND
`
`1. On August 11, 2010, VirnetX Inc. (“patent owner”) asserted U.S. Patent Nos. 6,502,135
`(the ‘135 patent”), 7,490,151 (“the ‘151 patent”), 6,839,759 (“the 759 patent”), 7,188,180
`(“the ‘180 patent”) and 7,418,504 (“the ‘504 patent”) in the Eastern District of Texas
`(Vz'rnetX Inc. v. Cisco Sys., Inc., et al., No. 6:10—cv-00417). Apple Inc. (“Apple”) is
`included as one of the named defendants. Patent owner additionally asserted U.S. Patent
`No. 7,921,211 (“the ‘211 patent”) in an Amended Complaint filed on April 5, 2011.
`
`The ‘1788 reexamination proceeding:
`
`2. On October 18, 2011, a request for inter partes reexamination of claims 1-60 of the ‘504
`patent was filed by a third party requester, which request was assigned Reexamination
`Control No. 95/001,788 (“the ‘1788 proceeding”). The request identified Apple as the
`real party in interest. On December 29, 2011, the Office issued an order granting the
`request for inter partes reexamination in the ‘ 1788 proceeding.
`
`3. On December 29, 2011, the Office issued an Office Action rejecting claims 1-_60 of the
`‘504 patent. On March 29, 2012, patent owner responded to the Office Action. On June
`25, 2012, Apple filed comments after the patent owner’s response. On September 26,
`2012, the Office issued an Action Closing Prosecution (ACP).
`
`The ‘ 1789 reexamination proceeding:
`
`4. On October 18, 2011, a request for inter partes reexamination of claims 1-60 of the ‘211
`patent was filed by a third party requester, which request was assigned Reexamination
`Control No. 95/001,789 (“the ‘I789 proceeding”). The request identified Apple as the
`real party in interest. On January 18, 2012,
`the Office issued an order granting the
`request for inter partes reexamination in the ‘1789 proceeding.
`*
`
`‘“
`
`5. On January 18, 2012, the Office issued an Office Action rejecting claims 1-60 of the ‘211
`patent. On April 18, 2012, patent owner responded to the Office Action. On August 6,
`2012, Apple filed comments after the patent owner’s response. On September 26, 2012,
`the Office issued an ACP.
`
`Page 6 of 10
`
`Page 6 of 10
`
`

`
`Reexamination Control Nos. 95/001,682 and 95/001,679
`
`-3-
`
`The ‘1682 reexamination proceeding:
`
`6. On December 31, 2002, the ‘135 patent issued to Munger et al. with 17 claims.
`
`7. On June 7, 2011, the Office issued Inter Partes Reexamination Certificate (027l“) U.S.
`6,502,135 Cl confirming the patentability of claims 1-10 and 12 and adding new claim
`18. Claims 11 and 13-17 were not reexamined.
`
`'
`
`8. On July 8, 2011, a request for inter partes reexamination of claims 1-18 the ‘135 patent
`was filed by a third party requester (“the ‘l679 requester”), which request was assigned
`control no. 95/001,679 (“the ‘I679 proceeding”). The request identified Cisco Systems,
`Inc. (“Cisco”) as the real party in interest. On October 3, 201 1, the Office issued an order
`granting the request for inter partes reexamination in the ‘I679 proceeding.
`
`'
`
`9. On July 11, 2011, a second request for inter partes reexamination of claims 1-15 and 17-
`18 of the ‘I35 patent was filed by a third party requester (“the ‘1682 requester”), which
`request was assigned Reexamination Control No. 95/001,682 (“the ‘1682 proceeding”).
`The request identified Apple as the real party in interest. On October 3, 2011, the Office
`issued an order granting the request
`for
`inter partes reexamination in the ‘1682
`proceeding.
`'
`
`'10. On December 5, 2012, Apple filed the instant petition paper entitled “Petition Under 37
`CFR § 1.182 To Align Schedules Of Related Proceedings” (“the petition under 37 CFR
`1.182”) in the ‘1682 proceeding.
`
`11. On December 13, 2012, the Office issued a decision, sua sponte, merging the ‘1682 and
`‘ l679'proceedings (“the merged proceeding”).
`
`12. Also, on December 13, 2012, patent owner filed “Patent Owner’s Petition In Opposition
`To Third-Party Requester Apple Inc.’s Petition To Align Schedules” (“the opposition”) in
`the ‘1682 proceeding.
`
`Related proceedings:
`
`13. ‘Also, on December 5, 2012, Apple filed petition papers entitled “Petition Under 37 CFR
`§ 1.182 To Align Schedules Of Related Proceedings” in Reexamination Control Nos.
`95/001,697 and 95/001,949.
`
`DECISION
`
`Relevant Statutes, Regulations and Practice
`
`35 U.S.C. § 314 provides, in part:
`
`(a) IN GENERAL.—— Except as otherwise provided in this section, reexamination
`shall be conducted according to the procedures established for initial examination
`under the provisions of sections 132 and 133.
`In any inter partes reexamination
`
`Page 7 of 10
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`Page 7 of 10
`
`

`
`Reexamination Control Nos. 95/001,682 and 95/001,679
`
`-4-
`
`proceeding under this chapter, the patent owner shall be permitted to propose any
`amendment to the patent and a new claim or claims, except that no proposed
`amended or new claim enlarging the scope of the claims of the patent shall be
`A permitted.
`
`. ****
`
`(c) SPECIAL DISPATCH.—— Unless otherwise provided by the Director for good
`cause, all inter partes reexamination proceedings under this section, including any
`appeal to the Board of Patent Appeals and Interferences, shall be conducted with
`special dispatch within the Office.
`
`Apple’s Petition under 37 CFR 1.182 and Patent Owner’.s Opposition
`
`In the petition under 37 CFR l.l82, Apple (“petitioner”) requests that “the Office take actions to
`accelerate, and to thereby better align, the schedules of Reexamination Control No. 95/001,682
`with the schedules of 95/001,788 and 95/001,789.”' Specifically, petitioner rec21uests the Office
`“act promptly in issuing an Action Closing Prosecution in the ‘682 proceeding, and to limit the
`period granted in that proceeding for Patent Owner and/or Requestor to respond to the ACP to no
`more than one month, and to take such other steps that will expedite issuance of a final decision
`in each of the three pending reexamination proceedings.”3
`’
`
`In support of its request, petitioner states that “doing so will help align the schedules of the ‘682
`proceeding with those of the ‘788 and ‘789 proceedings, in which ACPs have issued with a
`previously extended deadline for response of December 26, 2012 for each proceeding.”4
`Specifically, petitioner asserts that because the three proceedings are “closely related” and
`“present similar and related issues of patentability over the prior art”, “[t]aking steps to better
`align the schedules of the three proceedings will serve the public interest by providing for an
`efficient and expeditious review of final decisions of the Office concerning the three related
`patents.”5 Further, it is the position of the petitioner that expediting the conclusion of the ‘1682
`proceeding will also “enable appeals of the three patents to be considered concurrently with any
`appeal arising from concurrent litigation pending in the Eastern District of Texas or International
`Trade Commission.”6 Petitioner asserts that “[a]ccelerating the ‘682 proceeding is also the only
`path consistent with the Office’s mandate to conduct inter partes reexamination proceedings
`with special dispatch.”7 Finally, petitioner asserts that “[a]ccelerating the ‘682 proceeding also
`will not prejudice the interests of the Patent Owner.”8
`
`In opposition to requester’s petition under 37 CFR 1.182, patent owner asserts that “these
`reexaminations are already being appropriately conducted by the Office with. the ‘special
`
`' Petition under 37 CFR 1.182 at page 1.
`2 Petitioner uses the last three digits of the control number of each proceeding to identify the proceeding.
`3 Petition under 37 CFR 1.182 at page 4.
`i
`“ Id
`5 Id.
`6 Id. at page 5.
`7 Id. at page 6.
`8 Id.
`
`‘
`
`Page 8 of 10
`
`Page 8 of 10
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`

`
`Reexamination Control Nos. 95/001,682 and 95/001,679
`
`-5-
`
`further asserts that “contrary to Apple’s
`Patent owner
`sought by Apple.”9
`dispatch’
`representations, accelerating the ‘1,682, ‘l,697, and ‘1,949 proceedings would substantially
`prejudice Patent Owner” and “would not provide the Patent Owner adequate time and
`opportunity to respond.”1°'
`
`Discussion
`
`Petitioner’s request that the Office “act promptly in issuing an Action Closing Prosecution, and
`to limit the period granted in that proceeding for Patent Owner and/or Requester to respond to
`the ACP to no more than one month, and to take such other steps that will expedite issuance of a
`final decision in each of the three pending reexamination proceedings”” is not practicable as a
`matter of Office administration.
`The timing of Office actions issued in reexamination
`proceedings is a matter of Central Reexamination Unit (CRU) docket management and internal
`administration by the Office. Each reexamination proceeding is conducted on its own merits and
`decisions therein are decided on a case-by-case basis. The fact that the subject matter of the
`three proceedings is related and may present similar and related issues of patentability does not
`justify requiring the examiners to expedite issuance of actions in all three proceedings” at the
`expense of delaying other proceedings on the examiners’ dockets. To do so would put an undue
`burden on each examiner with respect to docket management and the coordination thereof with
`other examiners.” Moreover, even if the examiners were to attempt such coordination, many
`circumstances in reexamination proceedings which are beyond the examiners’ control could
`disrupt such coordination (e.g., a petition or an improper paper that is filed in one, but not all, of
`the aligned proceedings).
`
`Additionally, delaying one or more proceedings in order to align with and expedite another
`proceeding does not "promote the mandate of 35 U.S.C. § 314 that a_ll inter partes reexamination
`proceedings be conducted with special dispatch in the Office. Thus, the Office carmot commit to
`issuing Office actions simultaneously across various proceedings that are docketed to different
`examiners and that are at different stages of prosecution. Examiners will mail Office actions in
`proceedings as they are completed, irrespective of when Office actions are ready to be mailed in
`other proceedings.
`
`for Patent Owner and/or
`Further, petitioner has requested the Office “limit the period granted
`Requester to respond to the ACP to no more than one month.”l4 Note that MPEP § 2662(C)
`
`A
`
`.
`2
`9 Opposition at page 4.
`1° Id. at pages 5-6 (noting that patent owner “must also respond to filings from Apple and Cisco in a large number of
`other reexaminations”)
`" Petition under 37 CFR 1.182 at page 4.
`'2 In fact, petitioner is requesting the alignment of ongoing inter partes reexamination proceedings of five different
`patents. See “Petition Under 37 CFR § 1.182 To Align Schedules of Related Proceedings,” filed December 5, 2012,
`in both Reexamination Control No. 95/001,697 and Reexamination Control No. 95/001,949.
`'3 The Office notes that the examiner ofthe ‘1682 proceeding is different fiom the examiner of the ‘1788 and ‘1789
`proceedings. The ‘ 1788 and ‘1789 proceedings demonstrate that, under certain circumstances (e.g., requests filed at
`the same time and assigned to the same examiner), some proceedings may progress in substantial alignment.
`'4 Petition under 37 CFR 1.182 at page 4.
`j
`'
`'
`
`Page 9 of 10
`
`Page 9 of 10
`
`

`
`Reexamination Control Nos; 95/001,682 and 95/001,679
`
`-6-
`
`provides that the ACP normally sets a time period of 30 days or one month from the mailing date
`of the ACP, and further makes clear that the time period set is a matter of Office discretion. 15
`
`In granting equitable relief pursuant to 37 CFR 1.182, the Office must balance the equities of
`granting such relief with respect to all parties to the reexamination proceedings, as well as any
`impact on the Office.
`In this instance, the relief requested could prejudice the patent owner and
`place unwarranted administrative burden on the Office. Accordingly,
`for at
`least
`the
`aforementioned reasons, the petition under 1.182 is dismissed.
`
`CONCLUSION
`
`1.
`
`2.
`
`Requester’s December 5, 2012 petition under 37 CFR 1.182 is dismissed.
`
`Any questions concerning this communication should be directed to Erin M. Harriman,
`Legal Advisor, at 571-272-7747 or to the undersigned at 571-272-7726.
`
`"F. L_. L.
`
`Pinchus M. Laufer
`
`°/.-£..,
`
`Senior Legal Advisor
`Office of Patent Legal Administration
`
`March 1 1, 2013
`
`'5 MPEP §2662(C) states, “The patent owner may once ‘file written comments and/or present a proposed amendment
`to the claims within the time period set in the ACP. 37 CFR l.95l(a). Normally, the ACP will set a period of 30
`days or one month (whichever is longer) from the mailing date of the ACP.”
`
`Page 10 of 10
`
`Page 10 of 10