Paper No. 2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`APPLE INC.
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`Petitioner,
`
`v.
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`VIRNETX INC.,
`
`Patent Owner.
`
`
`Patent No. 6,502,135
`Issued: Dec. 31, 2002
`Filed: Feb. 15, 2000
`Inventors: Edmund C. Munger, et al.
`Title: AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS
`WITH ASSURED SYSTEM AVAILABILITY
`____________________
`
`Inter Partes Review No. IPR2016-00062
`__________________________________________________________________
`
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`PETITIONER’S MOTION FOR JOINDER
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`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`
`Patent Owner.
`
`
`Patent No. 6,502,135
`Issued: Dec. 31, 2002
`Filed: Feb. 15, 2000
`Inventors: Edmund C. Munger, et al.
`Title: AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS
`WITH ASSURED SYSTEM AVAILABILITY
`____________________
`
`Inter Partes Review No. IPR2016-00062
`__________________________________________________________________
`
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`PETITIONER’S MOTION FOR JOINDER
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`IPR2016-00062
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`
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`Motion for Joinder
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`I.
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`INTRODUCTION
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`Petitioner Apple Inc. (“Apple”) moves to join its concurrently filed petition
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`for inter partes review involving U.S. Patent No. 6,502,135 (the ’135 patent) with
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`the inter partes review requested by the Mangrove Partners Master Fund, Ltd.
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`(“Mangrove”) against the same patent, The Mangrove Partners Master Fund, Ltd.,
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`v. VirnetX Inc., IPR2015-01046 (the Mangrove IPR). The Board instituted trial in
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`that proceeding on October 7, 2015. Apple seeks to join as a party to the
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`Mangrove IPR, and thus, has presented patentability challenges that are
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`substantively the same as those presented by Mangrove. As explained in § III.C
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`below, the sole difference is that, with this petition, Apple is submitting several
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`additional exhibits that supplement the information in the Mangrove IPR record
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`that shows that RFC 1034 is prior art to the ’135 patent.
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`The Apple petition is timely filed under 35 U.S.C. § 315(c), as it is filed
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`within one month of the date that the Mangrove IPR was instituted. See IPR2015-
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`01046, Paper 11 at 1, 12. As the statute provides and the Board has explained, the
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`one-year filing window specified in § 315(b) and § 42.101(b) “shall not apply to a
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`request for joinder under subsection (c).” 35 U.S.C. § 315(b); Dell Inc. v.
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`Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 at 4-5 (granting
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`joinder beyond the one-year window); Microsoft Corp. v. Proxyconn, Inc.,
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`IPR2013-00109, Paper 15 at 4-5 (same); 37 C.F.R. § 42.122(b) (the “time period
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`IPR2016-00062
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`Motion for Joinder
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`set forth in §42.101(b) shall not apply when the petition is accompanied by a
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`request for joinder.”).
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`Joinder is appropriate because of the substantial similarity between the
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`Apple petition and the Mangrove IPR. The Apple petition relies on the same
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`grounds as those instituted by the Board in the Mangrove IPR. Other factors
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`relevant to joinder favor granting this motion, including that: (i) the same schedule
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`for various proceedings can be adopted, (ii) Apple is not advancing any new expert
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`testimony, and thus, discovery will not be impacted by joinder, and (iii) joinder
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`will not materially affect the range of issues needing to be addressed by the Board
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`and by the parties in the joined proceedings. See Kyocera Corp. v. Softview LLC,
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`IPR2013-00004, Paper No. 15 at 4 (Apr. 24, 2013). Moreover, Apple is involved
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`in other proceedings involving the ’135 patent and other patents in the ’135 patent
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`family that involve some of the same art at issue here, and has an interest in
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`ensuring the Board does not resolve an issue in this proceeding that would impact
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`those other proceedings. Because these factors support joining these proceedings,
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`Apple requests the Board to grant this motion for joinder.
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`II. RELEVANT FACTS
`The ’135 patent is a member of a family of patents owned by VirnetX. See
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`Apple Pet. at § I.C.2. The specifications of these patents are nearly identical.
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`IPR2016-00062
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`Motion for Joinder
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`VirnetX has asserted varying sets of claims of the ’135 patent and other of its
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`patents against Apple and other entities in numerous lawsuits.
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`In August of 2010, VirnetX sued Apple and five other entities (the “2010
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`Litigation”). VirnetX asserted “at least” claims 1, 3, 7, 8, 9, 10, and 12 of the ’135
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`patent against Apple. After trial, VirnetX obtained a judgment of infringement
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`against Apple on, inter alia, claims 1, 3, 7, and 8 of the ’135 patent. On December
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`31, 2012, VirnetX served a new complaint on Apple asserting infringement of “at
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`least” claims 1, 3, 7, 8, 9, 10, and 12 of the ’135 patent, and leading to a civil
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`action now pending in the Eastern District of Texas (the “2012 Litigation”). On
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`September 16, 2014, the 2010 Litigation judgment was reversed-in-part by a
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`Federal Circuit panel and remanded for a new trial on damages. See VirnetX, Inc.
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`v. Cisco Systems, Inc., 767 F.3d 1308, 1313-14 (Fed. Cir. 2014). Both the
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`remanded 2010 Litigation and the 2012 Litigation are scheduled for a consolidated
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`trial in January of 2016.
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`III. ARGUMENT
`Joinder with the Mangrove IPR is justified because each factor identified by
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`the Board as supporting joinder is met. For example, the Board has explained that
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`a motion for joinder should: (1) explain the reasons why joinder is appropriate; (2)
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`identify any new grounds of unpatentability asserted in the petition; (3) explain
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`what impact (if any) joinder would have on the trial schedule for the existing
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`review; and (4) address specifically how briefing and discovery may be simplified.
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`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (representative
`
`order). Each of these factors is addressed below, and, when considered together,
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`strongly support granting this motion for joinder.
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`Joinder Is Appropriate
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`A.
`Joinder between the instant petition and the Mangrove IPR is appropriate
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`because they involve the same patent, the same art, the same expert declaration,
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`and the same arguments and legal rationales. Apple’s proposed grounds of
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`invalidity are identical to Mangrove’s.
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`Permitting joinder will not prejudice Mangrove or VirnetX. Apple raises no
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`issues that are not already before the Board, and consequently, joinder would not
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`affect the timing of the Mangrove IPR nor the content of any of VirnetX’s
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`responses. Moreover, Apple is amenable to coordinating with Mangrove and, as
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`such, neither Mangrove nor VirnetX will suffer any additional costs or burdens in
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`preparing motions and arguments.
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`The denial of joinder, however, will prejudice Apple. Absent joinder, the
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`petition would be untimely under § 315(b) and Apple would be unable to
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`participate in the inter partes review proceeding related to the ’135 patent. Apple
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`is involved in other proceedings involving the ’135 patent and other patents in the
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`’135 patent family that involve some of the same art at issue here. Specifically,
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`IPR2016-00062
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`Motion for Joinder
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`Apple is the third party requester in inter partes reexamination proceedings
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`involving the ’135 patent. See Control No. 95/001,682.1 These proceedings are
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`based on a petition Apple filed in 2011, but remain pending now more than four
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`years later, and despite the claims having been rejected repeatedly as
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`unpatentable.2 Granting joinder would allow Apple to ensure the Board does not
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`resolve an issue in this proceeding that would impact those other proceedings.
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`Accordingly, because of the strong similarity of the instant petition to the
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`Mangrove IPR, and to avoid prejudice to Apple, joinder is appropriate.
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`B. No New Grounds of Unpatentability in the Apple Petitions
`Apple’s petition proposes institution of trial on the same grounds that were
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`instituted by the Board in the Mangrove IPR, and Apple relies on the same exhibits
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`1 Control No. 95/001,682 was filed on July 11, 2011. On October 15, 2015,
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`Virnetx filed a Notice of Appeal in response to the Examiner’s Right of Appeal
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`Notice rejecting claims 1-18 as unpatentable.
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`2 The delays in the ’682 proceeding are largely due to the extraordinary number of
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`petitions that Patent Owner VirnetX has filed in that proceeding. These petitions
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`have sought, inter alia, to suspend the reexamination proceedings, delay the due
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`dates applicable to VirnetX for filing each of its papers, or to have the Office
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`reverse actions it has taken during the proceeding, including petitions seeking
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`reconsideration of denials of earlier petitions by VirnetX.
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`and expert testimony included in the Mangrove IPR. In addition to those exhibits,
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`Apple provides Exhibits 1026 to 1030 as supplemental evidence that is relevant to
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`the prior art status of RFC 1034, one of the prior art references at issue in the
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`Mangrove IPR. See Apple Pet. at § V. As the Board has found in other contexts,
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`additional evidence of public availability does not change the grounds of
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`unpatentability in a proceeding nor the evidence presented to support those
`
`grounds. See Palo Alto Networks, Inc v. Juniper Networks, Inc., IPR2013-00369,
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`Paper 37 at 3 (Feb. 5, 2014). Instead, Exhibits 1026 to 1030 merely supplement
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`the information presented in the Mangrove IPR and further support the Board’s
`
`preliminary findings. Accordingly, Apple proposes no new grounds of
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`unpatentability.
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`C. No Impact on the Trial Schedule of Costs of the Proceeding
`Granting this motion for joinder will have no impact on the trial schedule
`
`because Apple does not raise any issues that are not already before the Board.
`
`VirnetX does not need to specifically address any issues raised by Apple, and thus,
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`joinder would have no impact on the cost of the proceeding. In addition, Apple is
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`willing to adhere to the schedule already established for IPR2015-01046. See, e.g.
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`Motorola Mobility LLC v. Softview LLC, IPR2013-000256, Paper 10 at 2-3 (June
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`20, 2013) (identifying “impact of the joinder on the schedule and costs of the
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`proceeding” as a factor relevant to decide whether to join proceedings).
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`Additionally, consideration of Apple’s additional evidence related to the
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`prior art status of RFC 1034 will: (1) have no impact on the trial schedule and (2)
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`not prejudice VirnetX. First, the Board’s rules authorize the submission of
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`relevant supplemental information within one month after trial is instituted. See 37
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`C.F.R. § 42.123(a). Each of exhibits 1026 to 1030 could be submitted in the
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`Mangrove IPR as supplemental information under Section 42.123(a) because each
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`(1) has been submitted within one month of institution, and (2) is relevant to a
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`claim for which the trial has been instituted. See Palo Alto, IPR2013-00369, Paper
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`37 at 3; see also Biomarin Pharma. Inc., v. Genzyme Therapeutic Prods Limited
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`Partnership, IPR2013-00534, Paper 80 at 5 (Jan. 7, 2015) (more than one month
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`after institution of a proceeding, finding that it was in the interests-of-justice to
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`admit supplemental information on a reference’s publication date). As described
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`above, the additional evidence provided with Apple’s petition does not change the
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`grounds of unpatentability authorized for trial and does not alter the prior art that
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`supports those grounds. Consideration of the additional evidence by the Board and
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`the parties, thus, will have no impact on the trial schedule.
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`Second, VirnetX will have limited need (if any) to investigate the proffered
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`information because VirnetX already investigated most of the exhibits during one
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`of the concurrent litigation proceedings. For example, VirnetX received Ms.
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`Ginoza’s declaration and RFC 1034 (Exs. 1026-27) as part of a Section 337 action
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`in 2013, and it had the opportunity to cross-examine Ms. Ginoza about RFC 1034’s
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`publication date. See Ex. 1028 at 50:7-69:1. Moreover, even if VirnetX feels it
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`would be necessary to further investigate these exhibits, it is early in the discovery
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`period of the Mangrove IPR and the IPR rules contemplate that a patent owner
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`may need to consider relevant supplemental information submitted within one
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`month of trial institution. See 37 C.F.R. § 42.123(a). Therefore, granting this
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`motion for joinder will have no impact on the trial schedule.
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`Proposals for Briefing in the Joined Proceedings
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`D.
`Joinder will simplify briefing in both the Mangrove IPR and the present
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`proceeding by eliminating the need for VirnetX to respond to substantially
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`identical petitions twice. In the interest of efficiency, Apple is willing to
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`coordinate with Mangrove to provide consolidated filings within the page limits set
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`forth in the rules governing this proceeding so long as Mangrove is actively
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`participating in the proceeding, or to accept other reasonable conditions on the
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`conduct of the joined proceeding. In addition, Apple has not filed a separate expert
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`declaration, and thus, VirnetX will not need to depose any additional witnesses.
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`Apple is also willing to coordinate with Mangrove to avoid duplicative cross-
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`examination of VirnetX expert witnesses.
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`IPR2016-00062
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`Motion for Joinder
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`IV. Conclusion
`Because the factors relevant to grant of a motion for joinder strongly support
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`joining the present proceeding to IPR2015-01046, Apple requests this motion for
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`joinder be granted.
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`Dated: October 26, 2015
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`
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`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`(Reg No. 43,401)
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
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`IPR2016-00062
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`Motion for Joinder
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 26th day of October 2015, a copy of this Motion
`for Joinder, has been served in its entirety by Federal Express on the following
`counsel of record for VirnetX:
`
`VirnetX Inc.
`P.O. Box 439
`Zephyr Cove, Nevada 89448
`Patent Owner
`
`
`Abraham Kasdan
`Wiggin and Dana LLP
`450 Lexington Avenue
`New York, NY 10017
`Counsel of record for Petitioner in
`IPR2015-01047
`
`James T. Bailey
`504 W. 136th St., #1B
`New York, NY 10031
`Counsel of record for Petitioner in
`IPR2015-01047
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`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Counsel of record for Patent Owner
`
`Joseph E. Palys
`Naveen Modi
`Paul Hastings LLP
`875 15th Street, NW
`Washington, D.C. 20005
`Counsel of record for Patent Owner
`in IPR2015-01047
`
`
`
`
`
`
`Dated: October 26, 2015
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