`Filed on behalf of: VirnetX Inc.
`By:
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail:
`PH-VirnetX-IPR@paulhastings.com
`
`
`
`
`
`
`Paper No.
`Filed: March 5, 2017
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail:
`PH-VirnetX-IPR@paulhastings.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`BLACK SWAMP IP, LLC
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2016-00957
`Patent 7,921,211
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner’s Identification of New Issues in Petitioner’s Reply Brief
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2016-00957
`
`Patent Owner identifies arguments presented in Black Swamp IP LLC’s
`
`Reply Brief (Paper No. 12, “Reply Brief”) believed to be improper.1 Specifically,
`
`as discussed below, the Reply Brief is improper at least because it presents a new
`
`claim mapping and new claim interpretation that go beyond properly responding to
`
`VirnetX’s Patent Owner Response (Paper No. 10, “Response”). The new
`
`arguments contained in the Reply Brief should not be considered by the Board.
`
`A petitioner’s reply “may only respond to arguments raised in the
`
`corresponding . . . patent owner response.” 37 C.F.R. § 42.23(b). In its reply,
`
`moreover, a petitioner may not “embark in a new direction with a new approach as
`
`compared to the position originally taken in the Petition.” Apple Inc. v. e-Watch,
`
`Inc., IPR2015-00412, Paper No. 50 at 44 (May 6, 2016). A reply brief will exceed
`
`the scope permitted by § 42.23(b) if it, for example, introduces a new claim
`
`mapping or new claim interpretation. See, e.g., In re NuVasive, 841 F.3d 966,
`
`972–73 (Fed. Cir. 2016) (finding lack of requisite notice to patent owner where
`
`
`1 In an email dated February 28, 2017, the Patent Trial and Appeal Board
`
`authorized Patent Owner “to file a brief addressing the new issues alleged to be
`
`raised by Petitioner in Petitioner’s reply brief,” which “clearly identif[ies] each
`
`alleged new issue in Petitioner’s reply brief,” but that does not present any “new
`
`arguments.”
`
`
`
`1
`
`
`
`
`petitioner’s reply provided a new claim mapping); SAS Institute, Inc. v.
`
`Case No. IPR2016-00957
`
`ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016) (vacating a final
`
`written decision where a party lacked notice as to a new claim interpretation).
`
`As the Board has explained, “[a]ccepting such belatedly presented new
`
`arguments would be unjust.” Apple, IPR2015-00412, Paper No. 50 at 44; see also
`
`Altraire Pharm., Inc. v. Paragon Bioteck, Inc., PGR2015-00011, Paper No. 38 at 1
`
`(May 18, 2016) (explaining that a petitioner’s reply may not “depart from the
`
`position originally taken in the Petition and embark in a new direction with a new
`
`approach”). For this reason, the Federal Circuit has stressed that “[i]t is of the
`
`utmost importance that petitioners in the IPR proceedings adhere to the
`
`requirement that the initial petition identify ‘with particularity’ the ‘evidence that
`
`supports the grounds for the challenge to each claim.” Intelligent Bio-Systems, Inc.
`
`v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (citing 35
`
`U.S.C. § 312(a)(3)). “Unlike district court litigation—where parties have greater
`
`freedom to revise and develop their arguments over time and in response to newly
`
`discovered material—the expedited nature of IPRs bring with it an obligation for
`
`petitioners to make their case in their petition to institute.” Id. In fact, where a
`
`petitioner’s reply exceeds the scope permitted by § 42.23(b), the Board need not
`
`“parse the reply brief to determine which, if any, parts of that brief are responsive
`
`
`
`2
`
`
`
`
`and which are improper.” Id. (citing Office Patent Trial Practice Guide, 77 Fed.
`
`Case No. IPR2016-00957
`
`Reg. 48,756, 48,767 (Aug. 14, 2012)).
`
`The Reply Brief filed by Black Swamp presents at least two improper new
`
`issues:
`
`New Issue #1: The Reply Brief attempts to map the alleged prior art,
`
`Kiuchi, to the claimed “secure communication link” in two different ways, one of
`
`which is consistent with the Petition and one of which is not. Specifically, the
`
`Reply Brief first argues, consistent with the Petition, that “Kiuchi discloses
`
`establishing a secure communication link between the client-side proxy and the
`
`server-side proxy.” Reply Brief at 22; see also Pet. at 24 (“the C-HTTP name
`
`server facilitates the establishment and operation of a secure communication link
`
`between the client-side proxy and the server-side proxy”); Response at 33–36
`
`(explaining why this first mapping is wrong). But the Reply Brief then deviates
`
`from the Petition, arguing that “the secure communication link could occur
`
`between any of the entities in Kiuchi (not just between the server-side proxy and
`
`the client-side proxy).” Reply Brief at 22. Moreover, the Reply Brief argues that
`
`“because the client-side proxy and the C-HTTP name server communicate securely
`
`with one another, there is a secure communication link therebetween.” Reply Brief
`
`at 23. Neither the general mapping (that “the secure communication link could
`
`occur between any of the entities in Kiuchi”) nor the more specific mapping (that a
`
`
`
`3
`
`
`
`
`“secure communication link” could occur between “the client-side proxy and the
`
`Case No. IPR2016-00957
`
`C-HTTP name server”) was presented in the Petition.
`
`New Issue #2: The Reply Brief argues that independent claims 1, 36, and
`
`60 should be interpreted such that “the ‘indicate’/‘indicating’ claim elements and
`
`the alleged ‘establishing’ claim elements are not separate claim elements.” Reply
`
`Brief at 14; see also id. at 17 (“As discussed above, the ‘indicate’/‘indicating’
`
`claim elements and alleged ‘establishing’ claim elements are not separate claim
`
`elements in independent claims 1, 36, and 60.”). According to Black Swamp, this
`
`is so because (1) “the preambles of independent claims 1 and 60 are clearly non-
`
`limiting statements of intended use . . . [that] should be accorded no patentable
`
`weight,” and (2) “the recitations of ‘supports establishing a secure communication
`
`link’ in the bodies of independent claims 1, 36, and 60 are embedded in the
`
`‘indicate’/‘indicating’ recitations thereof.” Id. at 14. This interpretation of the
`
`independent claims departs from the interpretation originally set forth in the
`
`Petition. Specifically, in contrast to the Reply Brief, the Petition interpreted the
`
`two elements as separate claim elements. For instance, in analyzing the preamble
`
`of independent claim 1, rather than treating it as “non-limiting,” the Petition argued
`
`that “Kiuchi discloses establishment of ‘a secure communication link’ as defined
`
`by the Board.” Pet. at 21–22. Moreover, in addressing the claimed “indication
`
`that the domain name service system supports establishing a secure communication
`
`
`
`4
`
`
`
`
`link,” the Petition further argued that “the C-HTTP name server facilitates the
`
`Case No. IPR2016-00957
`
`establishment and operation of a secure communication link between the client-
`
`side proxy and the server-side proxy.” Id. at 24. Nothing in its Petition suggests in
`
`any way that Black Swamp intended to interpret “the ‘indicate’/‘indicating’ claim
`
`elements and the alleged ‘establishing’ claim elements [as] not separate claim
`
`elements,” as it does in the Reply Brief. Reply Brief at 14.
`
`Consistent with the Federal Circuit’s and the Board’s jurisprudence, the
`
`improper new arguments presented in Black Swamp’s Reply Brief should not be
`
`considered by the Board.2
`
`Dated: March 5, 2017
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
`
`Counsel for VirnetX Inc.
`
`
`
`
`2 To the extent the Board is inclined to consider these new arguments, Patent
`
`Owner should be afforded a full opportunity to respond to them, including with
`
`expert evidence. In re NuVasive, 841 F.3d at 973.
`
`
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 5th day of March, 2017, a copy of Patent
`
`Owner’s Identification of New Issues in Petitioner’s Reply Brief was served by
`
`electronic mail, as agreed by the parties, upon the following Counsel for Black
`
`Swamp IP, LLC:
`
`Thomas H. Martin
`Wesley C. Meinerding
`MARTIN & FERRARO
`1557 Lake O’Pines Street, NE
`Hartville, Ohio 44632
`tmartin@martinferraro.com
`docketing@martinferraro.com
`
`
`
`Respectfully submitted,
`
` /Joseph E. Palys/
`Joseph E. Palys
`Counsel for VirnetX Inc.
`
`
`
`
`
`Dated: March 5, 2017
`
`
`
`
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
