Apple Inc.v.VirnetX Inc.

Patent Trial and Appeal Board

Sep 16, 2014

11679416 (P.T.A.B. Sep. 16, 2014)

Trials@uspto.gov Paper No. 10
571-272-7822
8
Date Entered: September 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.,
Petitioner,
v.
VIRNETX, INC.,
Patent Owner.
____________

Case IPR2014-00485
Patent 8,051,181 B2
____________

Before TONI R. SCHEINER, MICHAEL P. TIERNEY, and
KARL D. EASTHOM, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION
Denying Petitioner’s Motion for Joinder
and Denying Institution of Inter Partes Review
37 C.F.R. §§ 42.108, 42.122
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I. INTRODUCTION
Petitioner, Apple Inc. (“Apple”), filed a Petition (Paper 1, “Pet.”) on
March 10, 2014, requesting inter partes review of claims 1–29 of U.S. Patent
No. 8,051,181 B2 (“the ’181 patent”) under 35 U.S.C. §§ 311–319. Concurrently,
Apple filed a Motion for Joinder (Paper 3, “Mot.”) requesting consideration of the
Petition with its petitions in Cases IPR2014-00483 and IPR2014-00484
(challenging U.S. Patent No. 7,987,274 (“the ’274 patent”)), and petitions in
Cases IPR2014-00403 and IPR2014-00404, filed by Microsoft Corporation (also
challenging the ’274 patent).
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Specifically, Apple “moves to join any proceedings
based on these petitions in a single proceeding.” Mot. 1.
Patent Owner, VirnetX Inc. (“VirnetX”) filed an opposition to Petitioner’s
Motion (Paper 6, “Opp.”), and a Preliminary Response (Paper 15, “Prelim.
Resp.”). Apple filed a Reply in support of its Motion (Paper 9, “Pet. Reply”).
For the reasons that follow, Apple’s Motion for Joinder is denied, the
Petition for inter partes review is denied as untimely, and no trial is instituted.
A. Related Proceedings
The ’181 patent was asserted against Apple in VirnetX Inc. v. Apple Inc.,
No. 11-cv-00563-LED (E.D. Tex.). Pet. 2; Paper 5, 8. The ’181 patent also is the
subject of an on-going inter partes reexamination, Control No. 95/001,949. Pet. 2.
In addition, Apple filed a separate Petition requesting inter partes review of claims
1–29 of the ’181 patent—IPR2014-00486.

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Inter partes reviews were instituted in Cases IPR2014-00403 and IPR2014-
00404 on July 31, 2014.
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B. The ’181 Patent
The ’181 patent is directed to “a method for establishing a secure
communication link between a first computer and a second computer over a
computer network, such as the Internet.” Ex. 1025, 6:37–39.
C. Illustrative Claim
Claims 1, 2, 24, 26, 28, and 29 of the challenged claims are independent.
Claim 2 of the ’181 patent is illustrative, and is reproduced below:
2. A method of using a first device to communicate
with a second device having a secure name, the method
comprising:
from the first device, sending a message to a
secure name service, the message requesting a network
address associated with the secure name of the second
device;
at the first device, receiving a message containing
the network address associated with the secure name of
the second device; and
from the first device, sending a message to the
network address associated with the secure name of the
second device using a secure communication link.
Ex. 1025, 55:42-52.
D. The Prior Art
Apple relies on the following prior art:
Beser et al. US 6,496,867 B1 Dec. 17, 2002 (Ex. 1031).
Provino US 6,557,037 B1 Apr. 29, 2003 (Ex. 1003).
Takahiro Kiuchi and Shigekoto Kaihara, C-HTTP – The Development
of a Secure, Closed HTTP-based Network on the Internet,
Proceedings of the Symposium on Network and Distributed System
Security, IEEE, 1996 (“Kiuchi”) (Ex. 1004).
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H. Schulzrinne et al., RTP: A Transport Protocol for Real-Time
Applications, Request For Comments: 1889 1–75 (Jan. 1996) (“RFC
1889”) (Ex. 1034).
Dave Kosiur, Building and Managing Virtual Private Networks,
Wiley Computer Publishing (1998) (“Kosiur”) (Ex. 1006).
M. Handley et al., SDP: Session Description Protocol, Network
Working Group, Request For Comments: 2327 1–42 (Apr. 1998)
(“RFC 2327”) (Ex. 1035).
S. Kent et al., Security Architecture for the Internet Protocol, Network
Working Group, Request For Comments: 2401 1–66 (Nov. 1998)
(“RFC 2401”) (Ex. 1032).
M. Handley et al., SIP: Session Initiation Protocol, Network Working
Group, Request For Comments: 2543 1–153 (Mar. 1999) (“RFC
2543”) (Ex. 1033).

E. The Asserted Grounds of Unpatentability
Apple asserts the challenged claims are unpatentable based on the following
grounds. Pet. 13–59.
Basis Reference(s)
Claims
Challenged
§ 102 RFC 2543 1–29
§ 103 RFC 2543, RFC 1889, and RFC 2327 1–29
§ 103 RFC 2543 and RFC 2401 1–29
§ 103 RFC 2543 and Kiuchi 3, 4, 23
§ 102 Provino 1–29
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Basis Reference(s)
Claims
Challenged
§ 103 Provino 21, 26, 27
§ 103 Provino, Beser, and Kosiur 12–17
II. ANALYSIS
A. Timeliness of the Petition
Section 315(b) of Title 35 of the United States Code is as follows:
(b) PATENT OWNER’S ACTION.—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 . . . is served with a
complaint alleging infringement of the patent. The time limitation set
forth in the preceding sentence shall not apply to a request for joinder
under subsection (c).
Apple acknowledges it was served with a complaint for infringement of the
’181 patent on November 1, 2011—more than one year before the present Petition
was filed. Pet. 1; Mot. 2. Nevertheless, Apple argues that its Petition is timely and
the one-year time bar does not apply because the Petition was accompanied by a
motion to join the instant proceeding with the previously instituted proceedings
involving the ’274 patent—which petitions were filed within the one year time
limit. Pet. 1; Mot. 2.
In other words, Apple’s Petition challenging the ’181 patent would be
untimely under § 315(b), absent joinder with a proceeding challenging the
’274 patent. See Samsung Elecs. Co. v. Va. Innovation Scis., Inc., Case IPR2014-
00557, slip op. at 15 (PTAB June 13, 2014) (Paper 10) (“Petitioner was served
with a complaint asserting infringement of the ’398 Patent more than one year
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before filing this Petition. Thus, absent joinder of this proceeding with IPR2013-
000571, the Petition would be barred.” (footnote omitted)).
B. Joinder
The statutory provision governing joinder of inter partes review proceedings
is 35 U.S.C. § 315(c), which reads as follows:
(c) JOINDER.—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.
Apple argues that joinder is warranted because the ’181 and ’274 patents are
“very closely related” and “raise a set of overlapping issues that are most
efficiently addressed in one inter partes proceeding.” Mot. 1. Essentially, Apple
argues that independent “claim 2 of the ’181 patent and claim 1 of the ’274 patent
. . . recite highly similar steps” (id. at 6), and that VirnetX “conceded the ’181 and
’274 patent claims are not patentably distinct” (id. at 9), as evidenced by reciprocal
terminal disclaimers filed in the ’181 and ’274 patents in response to non-statutory
obviousness-type double patenting rejections (id. at 10). Apple argues that “[t]he
’274 and ’181 and patents also have a nearly identical disclosure . . . and their
claims have the same effective filing date” so “there will be no distinct issues of
applicability of the prior art to the claims in the ’274 and ’181 patents, and
consistent interpretations will be used for the claim terms” (id. at 11).
Apple further argues that “[t]he petitions against the ’181 patent . . . rely on
the same four primary references” relied on in the petitions against the ’274 patent.
Mot. 13. Apple argues the -00485, -00486, -00483, -00484, -00403, and -00404
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petitions “present substantially overlapping grounds” (id.), as shown in the
following table:

Mot. 12.
Apple acknowledges that the claims of the two patents differ in scope—i.e.,
the claims in the ’181 patent are broader than the claims in the ’274 patent. Pet.
Reply 4. Apple also acknowledges “as [the ’181] patent has different claims,
different explanations are provided as to why the ’181 claims are unpatentable over
those four references.” Mot. 13. However, in mitigation of this, Apple argues “if
the Board finds the ’274 claims unpatentable over certain prior art, that same prior
art necessarily will render the broader ’181 patent claims unpatentable” (Pet.
Reply 4).
VirnetX argues that “terminal disclaimers are not an admission that claims
are patentably indistinct” (Opp. 7), and it “never ‘conceded’ that the claims of the
’181 and ’274 patents are patentably indistinct’” (id. at 8). Moreover, VirnetX
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points out that joining Apple’s -00483, -00484, -00485, and -00486 petitions with
Microsoft’s -00403 and -00404 petitions would “add[] to Microsoft’s proceedings
. . . six additional prior art references [not shown in the table above], nineteen new
grounds of unpatentability, three new declarations totaling over 660 pages, and one
declarant.” Id. at 1. VirnetX also argues that “Apple’s twenty-nine additional
claims involve new claim terms and claim construction issues . . . not raised in
Microsoft’s petitions” (id. at 8), and the “unpatentability analyses required to
address all of the new references and grounds of rejection introduced by Apple will
have a significant impact on the proceeding” (id. at 9).
We have considered Apple’s arguments in support of joinder and VirnetX’s
arguments in opposition, and are not persuaded that joinder of proceedings
involving claims of differing scope in two distinct patents is warranted or justified
on the facts presented. As discussed above, joinder of two or more proceedings for
inter partes review is discretionary. See 35 U.S.C. § 315(c). We decline to
exercise that discretion to join these proceedings.
III. CONCLUSION
We deny the Motion for Joinder and, therefore, deny the Petition because it
was not filed within the time limit imposed by 35 U.S.C. § 315(b).
IV. ORDER
In consideration of the foregoing, it is ORDERED that Petitioner’s motion
for joinder is denied; and
FURTHER ORDERED that the Petition challenging the patentability of
claims 1–29 of U.S. Patent No. 8,051,181 is denied and no trial is instituted.

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Patent 8,051,181 B2

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PETITIONER:

Jeffrey Kushan
jkushan@sidley.com

Joseph Micallef
jmicallef@sidley.com

PATENT OWNER:

Joseph Palys
josephpalys@paulhastings.com

Jason Stach
Jason.stach@finnegan.com

Naveen Modi
naveenmodi@paulhastings.com