Microsoft Corporationv.VirnetX Inc.

Patent Trials and Appeals Board

Jul 23, 2014

09504783 - (R) (P.T.A.B. Jul. 23, 2014)

Trials@uspto.gov Paper 16
571-272-7822 Date: September 5, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSOFT CORPORATION,
Petitioner,

v.

VIRNETX INC.,
Patent Owner.
____________

Case IPR2014-00401 and IPR2014-00405
Patent 7,188,180 B2
Case IPR2014-005581
Patent 6,502,135 B2
____________

Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION
Request for Rehearing
37 C.F.R. § 42.71(d)

1 This decision addresses an issue that is identical in each case. We, therefore,
exercise our discretion to issue one Decision to be filed in each case. Unless
otherwise authorized, the parties, however, are not authorized to use this style
heading for any subsequent papers. Citations and page references in the Decision
correspond to IPR2014-00401, unless otherwise indicated.
IPR2014-00401, IPR2014-00405, IPR2014-00558
Patents 7,188,180 B2; 6,502,135 B2

2

I. BACKGROUND

Microsoft Corporation (“Petitioner”), in its Request for Rehearing (“Req.” or
“Request”), seeks reversal of the Board’s Decision (“Decision”) not to institute an
inter partes review of claims 1, 4, 6, 10, 12-15, 17, 20, 22, 26, 28-31, 35,and 37 of
U.S. Patent 7,188,180 B2 (“the ’180 Patent,” Ex. 1001). See Req. Reh’g. 8. For
the reasons that follow, the Board denies the requested relief.
The applicable standard for a request for rehearing is set forth in 37 C.F.R.
§ 42.71(d), which provides in relevant part:
A party dissatisfied with a decision may file a request for rehearing,
without prior authorization from the Board. The burden of showing a
decision should be modified lies with the party challenging the
decision. The request must specifically identify all matters the party
believes the Board misapprehended or overlooked, and the place
where each matter was previously addressed in a motion, opposition,
or a reply.
Petitioner disagrees with the Decision for denying institution of inter partes
review pursuant to 35 U.S.C. § 315(b). 35 U.S.C. 315(b) provides in relevant part:
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.

II. DISCUSSION
Petitioner argues that “a complaint,” as specified in 35 U.S.C. § 315(b),
“creates an ambiguity,” that Petitioner previously “set forth an equally plausible
interpretation” of “a complaint,” and that resolution of the alleged “ambiguity”
should be resolved by “turn[ing] to the legislative history of § 315(b).” Req. Reh’g
3. As previously explained in the Decision, Petitioner does not demonstrate
IPR2014-00401, IPR2014-00405, IPR2014-00558
Patents 7,188,180 B2; 6,502,135 B2

3

persuasively a substantial “ambiguity” in the context of 35 U.S.C. § 315(b). The
statute explicitly states that 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. In the present case and as previously
explained in the Decision, the Petitioner was served with a complaint more than
one year prior to the date on which the present petition was filed. We declined to
institute inter partes review pursuant to 35 U.S.C. § 315(b).
The Board employed standard tools of statutory construction in interpreting
§ 315(b), and did not overlook or misapprehend the need to interpret the statute
properly. In interpreting 35 U.S.C. § 315(b), the Board concluded that the statute
was not ambiguous as to whether “a complaint alleging infringement” that was
served previously could preclude institution of an inter partes review.
Additionally, while we disagree that the statute is ambiguous, to the extent there is
an ambiguity, the Board’s interpretation of the statute is consistent with the
legislative history, including that identified by Petitioner.

III. CONCLUSION
Based on the foregoing discussion, Petitioner’s Request is granted to the
extent that the Board has reconsidered its Decision, but Petitioner’s requested relief
for a reversal of the Decision is denied because Petitioner has not shown that the
Decision overlooks or misapprehends a material point.

IV. ORDER
For the reasons given, it is
ORDERED that the Request for Rehearing is denied; and
IPR2014-00401, IPR2014-00405, IPR2014-00558
Patents 7,188,180 B2; 6,502,135 B2

4

FURTHER ORDERED that a copy of this Decision be entered into the file
of each of Case IPR02014-00401, Case IPR2014-00405, and Case IPR2014-
00558.

PETITIONER:
W. Karl Renner
axf@fr.com

Kevin E. Greene
greene@fr.com

PATENT OWNER:

Joseph E. Palys
josephpalys@paulhastings.com

Jason Stach
jason.stach@finnegan.com

Naveen Modi
naveenmodi@paulhastings.com