VIRNETX INC. (OWNER) et al.

Patent Trials and Appeals Board

Jan 10, 2022

2021001315 (P.T.A.B. Jan. 10, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/001,682 07/11/2011 6,502,135 077580-0132 1074 137313 7590 01/10/2022 PAUL HASTINGS LLP 2050 M. Street NW Washington, DC 20036 EXAMINER PEIKARI, BEHZAD ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 01/10/2022 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) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE OFFICE OF THE UNDERSECRETARY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE ____________ APPLE INC., Requester v. Patent of VIRNETX INC., Patent Owner and Appellant ____________ Appeal 2021-001315 Reexamination Control 95/001,682 Patent 6,502,135 B1 Technology Center 3900 ____________ Before ANDREW HIRSHFELD, Commissioner for Patents, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. ORDER Appeal 2021-001315 Reexamination Control 95/001,682 Patent 6,502,135 2 Patent Owner, VirnetX Inc. (“VirnetX”), filed a Request for Rehearing (“Request”) in the above-captioned case. See Reexamination Control No. 95/001,682, Patent Owner Request, dated June 14, 2021. In the Request, “VirnetX respectfully submits that whatever remedy is provided by the Supreme Court [in United States v. Arthrex, Nos. 19-1434, 19-1452, 19-1458] should be provided in the present reexamination.” Id. at 6. After the Supreme Court issued its decision in Arthrex, the Patent Trial and Appeal Board (“Board”) referred VirnetX’s request to Mr. Hirshfeld, Commissioner for Patents, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. It is ORDERED that the Request is denied; and FURTHER ORDERED that the Board’s Decision on Appeal in this case is the final decision of the agency. Appeal 2021-001315 Reexamination Control 95/001,682 Patent 6,502,135 3 For Patent Owner: PAUL HASTINGS LLP 2050 M STREET NW WASHINGTON, DC 20036 For Third Party Requester: HAYNES AND BOONE, LLP IP SECTION 2323 VICTORY AVENUE, SUITE 700 DALLAS, TX 75219