Ex Parte 6839759 et al

Patent Trial and Appeal Board

Feb 11, 2016

95001746 (P.T.A.B. Feb. 11, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,746 09/07/2011 6839759 43614.98 5175
22852 7590 06/17/2016
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/17/2016 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 PATENT TRIAL AND APPEALS BOARD
____________________

CISCO SYSTEMS, INC.
Requester

v.

VIRNETX, INC.
Owner
____________________

Appeal 2015-007843
Reexamination Control No. 95/001,746
Patent No. 6,839,759 B2
Technology Center 3900
____________________

Before DENISE M. POTHIER, Administrative Patent Judge.

Order Remanding Inter Partes Reexamination
Under 37 C.F.R. § 41.77(d) to the Examiner

Appeal 2015-007843
Control No. 95/001,746
Patent 6,839,759

2
A. FINDINGS
1. On February 11, 2016, the Patent Trial and Appeal Board issued an
Opinion (“Opinion” and “Op.”) affirming the Examiner’s decision to reject
claims 1, 4, 5, 8–10, 12–14, 16, 18, 20, 23–25, and 27–29 and reversing the
Examiner’ decision to confirm claims 3, 6, 7, 11, 15, 19, 21, 22, 26, and 30 of
Patent Owner VirnetX, Inc.’s (“Patent Owner”) Patent 6,839,759 (“the
’759 patent”). Op. 3.
2. The reversal of the Examiner’s decision to confirm claims 3, 6, 7, 11, 15,
19, 21, 22, 26, and 30 resulted in new grounds of rejection of these claim as well as
independent claims 1 and 16. Op. 3, 58.
3. In the Decision, Patent Owner was given two options set forth in
37 C.F.R. § 41.77(b) with respect to the new grounds of rejection: (1) to file a
response requesting to reopen prosecution before the Examiner or (2) to request
that the proceeding be reheard before the Board upon the same record.
4. On March 11, 2016, Patent Owner filed a response requesting that
prosecution be reopened before the Examiner. See Patent Owner’s “REQUEST
TO REOPEN PROSECUTION” (“PO Request”).1
5. On April 11, 2016, Requester filed comments to PO Response. See
Requester’s “COMMENTS BY THIRD PARTY REQUESTER PURSUANT TO
37 C.F.R. §41.77(C)” (“3PR Comments”).

1 Patent Owner refers to the Manual of Patent Examining Procedure (MPEP)
§ 2682(II)(A). PO Request 2. However, Section (II)(A) addresses requesting
rehearing of a decision, and Section (II)(B) discusses requesting reopening
prosecution. MPEP 2682(II)(A)–(B), 9th ed. (Oct. 2015). We presume that the
reference to section (II)(A) was a typographical error and that Patent Owner is
requesting to reopen prosecution as stated in the Request. PO Request 1–2.
Appeal 2015-007843
Control No. 95/001,746
Patent 6,839,759

3
B. DISCUSSION
Pursuant to 37 C.F.R. § 41.77(d), after any patent owner response
properly filed under § 41.77(b)(1) and any requester comments properly
filed under § 41. 77(c), the proceeding is to be remanded to the Examiner. In its
response, Patent Owner submits additional evidence in the form of a Declaration
from Fabian Monrose, Ph.D and Exhibits A-2, A-35, A-42, A-48, and A-86–A-91
listed in Appendix. PO Request 2. We have reviewed Patent Owner’s Request for
compliance with 37 C.F.R. § 41.77(b)(1). Notably, Exhibits A–87 listed in the
Appendix of the Patent Owner’s Request could not be located in the record.
Any patent owner response arising under 37 C.F.R. § 41.77(b)(1) “must be
either an amendment of the claims so rejected or new evidence relating to the
claims so rejected, or both.” Patent Owner’s Request with respect to claims 1, 3, 6,
7, 11, 15, 16, 19, 21, 22, 26, and 30 is considered compliant with 37 C.F.R.
§ 41.77(b)(1), as the new evidence relates to the claims so rejected. Accordingly,
the new evidence is entered for the Examiner’s consideration.
The proceeding will be remanded to the Examiner for consideration of
Patent Owner’s Request and Requester’s Comments in connection with claims 1,
3, 6, 7, 11, 15, 16, 19, 21, 22, 26, and 30. As set forth in 37 C.F.R. § 41.77(d),
after due consideration of those submissions, the Examiner is to issue a
determination as to whether the Board's new grounds of rejection as designated in
the Opinion have been overcome. Following the Examiner's determination, the
proceeding will be returned to the Board together with any comments and reply
submitted by Patent Owner or Requester under 37 C.F.R. § 41.77(e) for
reconsideration and issuance of a new decision by the Board as provided by
37 C.F.R. § 41.77(f).
Appeal 2015-007843
Control No. 95/001,746
Patent 6,839,759

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C. ORDER
It is
ORDERED that Patent Owner's Request requesting reopening of
prosecution before the Examiner is granted and the proceeding is hereby
remanded to the Examiner to consider claims 1, 3, 6, 7, 11, 15, 16, 19, 21, 22, 26,
and 30 in view of the Patent Owner’s Request, Requester’s Comments, and the
newly-submitted evidence pertaining to the new grounds of rejection presented in
the February 11, 2016 Opinion.

GRANTED

FOR PATENT OWNER:

Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP
901 New York Ave. NW
Washington, DC 20001-4413

FOR THIRD-PARTY REQUESTER:

David L. McCombs
Haynes and Boone, LLP
IP Section
2323 Victory Ave.
Suite 700
Dallas, TX 75219