Microsoft Corporationv.VirnetX Inc.

Patent Trials and Appeals Board

Oct 3, 2014

11839987 - (R) (P.T.A.B. Oct. 3, 2014)

Trials@uspto.gov Paper 24
571-272-7822 Date: October 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSOFT CORP. and APPLE INC.,
Petitioner,

v.

VIRNETX INC.,
Patent Owner.
____________

Case IPR2014-00404
1

Patent 7,987,274 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
Case IPR2014-00484 has been joined to Case IPR2014-00404.
IPR2014-00404
Patent 7,987,274 B2

2

I. BACKGROUND
VirnetX, Inc. (“Patent Owner”), in its Request for Rehearing (“Req.” or
“Request”), seeks reversal of the Board’s Decision (“Decision”) to institute an
inter partes review of claims 1–5, 7, 8, 10, 12, 15, and 17 of U.S. Patent 7,987,274
B2 (“the ’274 Patent,” Ex. 1001) and to join IPR2014-00484 with the instant
proceeding. See Paper 22, 1 (“Req. Reh’g.”). 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.

II. DISCUSSION
Patent Owner has not shown an abuse of discretion or an overlooked
material point. Patent Owner argues that Apple Inc. (“Petitioner”) “relies on an
expert declaration that makes no mention of Kiuchi or the ’274 patent.” Req.
Reh’g 4–5. However, Petitioner proposes grounds of unpatentability for claims 1–
4, 7, 8, 10, 12, 15, and 17 as anticipated by Kiuchi and includes claim charts
mapping specific citations of Kiuchi to claim limitations recited in the ’274 patent.
See, e.g., ’484 IPR Pet. 17–31. Petitioner provides similar arguments with respect
to Kiuchi in combination with other references. See, e.g., ’484 IPR Pet. 31–39.
Patent Owner does not explain persuasively how we overlooked a point in ’484
IPR Petition that would render institution and joinder deficient.
IPR2014-00404
Patent 7,987,274 B2

3

Patent Owner also argues that “the flaws in Apple’s petition render it
incapable of providing the explanation and particularity required by 35 U.S.C.
§§ 312(a)(3)-(4) and 37 C.F.R. §§ 42.104(b)(4)-(5).” Req. Reh’g 5. Specifically,
Patent Owner argues that “Apple at least fails to explain why Kiuchi’s
‘REQUEST’ message allegedly discloses the ‘access request message’ of claim 1”
and that “none of these issues was addressed in the Board’s Decision instituting
Apple’s petition.” Req. Reh’g. 7–8. Contrary to Patent Owner’s contention, both
Microsoft (’404 IPR) and Apple (’484 IPR) argue that the Kiuchi discloses an
“access request message.” See, e.g., ’404 IPR Pet. 36; ’484 IPR Pet. 27–28.
Patent Owner does not point out any specific differences in these contentions.
As we stated in the Decision, with respect to Kiuchi, “[w]e incorporate our
previous analysis regarding the . . . asserted grounds of unpatentability.” ’484 IPR
Decision 6. In the Decision in the ’404 IPR (incorporated into the Decision of the
’484 IPR), we explained the basis of our conclusion to institute inter partes review
with respect to the “access request message” claim limitation. ’404 IPR Pet. 5–6,
13–15. Thus, we disagree with Patent Owner’s contention that the issue of the
“access request message of claim 1” was supposedly not “addressed in the Board’s
Decision.”
Patent Owner argues that our incorporation of the ’404 IPR Decision in the
’484 IPR Decision is improper because “Apple’s contentions regarding Kiuchi in
IPR2014-00484 are in fact different than the contentions made by Microsoft in
IPR2014-00404.” Req. Reh’g 8–9. Patent Owner does not point out specific
material differences between the contentions made in the ’404 IPR with respect to
contentions made in the ’484 IPR that would preclude the incorporation of the ’404
IPR Decision with that of the ’484 IPR.
IPR2014-00404
Patent 7,987,274 B2

4

Patent Owner argues that joinder of the ’484 IPR with the ’404 IPR is
improper because Patent Owner would need to “address two different expert
declarations [which would] requir[e] significant additional analysis and expense by
[Patent Owner].” Req. Reh’g 11-12. Patent Owner does not point out how
“significant” the additional analysis or expense would be to analyze an expert
declaration or how such “significance” would, in fact, be prohibitive.

III. CONCLUSION
Based on the foregoing discussion, Patent Owner’s requested relief for a
reversal of the Decision is denied because Patent Owner 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.

IPR2014-00404
Patent 7,987,274 B2

5

PETITIONER:
W. Karl Renner
Kevin E. Greene
FISH & RICHARDSON P.C.
axf@fr.com
greene@fr.com

Jeffrey Kushan
Joseph Micallef
SIDLEY AUSTIN LLP
jkushan@sidley.com
jmicallef@sidley.com

PATENT OWNER:

Joseph E. Palys
Naveen Modi
PAUL HASTINGS LLP
josephpalys@paulhastings.com
naveenmodi@paulhastings.com

Jason E. Stach
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
jason.stach@finnegan.com