Microsoft Corporationv.VirnetX Inc.

Patent Trial and Appeal Board

Oct 30, 2014

10714849 (P.T.A.B. Oct. 30, 2014)

Trials@uspto.gov Paper No. 12
571.272.7822 Filed: October 30, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSOFT CORP.,
Petitioner,

v.

VIRNETX INC.,
Patent Owner.
____________

Case IPR2014-00614
Patent 7,418,504 B2
1

____________

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

EASTHOM, Administrative Patent Judge.

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

1
Case IPR2014-00613 has been consolidated with the instant proceeding.
IPR2014-00612, IPR2014-00613, and IPR2014-00614
Patent 7,418,504 B2

2

I. INTRODUCTION
Petitioner’s Rehearing Request seeks a modification of the Board’s
determination “with regard to the anticipation of claims 32 and 56 by
Provino, because the Board . . . misapprehended or overlooked Petitioner’s
inclusion of these claims in the proposed grounds of unpatentability.” Paper
11, 2 (“Req. Reh’g”). As relief, Petitioner “requests that the Board amend
the [I]nstitution [D]ecision to include review of claims 32 and 56 based on
anticipation by Provino.” Req. Reh’g 2.
“When rehearing a decision on petition, a panel will review the
decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).
II. DISCUSSION
The Rehearing Request demonstrates an abuse of discretion, because
we overlooked Petitioner’s showing of anticipation of claims 32 and 56 by
Provino. On this record, Petitioner showed a reasonable likelihood of
prevailing on the ground that Provino anticipates claims 32 and 56. See
IPR2014-00613, Paper 2, 47 (“’613 IPR, Pet.”); Req. Reh’g 2–5. As
Petitioner shows in its Rehearing Request, the failure to list claims 32 and 56
as part of the review based on anticipation by Provino amounts to “an
inadvertent transcription error, rather than a deliberate omission.” See Req.
Reh’g 3. The Institution Decision states that “[a]s an alternative to
anticipation, Petitioner asserts that claims 29–32 and 53–56 are unpatentable
under 35 U.S.C. § 103(a) over Provino and Kosiur. ’613 IPR, Pet. 50–53.”
Paper 9, 25–26 (emphasis added).
2

2
Based on this alternative obviousness showing, we instituted trial on the
ground that the combination of Provino and Kosiur renders claims 32 and 56
obvious.
IPR2014-00612, IPR2014-00613, and IPR2014-00614
Patent 7,418,504 B2

3

III. CONCLUSION
Based on the foregoing discussion, we grant Petitioner’s requested
relief and modify the Institution Decision to reflect trial institution on the
additional ground that Provino anticipates claims 32 and 56.
IV. ORDER
For the reasons given, it is
ORDERED that the Petitioner’s Rehearing Request is granted; and
FURTHER ORDERED that the Institution Decision is modified
accordingly to reflect that trial hereby is instituted retroactively as of the
date of the Institution Decision, in accordance with the existing Scheduling
Order, on the alternative ground that Provino anticipates claims 32 and 56.

IPR2014-00612, IPR2014-00613, and IPR2014-00614
Patent 7,418,504 B2

4

For PETITIONER:
W. Karl Renner
Kevin E. Greene
FISH & RICHARDSON P.C.
axf@fr.com
IPR38868-0007IP1@fr.com

For PATENT OWNER:
Joseph E. Palys
Naveen Modi
PAUL HASTINGS LLP
josephpalys@paulhastings.com
naveenmodi@paulhastings.com

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