Académique Documents
Professionnel Documents
Culture Documents
2015-1934, -1935
VIRNETX INC.,
Appellant,
v.
APPLE INC.,
Appellee.
JANUARY 9, 2017
Case: 15-1934 Document: 72 Page: 2 Filed: 01/09/2017
CERTIFICATE OF INTEREST
Pursuant to Federal Circuit Rule 47.4, counsel of record for Patent Owner-
Appellant VirnetX Inc. certify as follows:
VirnetX Inc.
VirnetX Inc.
3. All parent corporations and any publicly held companies that own 10
percent or more of the stock of the party or amicus curiae represented
by us are:
4. The names of all law firms and the partners or associates that
appeared for the parties represented by us in the trial court, or are
expected to appear in this Court, are:
TABLE OF CONTENTS
INTRODUCTION .....................................................................................................2
CONCLUSION ........................................................................................................15
i
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TABLE OF AUTHORITIES
Page(s)
Cases
A.C. Aukerman Co. v. R.L. Chaides Constr. Co.,
960 F.2d 1020 (Fed. Cir. 1992) ..........................................................................14
Brand v. Miller,
487 F.3d 862 (Fed. Cir. 2007) .....................................................................passim
Cardiac Pacemakers, Inc. v. St. Jude Med., Inc.,
576 F.3d 1348 (Fed. Cir. 2009) ..........................................................................14
Centricut, LLC v. Esab Group, Inc.,
390 F.3d 1361 (Fed. Cir. 2004) ...................................................................passim
Dynamic Drinkware, LLC v. Natl Graphics, Inc.,
800 F.3d 1375 (Fed. Cir. 2015) ..........................................................................12
ii
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TABLE OF AUTHORITIES
(Continued)
Page(s)
Statutes
35 U.S.C. 316(e) .............................................................................................12, 14
Other Authorities
DirecTV, LLC v. Qurio Holdings, Inc.,
IPR2015-02007, Paper No. 6 (P.T.A.B. Apr. 4, 2016).......................................15
iii
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STATEMENT OF COUNSEL
In the inter partes review (IPR) proceedings below, involving complex
secure network communication technology, the Patent Trial and Appeal Board
claims and asserted references when instituting the proceedings. After that
testimony was exposed as unreliable, the Board disclaimed reliance on it in its final
decisions. The Board nevertheless invalidated the challenged claims despite the
patent challenger bore the burden of proof. A divided panel of this Court affirmed.
contrary to the following precedents of this Court: Brand v. Miller, 487 F.3d 862
(Fed. Cir. 2007), and Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361 (Fed. Cir.
technology and multiple references, the Board may properly conclude that the
absence of any supporting expert testimony as to how one of ordinary skill in the
/s/Naveen Modi
Naveen Modi
Counsel for Appellant VirnetX Inc.
1
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INTRODUCTION
This Court has stressed, time and again, that, as a general rule, expert
390 F.3d at 1370 (citation omitted). In the proceedings below, patent challenger
Apple Inc. (Apple) submitted over 400 pages of detailed expert testimony about
the multiple asserted references to support its invalidity contentions. The Board
relied extensively on this testimony when instituting the IPR proceedings. After
patent holder VirnetX Inc. (VirnetX) demonstrated that Apples expert was
unreliable, the Board switched course in its final decisions, disclaiming any need
patentability. The Board then made detailed findings as to what these references
taught, implied, or suggested, and how one of ordinary skill in the art would have
understood the references and the patent terms. In doing so, the Board apparently
disclaimed. The Board, applying a higher standard of proof than during institution,
A divided panel of this Court affirmed. The panel majority did not contest
that the technology was complex. The majority nevertheless declared that,
irrespective of the technologys complexity, the Board can replace the requisite
2
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expert testimony with its own analysis of the prior art and challenged patents,
The rule adopted by the panel majority is contrary to this Courts precedent
that, in making invalidity findings on the basis of asserted prior art, the Board may
not substitute[] its own opinion for evidence of the knowledge of one of ordinary
skill in the art. Brand, 487 F.3d 870. And the panels decision renders a nullity
technology. As Judge OMalley pointed out in dissent, the Court found expert
testimony unnecessary only in the exceptional case in which the references and
proceedings and impede this Courts ability to meaningfully review the Boards
decisions. As Judge OMalley warned, the panels misguided ruling will spur the
reliance on the only supporting expert testimony yet reach[] the exact same
expertise. Dis. Op. 4 (citations omitted). This Court, en banc, should answer the
question raised by this petition and correct the panels erroneous decision.
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travelers or local networks separated by public networks. The patent at issue, U.S.
Patent No. 8,504,697 (the 697 patent), discloses, inter alia, a novel method of
internet protocol address based on a domain name through the use of a proxy
certain claims of the 697 patent.1 Op. 2. In support of its invalidity contentions,
Apple submitted extensive expert declarationstotaling over 400 pages. See Dis.
Op. 2. Indeed, Apples IPR petitions relied exclusively on this expert testimony to
present and describe the asserted references, not citing even once the references
themselves.
The Board instituted both IPR proceedings. Op. 2. The Boards institution
decisions relied on the declarations of Apples expert for nearly every aspect of the
1
In the first proceeding (IPR2014-00237), Apple challenged these claims over two
references: U.S. Patent No. 6,496,867 (Beser) and RFC 2401 (S. Kent and R.
Atkinson, Security Architecture for the Internet Protocol, Request for Comments:
2401, BBN Corp., Nov. 1998). In the second proceeding (IPR2014-00238), Apple
asserted two different references: U.S. Patent No. 5,898,830 (Wesinger) and
RFC 2543 (H. Schulzrinne, et al., SIP: Session Initiation Protocol, Network
Working Group, Request for Comments: 2543, Bell Labs, Mar. 1999).
4
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anticipation and obviousness analysis. Altogether, the Board cited the testimony of
During trial, VirnetX presented evidence that Apples expert lacked the
requisite qualifications and was biased. The parties had agreed that, given the
networking and computer security. See Appx279; Appx5917 Apples expert had
only a bachelors degree in information science and technology, and his experience
publicly touted that his role was patent busting, Appx5914, and that he ha[s]
never concluded that claims were not obvious or not anticipated, Appx6118-6119,
expert as unreliable, VirnetX argued that his testimony was not entitled to any
testimony in its final decisions. Appx55; Appx92. Having done so, the Board
numerous findings regarding how one skilled in the art would have read the
5
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Dis. Op. 3. The Board then found all the challenged claims to be either anticipated
On appeal, a divided panel affirmed. 2 The majority did not contest that the
base its factual findings on its expertise, rather than on evidence in the record.
Op. 7-8 (quoting Brand, 487 F.3d at 869). The panel majority declared,
nevertheless, that even if the record contains expert testimony, the law does not
require the PTAB to rely upon it. Op. 8. The majority then heldin direct
contravention of Brandthat the Board can substitute its own analysis of the
technology. Dis. Op. 1-2 (citing cases). This Court relaxed this requirement only
in the exceptional case in which the references and the invention are easily
understandable. Id. at 2 (quoting Belden Inc. v. Berk-Tek, LLC, 805 F.3d 1064,
1079 (Fed. Cir. 2015)) (selected internal quotation marks and citation omitted).
2
The panel affirmed the Board on the grounds stated in IPR2014-00238, without
addressing the grounds for the determination in IPR2014-00237.
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ButJudge OMalley pointed outthis was manifestly not such a case: the
multiple pieces of prior art. Dis. Op. 2. Moreover, Apple itself submitted over
Judge OMalley zeroed in on the majority opinions direct conflict with this
Courts decision in Brand. Brand instructed that while the Boards expertise
plays a role in interpreting record evidence, it may not act as a substitute for such
evidence. Dis. Op. 3 (quoting Brand, 487 F.3d at 869). Here, by contrast,
despite disclaiming any reliance on the only supporting expert testimony, the
Board made findings as to what the prior art implies, suggests, and teaches towards
would have been understood by one of ordinary skill in the art. Dis. Op. 3-4
Brand the detailed nature of the findings that the Board found necessary to make
substituted its own expertise for record evidence, with the panel majoritys
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First, the majoritys holding is contrary to the rule set forth in Brand that,
base its factual findings on its expertise, rather than on evidence in the record.
487 F.3d at 869. In Brand, in the context of an interference proceeding, the Board
that the invention was derivative; as a result, there was no testimony from one
skilled in the art that the drawings communicated an enabling invention to a skilled
recipient. Id. at 870. The Board sought to fill that evidentiary gap by its own
detailed inferences as to how one skilled in the art would have recognized
how certain elements depicted in the prior art could have been arranged to perform
a claimed method. Id. This Court reversed, holding that the Board erred when it
substituted its own expertise for the record evidence that [the patent challenger]
was obligated to provide. Brand, 487 F.3d at 870; see also Dis. Op. 3.
The panel openly stated that it disagree[s] with the rule established in
Brand. Op. 8. In the majoritys view, as long as the Board reviews the complete
8
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administrative record and explains its findings, it matters not that its findings
regarding the prior art are based solely on the Boards own expertise. Id.
(internal quotation marks and citation omitted). Under the panels opinionand
contrary to what this Court has said beforethe Board is free to substitute[] its
own analysis of the [prior art] references for the experts. Id. (internal quotation
Brand. See Dis. Op. 3-4. Here, as in Brand, despite disclaiming any reliance on
the only supporting expert testimony, the Board made findings as to what the prior
art implies, suggests, and teaches towards (or away from), in addition to how
ordinary skill in the art. Id. (citing examples). This is exactly the type of
freelancing that this Court declared impermissible in Brand. 787 F.3d at 869.
And, [a]s in Brand, the detailed nature of the findings that the Board found
to have simply substituted its own expertise for record evidence. Dis. Op. 4
(quoting Brand, 487 F.3d at 870). Whereas a party could test an experts
the Boards own assessment of the patent claims and the references. The panels
opinion frees the Board from the constraints that this Court properly imposed in
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Brand and will create confusion as to what is the permissible Board fact-finding in
contested proceedings. This Court, sitting en banc, should resolve this conflict.
Second, the panels decision cannot be squared with this Courts admonition
Wyers v. Master Lock Co., 616 F.3d 1231, 1240 n.5 (Fed. Cir. 2010) (quoting
Centricut, 390 F.3d at 1369); see also Proveris Sci. Corp. v. Innovasystems, Inc.,
536 F.3d 1256, 1267 (Fed. Cir. 2008) (where the subject matter is sufficiently
contrast, that even where the technology is undisputedly complex, the Board may
rely upon that evidencebut can also disregard it. Op. 7-8 (citation omitted).
The panels decision effectively renders a nullity a vast swath of this Courts
complex technology. See Dis. Op. 1-2 (citing cases). As Judge OMalley noted,
the Court found expert testimony unnecessary only in the exceptional case in
which the references and the invention are easily understandable without expert
assistance. Dis. Op. 2 (quoting Belden, 805 F.3d at 1079) (additional internal
10
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OMalley observed, the claims at issue cover complex technology and the
prior art. Dis. Op. 2. The requisite level of skill was exceedingly high.
Apple itself submitted over four hundred pages of expert testimony in support
necessary. Dis. Op. 2. 3 In sum, [t]his is not one of those rare cases where the
invention is so simple that expert testimony is not required. Aspex Eyewear, Inc.
v. Concepts in Optics, Inc., 111 F. Appx 582, 588 (Fed. Cir. 2004).
overstated. The panel did not contest that the technology involved is undisputedly
complex. Op. 7 (internal quotation marks and citation omitted). Nor did the
majority question that the interpretation of the asserted references required a highly
specialized level of skill. The panel nevertheless held that the Board can disregard
any and all expert evidence as to the meaning of these references and their bearing
on the challenged patent claims. If the Board is at liberty to dispense with expert
3
See also Alexsam, Inc. v. IDT Corp., 715 F.3d 1336, 1348 (Fed. Cir. 2013) (any
claim that the technology is simple is belied by the fact that both sides believed it
necessary to introduce extensive expert testimony regarding the content of the prior
art).
11
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evidence in a case like this, this Courts case-law about the importance of expert
The panels decision also upends the requirement that it is the patent
35 U.S.C. 316(e); Dynamic Drinkware, LLC v. Natl Graphics, Inc., 800 F.3d
1375, 1378 (Fed. Cir. 2015). If, as the majority opined, the Board itself concludes
the asserted prior art, Op. 7 (internal quotation marks and citation omitted), the
patent challenger cannot conceivably meet his burden of proving that the prior art
This is what this Court held in Centricut, where the defendant offer[ed] expert
testimony negating the plaintiffs contentions, and the plaintiff rel[ied] only on
testimony from those who are admittedly not expert in the field. 390 F.3d at
1370. The Court explained that a party that presents complex subject matter
without inputs from experts qualified on the relevant points in issue cannot carry
its burden of proof. Id. As in Centricut, the only possible conclusion here is that
there was inadequate competent evidence on the record to support the Boards
judgments. Dis. Op. 4. The panels decision eviscerates this requirement, and
12
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precedent, but will also negatively affect the transparency of the Boards decisions
and this Courts ability to meaningfully review them. The majoritys carte-blanche
to the Board to dispense with the requirement of sufficient (or any) expert
expert testimony is challenged, to simply disclaim that testimony and make their
own findings as to the prior art, even if they previously relied on the same
only exacerbate the trend towards a haze of so-called expertise that this court and
the Supreme Court have admonished against. Dis. Op. 4 (quoting Brand, 487
F.3d at 869; Baltimore & Ohio R.R v. Aberdeen & Rockfish R.R., 393 U.S. 87, 92
This case illustrates the dangers of the majoritys misguided approach. The
13
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prevail on its anticipation and obviousness grounds with respect to at least one
claim. See supra at 4. Yet, when that evidence was challenged as unreliable, the
assistance was necessary to understand the patent claims and the references. As
Judge OMalley pointed out, that is simply inconceivable: the technology at issue
is complex, there are multiple prior art references that must be combined to support
the Boards invalidity conclusions, and there is substantial dispute regarding what
one of skill in the artat the relevant time framewould have gleaned from those
prior art references. Dis. Op. 3. Indeed, as Judge OMalley observed, [i]t is
telling that the Boards conclusions precisely follow the conclusions laid out in the
Although the panel designated its decision as non-precedential, that does not
alleviate the need for en banc review. The non-precedential designation is not an
inflexible bar to en banc consideration. See, e.g., Cardiac Pacemakers, Inc. v. St.
Jude Med., Inc., 576 F.3d 1348 (Fed. Cir. 2009); A.C. Aukerman Co. v. R.L.
Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992). The panel majority purports
disagreement among Members of this Court as to what this and other precedents
14
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require. See Op. 7-9; Dis. Op. 2-4. The Board, moreover, looks to this Courts
non-precedential decisions for guidance, and shapes its conduct accordingly. See,
e.g., DirecTV, LLC v. Qurio Holdings, Inc., IPR2015-02007, Paper No. 6 at 30-31
(P.T.A.B. Apr. 4, 2016) (citing Purdue Pharma L.P. v. Depomed, Inc., 643
F. Appx 960 (Fed. Cir. 2016) (non-precedential), for the appropriate standard in
decision, other Board panels are likely to follow suit, to the detriment of
expert evidence will severely hamstring this Courts ability to review these
This case presents a perfect opportunity for the full Court to address this
issue of exceptional importance. The issue is cleanly presented, since the Board
technology is undisputedly complex, and the majority and the dissent laid out at
length the dueling interpretations of the Courts precedents. This Court will not
gain anything by waiting for another case, and meanwhile the majoritys erroneous
CONCLUSION
This Court should grant en banc review.
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/s/Naveen Modi
Naveen Modi
Joseph E. Palys
Igor V. Timofeyev
PAUL HASTINGS LLP
875 15th Street, N.W.
Washington, D.C. 20005
(202) 551-1700
16
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ADDENDUM
Case: 15-1934 Document: 72 Page: 23 Filed: 01/09/2017
VI R N E T X I N C .,
Appella n t
v.
AP P L E I N C .,
Appellee
______________________
2015-1934, 2015-1935
______________________
Appea ls fr om t h e Un it ed St a t es P a t en t a n d Tr a de-
m a r k Office, P a t en t Tr ia l a n d Appea l Boa r d in Nos.
IP R2014-00237, IP R2014-00238.
______________________
______________________
VI R N E T X I N C .,
Appella n t
v.
AP P L E I N C .,
Appellee
______________________
2015-1934, 2015-1935
______________________
Appea ls fr om t h e Un it ed St a t es P a t en t a n d Tr a de-
m a r k Office, P a t en t Tr ia l a n d Appea l Boa r d in Nos.
IP R2014-00237, IP R2014-00238.
______________________
CERTIFICATE OF SERVICE
I, Naveen Modi, hereby certify that on January 9, 2017, the foregoing
Appellant VirnetX Inc.s Petition for Rehearing En Banc was filed using the
Courts CM/ECF system and served on the parties counsel of record via ECF.
be filed with the Court within the time provided in the Courts rules.