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It c Termination Re but Al

It c Termination Re but Al

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McKool 455468v1

UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, D.C. 20436
In the Matter of

CERTAIN DEVICES WITH SECURE
COMMUNICATION CAPABILITIES,
COMPONENTS THEREOF, AND PRODUCTS
CONTAINING THE SAME

Inv. No. 337-TA-818



COMPLAINANT VIRNETX, INC.’S PETITION FOR REVIEW OF
ORDER NO. 15 AND APPEAL OF ORDER NO. 14



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TABLE OF CONTENTS
I. INTRODUCTION...............................................................................................................1
II. STATEMENT OF ISSUES FOR REVIEW........................................................................2
III. FACTUAL BACKGROUND AND PROCEDURAL POSTURE......................................3
A. VirnetX’s Good Faith Belief Regarding Its Ownership of
the ’181 patent..........................................................................................................3
B. Ownership of the ’181 Patent Before the Initiation of the
Investigation.............................................................................................................4
C. The Cisco Litigation. ...............................................................................................6
D. The Present Investigation.........................................................................................7
E. The March 2012 Cisco Order. .................................................................................7
F. VirnetX’s Motion to Amend. ...................................................................................8
G. Apple’s Motion to Terminate...................................................................................8
H. Order No. 9. .............................................................................................................9
I. VirnetX’s Renewed Motion to Amend. ...................................................................9
J. The ALJ’s Denial of VirnetX’s Renewed Motion to Add
SAIC (Order No. 14) and Termination of the Investigation
(Order No. 15)........................................................................................................10
IV. LEGAL STANDARD OF REVIEW.................................................................................11
V. ARGUMENTS AND AUTHORITIES..............................................................................12
A. The ALJ Clearly Erred and Abused His Discretion by
Finding that VirnetX Lacked Good Cause to Amend the
Complaint and Notice of Investigation to Add SAIC as a
Party. ......................................................................................................................13
1. VirnetX had good cause to add SAIC as an
indispensible party. ....................................................................................13
2. The ALJ’s sole basis for finding that VirnetX
lacked good cause was the Complaint’s supposed
non-compliance with Rule 210.12(a)(9)(ii). ..............................................15
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B. The ALJ Clearly Erred As a Matter of Fact in Finding that
VirnetX Did Not Comply with Rule 210.12(a)(9)(ii) By
Not Identifying Ownership of the ’181 Patent or Attaching
a Certified Copy of the Assignment Agreement for the ’181
Patent to the Complaint..........................................................................................16
C. The ALJ Clearly Erred As a Matter of Law in Concluding
that Rule 210.12(a)(9)(ii) Required VirnetX to Attach
Documents to the Complaint Relating to the Assignment of
the ’181 Patent In Addition To the Certified Copy of the
Assignment Agreement Itself. ...............................................................................18
VI. CONCLUSION..................................................................................................................20
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In accordance with Commission Rules 210.43 and 210.24, 19 C.F.R. §§ 210.43 and 24,
Complainant VirnetX, Inc. (“VirnetX”) seeks Commission review of Order Nos. 14 and 15.
VirnetX petitions for review of Order No. 15, issued July 18, 2012, an Initial Determination that
granted Respondent Apple Inc.’s (“Apple”) Motion to Terminate the Investigation Based on
VirnetX’s Lack of Standing, (Mot. 818-11), and terminated the investigation due to VirnetX’s
lack of standing because of the absence of an indispensable party. VirnetX further appeals Order
No. 14, also issued July 18, 2012, which denied VirnetX’s renewed motion for leave to amend
for the voluntary joinder of Scientific Applications International Corporation (“SAIC”). (Mot.
818-18) VirnetX respectfully submits that Order Nos. 14 and 15 should be reviewed and
reversed due to clear error of law, clear error of fact, and an abuse of discretion.
I. INTRODUCTION
On November 4, 2011, VirnetX filed the Complaint in this investigation asserting that
Apple infringes U.S. Patent No. 8,051,181 (“’181 patent”). The Complaint was supplemented on
November 22, 2012, with, among other things, a certified copy of the assignment of the ’181
patent. On December 1, 2011, the investigation was instituted based upon the allegations of the
Complaint, as supplemented. (Document ID 465667, Institution of Investigation)
In March 2012, Judge Davis of the Eastern District of Texas found that SAIC was a
necessary party for maintaining an action with respect to the patents related to the ’181 patent in
an action in that court between VirnetX, Apple, and other parties (the “Cisco Litigation”). Judge
Davis held that “VirnetX’s belief that it currently holds all substantial rights [in the patent] was
reasonable” and that the decision was a close call. (Mot. 818-18, Ex.6, VirnetX Inc. v. Cisco
Systems, Inc. et al., Civ. No. 6:10-cv-00417, Slip Op. at 11 (E.D. Tex. March 22, 2012) (“March
2012 Cisco Order”)) Nevertheless, Judge Davis ruled that SAIC should be joined to the action
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as a necessary, albeit nominal party, for prudential standing purposes. VirnetX thereafter
secured SAIC’s agreement to join the Cisco Litigation, and SAIC was joined in the Cisco
Litigation.
Because Judge Davis’s ruling occurred after institution of the instant investigation,
VirnetX also secured SAIC’s agreement to join this investigation as a co-complainant and sought
leave to amend the Compliant to include SAIC as a party. The ALJ erroneously denied
VirnetX’s repeated motions to do so.
II. STATEMENT OF ISSUES FOR REVIEW
VirnetX seeks review of the ALJ’s ruling in Order Nos. 14 and 15 that although SAIC
was an indispensable party to this investigation, VirnetX did not have good cause for leave to
add SAIC to cure the jurisdictional defect. (Order Nos. 14 and 15) VirnetX is not appealing the
ALJ’s determination that SAIC was an indispensible party. Rather, VirnetX seeks review and
reversal of the ALJ’s denial of VirnetX’s motion to amend the Complaint and Notice of
Investigation to join SAIC as a co-complainant and termination of the investigation.
VirnetX sought leave to amend to join SAIC, and SAIC agreed to join the investigation
voluntarily as a co-complainant. (Mot. 818-10) Rather than allowing such joinder, the ALJ
denied VirnetX’s motion to add SAIC. (Order No. 9) VirnetX filed a renewed motion for leave
to amend to join SAIC. (Mot. 818-18) Again, rather than allowing such joinder, the ALJ denied
VirnetX’s motion to add SAIC. (Order No. 14) The ALJ’s sole rationale in Order No. 14 for
deviating from the practice of joining an indispensible party was that VirnetX’s Complaint
allegedly did not comply with Rule 210.12(a)(9)(ii) (regarding required contents of a complaint)
inasmuch as the Complaint (1) failed to identify ownership of the ’181 patent, and (2) did not
attach certified copies of the ’181 patent’s assignment agreements. (Order No. 14 at 2) The
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ALJ’s conclusion is clear error because VirnetX did state the ownership of the ’181 patent in
good faith in the Complaint and, in fact, did attach a certified copy of the ’181 assignment
agreement with the Complaint.
As such, the ALJ committed the following errors that warrant review and reversal by the
Commission:
1. The ALJ clearly erred and abused his discretion by finding that VirnetX
lacked good cause to amend the Complaint and Notice of Investigation to
add SAIC as a party.
2. The ALJ clearly erred as a matter of fact in finding that VirnetX did not
comply with Rule 210.12(a)(9)(ii) by not identifying ownership of the
’181 patent or attaching a certified copy of the assignment agreement for
the ’181 patent to the Complaint.
3. The ALJ clearly erred as a matter of law in concluding that Rule
210.12(a)(9)(ii) required VirnetX to attach documents to the Complaint
relating to the assignment of the ’181 patent in addition to the certified
copy of the assignment agreement itself.
III. FACTUAL BACKGROUND AND PROCEDURAL POSTURE
VirnetX, as stated above, is not challenging the ruling in Order No. 15 that SAIC is an
indispensible party. Nonetheless, for completeness, VirnetX sets forth in this section the
procedural history of the issue of SAIC’s status as an assignor of the patent-in-suit, and now an
indispensible party.
A. VirnetX’s Good Faith Belief Regarding Its Ownership of the ’181 patent.
VirnetX believed in good faith that it was the owner of the ’181 patent when VirnetX
filed the Complaint in this investigation and continued to believe so until Judge Davis, in the
Cisco Litigation in the Eastern District of Texas, held that VirnetX did not hold all substantial
rights in what was deemed an “extremely close call.” (Mot. 818-18, Ex. 6, March 2012 Cisco
Order (“Given the extremely close call whether SAIC still retained an ownership interest in the
patents-in-suit, the Court finds that VirnetX’s decision not to include SAIC as a co-plaintiff was
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not in bad faith.”)) Following this ruling, Judge Davis allowed SAIC to be joined as a plaintiff in
the Cisco Litigation, and VirnetX accordingly sought leave in the instant investigation to
likewise join SAIC as a complainant. (Id. at 12-15) VirnetX’s motions to add SAIC as a
complainant in this investigation were erroneously denied for lack of good cause, as set forth
below.
A review of the history surrounding ownership of the ’181 patent confirms that VirnetX
held a good faith belief that it was the owner of the ’181 patent and that VirnetX, in fact, had
good cause to add SAIC as a party following Judge Davis’s ruling. The ALJ did not dispute that
VirnetX had such a good faith before Judge Davis’s ruling. (Order No. 14 at 2)
B. Ownership of the ’181 Patent Before the Initiation of the Investigation.
In 2007, VirnetX filed suit against Microsoft Corporation (“Microsoft”) in the U.S.
District Court, Eastern District of Texas (the “Microsoft Litigation”) before Judge Davis,
alleging that Microsoft infringed U.S. Patent Nos. 6,502,135 (“the ’135 patent”); 6,839,759 (“the
’759 patent”); and 7,188,180 (“the ’180 patent”).
1
In that case, Judge Davis analyzed the rights
between SAIC and VirnetX in 2008, and found that VirnetX did not own all substantial rights.
(Mot. 818-18, Ex. 3A, 2008 Microsoft Order)
In 2008, SAIC had the following rights: (i) a 35% equity interest of the recovery of the
Microsoft Litigation; (ii) reversionary rights in the patents; (iii) a security interest in the patents;
and (iv) a right to object to any proposed license, assignment, or settlement. In the 2008
Microsoft Order, Judge Davis delineated these rights and found that the combination of SAIC’s
economic rights with its control rights amounted to “an ownership interest rather than a bare
license with no substantial rights.” (Mot. 818-18, Ex. 3A at *18-19)

1
The ’181 patent shares a common ancestry with the ’135, ’180, and ’759 patents and a common
specification with the ’180 and ’759 patents. (Order No. 9 at 2 n.2.)
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Since the 2008 Microsoft Order, VirnetX has paid SAIC the Maximum Amount, which is
defined in ¶ 7.3 of the PLAA. (Ex. C (PLAA) ¶ 7.3; see Mot. 818-18, Ex. 3, Decl. of S. Mathur,
¶ 2) VirnetX believes that this payment significantly changes VirnetX’s and SAIC’s rights to the
patents-in-suit in the following ways:
Security Interest. Under ¶ 18 of the Security Agreement, VirnetX’s payment of the
Maximum Amount to SAIC terminated SAIC’s security interest, and SAIC’s rights to the
collateral reverted to VirnetX. (Ex. D (Security Agreement) ¶ 18)
Reversionary Rights. Paragraph 5 of the PLAA automatically grants the patents back to
SAIC



(Ex. C (PLAA)) Because VirnetX
has paid SAIC can never come to
pass. Because VirnetX has paid the Maximum Amount, it is no longer obligated to pay
(Ex. C (PLAA) ¶¶ 7.2, 7.3); therefore, can never come to pass.
And because VirnetX has paid the Maximum Amount, can never come to pass.
In sum, a reversionary grant to SAIC will never occur.
Other provisions remain unchanged.
Equity Interest. SAIC’s equity interest in litigation for infringement of the patent-in-suit
is unaffected by VirnetX’s payment of the Maximum Amount. (See Ex. C (PLAA) ¶ 7.3

2
is inapplicable here.
3
(Ex. F (Am. No. 2 to
PLAA) ¶ 9(a))
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see also Ex. E (Am. No. 1 to PLAA) ¶ 5(b)

Review Rights. In Amendment No. 2, SAIC’s right to object to any proposed license,
assignment, or settlement is unchanged. (See Ex. F (Am. No. 2 to PLAA) ¶ 8.)
C. The Cisco Litigation.
After the Microsoft Litigation, VirnetX paid SAIC the “Maximum Amount” under the
applicable agreements and has thereby terminated SAIC’s security interest and extinguished
SAIC’s reversionary rights. (Mot. 818-18, Ex. 6 n.1.) On August 11, 2010, VirnetX sued Apple
and other defendants in VirnetX Inc. v. Cisco Systems, Inc. et al., Civ. No. 6:10-cv-00417
(referred to as the “Cisco Litigation”), alleging infringement of the same patents asserted in the
Microsoft Litigation, the ’135, ’759, and ’180 patents. Because of the changes after the
Microsoft Litigation, SAIC’s rights had diminished. Thus, VirnetX had a good faith belief that
SAIC need not be a party in either proceeding, and VirnetX did not include SAIC as a co-
plaintiff. (Mot. 818-18, Ex. 6, at 12.)
On May 20, 2011, Apple and the other defendants filed a motion in the Cisco Litigation
to dismiss with prejudice based on VirnetX’s failure to name SAIC as a co-plaintiff in the
original complaint. (See Mot. 818-18, Ex. 7, “Defendants’ Motion to Dismiss for Intentional
Failure to Secure Standing, filed May 20, 2011.”) The motion argued that VirnetX “willfully
ignored” its lack of standing; that VirnetX tried to conceal SAIC’s interests; that VirnetX had
acted with undue delay; and that VirnetX had prejudiced the defendants. (Mot. 818-18, Ex. 7 at
6)
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D. The Present Investigation.
On November 4, 2011, VirnetX filed the Complaint alleging that Apple was in violation
of 19 U.S.C. § 1337 based on Apple’s infringement of the ’181 patent. On November 22, 2011,
VirnetX provided supplements to the Complaint, including certified copies of the ’181 patent and
certified copies of the recorded assignments of the ’181 patent; this certified copy of the
assignments identifies the ownership of the ’181 patent. (Ex. A, Supplement Public Exhibit 2 to
the original complaint (Document ID 465058 (File ID 683168))) Contrary to the ALJ’s
determination in Order No. 14, VirnetX complied with § 210.12(a)(9)(ii) by submitting a
certified copy of the assignment from SAIC to VirnetX. (Ex. A, Supplement Public Exhibit 2 to
the original complaint (Document ID 465058 (File ID 683168))) This certified assignment
agreement resulted from Amendment No. 1 to the PLAA, which provided
certified, and filed with the
ITC as a supplement to the Complaint prior to institution of this investigation on December 1,
2012. (Mot. 818, 18, Ex 3E., Amendment No. 1 to the PLAA)
The Notice of Institution of Investigation was published on December 7, 2011, and
named Apple as the respondent. See 76 Fed. Reg. 76435 (Dec. 7, 2011). As previously
mentioned, at this time of institution of this investigation, VirnetX believed that SAIC was not a
necessary party based on changes in the parties’ substantial rights after the Microsoft Litigation.
E. The March 2012 Cisco Order.
On March 22, 2012 (after VirnetX filed its Complaint here), Judge Davis issued the
March 2012 Cisco Order, ruling that, although it “was an extremely close call,” SAIC has an
ownership interest in the patents in dispute in that lawsuit. (Mot. 818-18, Ex. 6, Cisco Order, at
15)
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A week later, on March 29, 2012, counsel for Apple asked counsel for VirnetX in this
investigation to “please confirm by April 4 that SAIC will be joining the 337-818 ITC
Investigation.” (Mot. 818-11, Ex. 9) VirnetX’s counsel conducted due diligence in reviewing
the motion, applicable law, and conferring with its client and counsel for SAIC. On April 23,
2012, counsel for VirnetX and Apple discussed adding SAIC, and the very next day, VirnetX
informed Apple that it intended to add SAIC as a co-complainant. (Mot. 818-11, Ex. 12) A few
days later, Apple informed VirnetX that it opposed the addition of SAIC by amendment and
would instead file a motion to terminate for lack of standing.
F. VirnetX’s Motion to Amend.
The ’181 patent shares a common ancestry with the ’135, ’180, and ’759 patents and a
common specification with the ’180 and ’759 patents, patents-in-suit in the Cisco Litigation.
The related ’135, ’180, and ’759 patents are the subject of the March 2012 Cisco Order. Thus,
based on the March 2012 Cisco Order, and out of an abundance of caution, VirnetX sought to
add SAIC as a complainant.
Based on the foregoing, on April 30, 2012, VirnetX moved for leave to amend the
Complaint and Notice of Investigation to add SAIC as a co-complainant. (Mot. 818-10) SAIC
voluntarily consented to being joined as a complainant and is represented by Donald Urrabazo of
the Urrabazo Law Group, P.C. (Mot. 818-10 at 3 and Mot. 818-18, Ex. 8, Declaration of Donald
Urrabazo, ¶ 6 (“SAIC voluntarily consents to being joined as a co-Complainant in the above-
referenced investigation.”))
G. Apple’s Motion to Terminate.
On April 30, 2012, Apple moved to terminate this investigation based on SAIC’s
absence. (Mot. 818-11) Although styled as a motion to terminate, the substance of Apple’s
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motion is that of a response to VirnetX’s first motion to amend:
(Id. at 9)
H. Order No. 9.
On May 24, 2012, Order No. 9 issued, concluding that Complainant had failed to show
good cause for the motion to amend the Complaint and denying the motion. Order No. 9 found
that VirnetX failed to show good cause because, among other things, (1) it did not attach the
Patent and License Assignment Agreement (PLAA) and related assignments to the ’181 patent,
and (2) there were infirmities in the proposed amended complaint. (Order No. 9 at 4-5) Order
No. 9 found that because the indispensible party issue was raised in the Microsoft Litigation and
Cisco Litigation before VirnetX filed the Complaint in this investigation, VirnetX was on notice
that SAIC was a necessary party. (Order No. 9 at 5)
I. VirnetX’s Renewed Motion to Amend.
On June 5, 2012, VirnetX filed its “Renewed Motion for Leave to Amend the Complaint
and Notice of Investigation to Add Science Applications International Corporation.” (Mot. 818-
18) The renewed motion superseded VirnetX first motion to amend and addressed the ALJ’s
concerns regarding attaching copies of additional documents showing VirnetX’s ownership of
the ’181 patent. (See Mot. 818-18, Ex. 1, at Exs. 27D-I; see also id. Exs. 3B-F, 4, 5) As the ALJ
notes, “the renewed motion includes a First Amended Complaint that attaches the Patent License
and Assignment Agreement (‘PLAA’) between VirnetX and SAIC, amendments thereto, the
Security Agreement between VirnetX and SAIC.” (Order No. 14 at 1) Thus, although VirnetX
maintains that 19 C.F.R. 210.12(a)(9)(ii) did not require VirnetX to attach these documents to the
Complaint as the ALJ contends, VirnetX offered to address the ALJ’s concerns by attaching
them to the proposed First Amended Complaint. (See Mot. 818-18, Ex. 1, Index of Exhibits at ii-
iii (identifying Exs. 27D-I); see also Mot. 818-18, Exs. 3B-F, 4, 5)
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J. The ALJ’s Denial of VirnetX’s Renewed Motion to Add SAIC (Order No. 14)
and Termination of the Investigation (Order No. 15).
Order No. 14 issued on July 18, 2012 and held that VirnetX did not show good cause to
add SAIC as a co-complainant. The ALJ found that “VirnetX’s original complaint” failed to
“include a certified copy of each assignment of the patent. See 19 C.F.R. § 210.12[(a)](9).
VirnetX has not provided any justification for its failure to include the original complaint copies
of the documents assigning the ’181 patent from SAIC to VirnetX For this reason alone,
VirnetX has not shown good cause to amend the complaint and notice of investigation.” (Order
No. 14 at 2-3) As shown below, the ALJ’s conclusion was wrong as a matter of fact and law.
Order No. 15, also issued July 18, 2012, held that SAIC is a necessary party and that
VirnetX does not have prudential standing to assert the ’181 patent without SAIC’s presence.
Order No. 15 further held that although joinder was necessary to maintain Commission
jurisdiction, VirnetX was “unable to cure” this issue and hence termination was required.
VirnetX respectfully submits that Order Nos. 14 and 15 should be reviewed and reversed
by the Commission inasmuch as they contain clear error of law and fact and therefore are an
abuse of discretion. In particular, VirnetX respectfully requests review and reversal of the
conclusion reached in Order No. 14 (and relied upon in Order No. 15) that there was no good
cause to amend the Complaint to add SAIC as a co-complainant. Assuming that Order No. 14 is
error, then Order No. 15 is error also because, absent Order No. 14 (which superseded Order No.
9), there is no legal basis to conclude, as the ALJ did, that VirnetX was “unable to cure the defect
in the prudential standing by joining SAIC as a complaint, and does not have standing to assert
the ‘181 patent in this investigation.” (Order No. 15 at 3-4)
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IV. LEGAL STANDARD OF REVIEW
Under 19 C.F.R. § 210.24, “[r]ulings by the administrative law judge on motions may not
be appealed to the Commission prior to the administrative law judge's issuance of an initial
determination[.]” “This provision allows appeals of ALJ orders to the Commission at the time of
issuance of the final ID in an investigation.” Certain Polyethylene Terephthalate Yarn and
Products Containing Same, Inv. No. 337-TA-457, 2002 ITC LEXIS 665, at *7–8, (October
2002) (Notice of Comm’n Determination to Reverse).
In accordance with 19 C.F.R. § 210.43(b)(1), a party seeking review of an initial
determination must specify the issues upon which review is sought and, with respect to each
issue, must specify one or more of the following grounds for review:
(i) That a finding or conclusion of material fact is clearly erroneous;
(ii) That a legal conclusion is erroneous, without governing precedent, rule or
law, or constitutes an abuse of discretion; or
(iii) That the determination is one affecting Commission policy.
19 C.F.R. § 210.43(b)(1)(i)-(iii).
A petition for review will be granted if “an error or abuse of the type described in
paragraph (b)(1) of this section is present or if the petition raises a policy matter connected with
the initial determination, which the Commission thinks it necessary or appropriate to address.”
19 C.F.R. § 210.43(d)(2). “[O]nce a sufficient basis for review has been shown and review has
been ordered, the Commission examines for itself the record on the issues under review.”
Certain Acid-Washed Denim Garments & Accessories, Inv. No. 337-TA-324, 1992, ITC LEXIS
697, at *10, Comm’n Op. (Nov. 1992); see Certain Semiconductor Chips with Minimized Chip
Package Size & Prods. Containing Same, Inv. No. 337-TA-630, 2010 ITC LEXIS 317, at *19,
Comm’n Op. (Feb. 24, 2010).
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Commission review is conducted de novo. Certain Stringed Musical Instruments &
Components Thereof, Inv. No. 337-TA-586, 2008 ITC LEXIS 755, at *19, Comm’n Op. (May
16, 2008); see also Certain Optical Disk Controller Chips and Chipsets and Products
Containing Same, Including DVD Players and PC Optical Storage Devices, Inv. No. 337-TA-
881, 2005 ITC LEXIS 881, at *8, Comm’n Op. (Sept. 28, 2005). Once the Commission grants
review, it “may affirm, reverse, modify, set aside or remand for further proceedings, in whole or
in part, the initial determination of the administrative law judge . . . [and] also may make any
findings or conclusions that in its judgment are proper based on the record in the proceeding.” 19
C.F.R. § 210.45(c).
V. ARGUMENTS AND AUTHORITIES
VirnetX seeks review and reversal of Order Nos. 14 and 15 because the ALJ erred in
terminating this investigation for lack of standing. As discussed below, the ALJ erred in
concluding in Order No. 15 that VirnetX was unable to cure the indispensible party issue based
the ALJ’s denial of VirnetX’s renewed motion to amend in Order No. 14.
First, the ALJ abused his discretion in finding that VirnetX did not have good cause to
amend to add voluntarily SAIC as a co-complainant under 19 C.F.R. § 210.12. VirnetX’s good
cause for the amendment was to cure the jurisdictional issue of SAIC’s absence if SAIC were
found to be a necessary party to the investigation.
Second, the ALJ erred as matter of fact and law in concluding that VirnetX’s original
complaint did not comply with 19 C.F.R. 210.12(a)(9). The ALJ erred as a matter of fact in
concluding that the Complaint did not identify ownership of the ’181 patent or include a certified
copy of the assignment agreement for the ’181 patent. This conclusion is incorrect as a matter of
fact because such information was submitted with the Complaint.
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Third, the ALJ erred as a matter of law in concluding that that Rule 210.12(a)(9)(ii)
required VirnetX to attach documents to the Complaint relating to the assignment of the ’181
patent in addition to the certified copy of the assignment agreement itself.
A. The ALJ Clearly Erred and Abused His Discretion by Finding that VirnetX
Lacked Good Cause to Amend the Comp laint and Notice of Investigation to
Add SAIC as a Party.
1. VirnetX had good cause to add SAIC as an indispensible party.
The ALJ erred and abused his discretion by not allowing SAIC to voluntarily join this
investigation, and thereby deviated from Commission precedent, which generally permits
voluntary joinder of an indispensible party. The ALJ erroneously ignored the good cause present
when an indispensible party is needed for continued maintenance of an investigation, and instead
focused on non-existent technical errors in the Complaint that supposedly deprived VirnetX of
good cause to amend its complaint.
Federal Circuit and Commission precedent recognize that Commission jurisdiction
depends on the Commission having a proper party or parties before the Commission with
standing to assert the patent at issue. SiRF Tech. Inc. v. ITC, 601 F.3d 1319, 1325-26 (Fed. Cir.
2010); Certain Catalyst Components and Catalysts for the Polymerization of Olefins, USITC
Inv. No. 337-TA-307, 1990 ITC LEXIS 224, Order No. 23 (June 25, 1990). In cases where, as
here, a non-party is found to be an indispensible party, the Commission has not required the
complainant to provide further justifications as to whether and why an indispensible party should
be joined to the case as an indispensible party. Rather, the Commission’s precedent has directed
the complainant to obtain voluntary joinder of the indispensible party to avoid termination of the
investigation. Certain Point of Sale Terminals and Components Thereof, Inv. No. 337-TA-524,
2005 ITC LEXIS 426, at *13, Order No. 31 (February 7, 2005) (ordering complainant to state by
time certain whether third party with rights to patent at issue will participate in investigation as
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voluntary co-complainant); Certain Catalyst Components and Catalysts for the Polymerization
of Olefins, Inv. No. 337-TA-307, 1990 ITC LEXIS 224, at *30–31, Order No. 23 (June 25, 1990)
(holding in abeyance motion for termination pending receipt of information indicating whether
parent company will participate voluntarily as co-complainant); Cf. In the Matter of Certain
Valves, Inv. No. 337-TA-173, 1984 ITC LEXIS 91, at *3, Order No. 5, (April 10, 1984) (initial
determination granting respondents’ motion to amend to add complainants).
Indeed, the Commission favors such amendments where they do not prejudice the parties
or the public interest and where the amendment can avoid the waste of party and ITC resources
resulting from termination and re-filing of a complaint. See Certain Devices for Improving
Uniformity Used in Backlight Module and Components Thereof and Products Containing the
Same, Inv. No. 337-TA-805, Order No. 11, 2012 ITC LEXIS 190 at *13 (Jan. 19, 2012) (finding
that amendment of the pleadings was more efficient that filing a new complaint); Certain
Display Devices Including Digital Televisions and Monitors, Inv. No. 337-TA-713, Order No.
16, 2010 ITC LEXIS 1930 at *10 (Sept. 10, 2010) (noting that “allowing [Complainant] to
amend the Complaint in this investigation is a more efficient use of the parties’ and the
Commission’s resources than requiring [Complainant] to file a new complaint.”).
Here, there was good cause to add SAIC because SAIC is an indispensible party.
VirnetX moved to add SAIC to the case well before any prejudice could accrue to Apple, and to
moot any possible issue of whether the Commission had before it the parties with standing to
assert the suit patent. Moreover, the parties had pending before the ALJ a stipulated request to
extend the schedule in this case (See Order No. 11, June 1, 2012 (denying request to extend
schedule)) Additionally, VirnetX obtained the voluntary agreement of SAIC to be joined as a
party to this investigation, not only to moot any issue of standing, but to cure any potential issue
PUBLIC VERSION
15
McKool 455468v1
of standing in the event of any finding that SAIC is a necessary party. (Mot. 818-18, Ex. 6,
Declaration of SAIC (advising that SAIC voluntarily agreed to be joined as a party)) Order Nos.
14 and 15 do not address this good cause.
2. The ALJ’s sole basis for finding th at VirnetX lacked g ood cause was
the Complaint’s supposed non-compliance with Rule 210.12(a)(9)(ii).
The ALJ did not analyze whether SAIC’s status as an indispensible party, together with
SAIC’s voluntary joinder, or any other facts presented good cause. Nor was there any finding of
prejudice to the Commission or any party. In fact, the ALJ indicated that adding SAIC would
not have been prejudicial to Apple. (Order No. 9 at 6 (“Despite the fact that SAIC has not
participated in the pending motion, the undersigned believes that due to the September date set
for the evidentiary hearing, it would likely have been possible to avoid [] prejudice.”); Order No.
14 at 3) Rather, the ALJ based his dismissal of the case on the sole ground that VirnetX’s
original Complaint purportedly did not comply with the Commission’s pleading rule, stating that
“[f]or this reason alone, VirnetX has not shown good cause to amend the complaint and notice
of investigation.” (Order No. 14 at 3 (emphasis added))
4
As discussed below, this was clearly
erroneous as a matter of fact and law.

4
While Order No. 9 denied VirnetX’s original motion for leave to amend on various grounds,
those issues were largely addressed by the revised form of VirnetX’s renewed motion for leave
to amend. As Order No. 14 acknowledged, VirnetX’s renewed motion, (Mot. 818-18), remedied
these grounds except for the ALJ’s finding that VirnetX failed to comply with § 210.12(a)(9).
Thus, the sole basis for denying VirnetX’s motion to add SAIC was the alleged failure to comply
with 19 CFR § 210.12(a)(9). As such, both Order Nos. 9 and 14 are erroneous to the extent they
include common errors of fact and law as stated herein.
PUBLIC VERSION

16
McKool 455468v1
B. The ALJ Clearly Erred As a Ma tter of Fact in Finding that VirnetX Did Not
Comply with Rule 210.12(a)(9)(ii) By No t Identifying Ownership of the ’181
Patent or Attaching a Certified Copy of the Assignment Agreement for the
’181 Patent to the Complaint.
The ALJ held that:
VirnetX’s original complaint [] failed to comply with the Commission Rule
requiring that a complaint . . . include a certified copy of each assignment of the
patent. VirnetX has not provided any justification for its failure to include with
the original complaint copies of the documents assigning the ‘181 patent from
SAIC to VirnetX. For this reason alone, VirnetX has not shown good cause to
amend the complaint and notice of investigation.
(Order No. 14 at 2-3 (citations omitted)) The ALJ specifically erred in finding that the certified
“assignment agreements between VirnetX and SAIC . . . were not included . . . with the
complaint that VirnetX filed with the Commission to institute this investigation.” (Id. at 1-2)
(See also Order No. 9 (“The undersigned examined the exhibits to VirnetX’s complaint in this
investigation, and found that they, too, lacked a copy of the PLAA or of any assignment of the
‘181 patent (which is the patent asserted in this investigation) from SAIC to VirnetX.”)
(emphasis added))
The ALJ’s conclusion that VirnetX did not attach copies of the documents assigning the
’181 patent from SAIC to VirnetX is wrong. In fact, VirnetX did attach certified copies of the
’181 assignment agreements to the original complaint in accordance with Rule 210.12(a)(9)(ii).
Rule 210.12(a)(9)(ii) reads as follows:
In addition to conforming with the requirements of §201.8 of this chapter and
§§210.4 and 210.5 of this part, the complaint shall— . . . Include, when a
complaint is based upon the infringement of a valid and enforceable U.S. patent—
. . . The identification of the ownership of each involved U.S. patent and a
certified copy of each assignment of each such patent (a legible copy thereof will
suffice for each required copy of the complaint) . . .
19 C.F.R. § 210.12(a)(9)(ii). In compliance with Rule 210.12(a)(9)(ii), VirnetX supplemented
the Complaint prior to institution of this investigation to include certified copies of the
PUBLIC VERSION
17
McKool 455468v1
assignment agreements for the ’181 patent. (Ex. B, November 22, 2011 Letter from B. Levi,
counsel for VirnetX, to Secretary Holbein (Document ID 465058 (File ID 682938))
(supplementing the Complaint by enclosing, among other things, certified copies of the
assignment agreement for the ’181 patent); Ex. A, Supplement Public Exhibit 2 to the original
complaint (Document ID 465058 (File ID 683168))) The investigation was subsequently
instituted based on the Complaint as supplemented. (Document ID 465667, December 1, 2012
Notice of Institution of Investigation 337-TA-818 at 1 (noting that “A supplement was filed on
November 22, 2011 which included public versions of the confidential exhibits.”)) Even Apple
acknowledged that VirnetX attached a certified copy of the assignment between SAIC and
VirnetX. (Mot. 818-11 at 11 (noting that VirnetX
) As such, the ALJ’s finding
that VirnetX did not do so is clear error.
Separately, the ALJ also implied in Order No. 14 that VirnetX did not “identify the
ownership” of the asserted patent as required by 19 C.F.R. § 210.12(a)(9)(ii). (Order No. 14 at 2
(“VirnetX’s original complaint [] failed to comply with the Commission Rule requiring that a
complaint identify the ownership of any asserted patent and include a certified copy of each
assignment of the patent.”)) In fact, as recognized by the ALJ in his earlier Order No. 9, VirnetX
did indentify the ownership because “[t]he original complaint . . . state[s]: ‘VirnetX owns by
assignment all right, title, and interest in and to the ‘181 patent.’ Compl., ¶ 3 . . . .”
5
(Order No.
9 at 4) This statement of ownership quotes directly from the certified copies of the assignment

5
Order No. 9’s criticism of this language’s continued presence in a proposed amended complaint
is not at issue here. (Order No. 9 at 4) VirnetX subsequently renewed its motion to amend with
a proposed amended complaint addressing the ALJ’s concerns by changing this language to
reflect the rights of SAIC, an indispensible party. Order No. 14 denies this renewed motion, but
seemingly continues to criticize the inclusion of this language in the original complaint even
where the ALJ does not hold that such a statement was in bad faith.
PUBLIC VERSION

18
McKool 455468v1
agreement between SAIC and VirnetX that was attached as Exhibit 2 to the original complaint.
(Ex. A, Supplement Public Exhibit 2 to the original complaint (Document ID 465058 (File ID
683168)) at 4 (“SAIC does hereby assign, convey, transfer and quitclaim to Transferee [VirnetX,
Inc.] all of SAIC’s rights, title, and interest in and to the Patents . . . .”)) This statement of
ownership was VirnetX’s good faith belief regarding its rights to the ’181 patent, and following
Judge Davis’s ruling to the contrary in the Eastern District of Texas, VirnetX sought to add
SAIC as a party in this investigation.
These facts do not support a conclusion that VirnetX “failed” to identify the ownership of
the ’181 patent in the Complaint, as the ALJ ruled. (Order No. 14 at 2) Therefore, to the extent
that the ALJ found that VirnetX failed to identify the ownership of the ’181 patent, such a factual
finding must be reversed for clear error. Moreover, because this finding was the sole basis for
finding that VirnetX lacked good cause to amend the Complaint and Notice of Investigation to
add SAIC, the ALJ’s termination of this investigation must also be reversed.
C. The ALJ Clearly Erred As a Matter of La w in Co ncluding that Rule
210.12(a)(9)(ii) Required VirnetX to A ttach Documents to the Complaint
Relating to the Assign ment of the ’181 Paten t In Addition To the Certified
Copy of the Assignment Agreement Itself.
The ALJ compounded his error in failing to appreciate that a certified copy of the
assignment was filed with the Commission. The ALJ appears to have identified documents that
he believed would have satisfied the rule in the absence of a certified copy of the assignment. To
the extent that the ALJ faults VirnetX for not attaching a copy of other ancillary documents to
the complaint, this holding is not supported by the Commission Rules. Rule 210.12(a)(9)(ii)
requires that VirnetX’s complaint “include a certified copy of each assignment of the patent.” 19
C.F.R. § 210.12(a)(9)(ii). As set forth above, this is precisely what VirnetX did.
PUBLIC VERSION
19
McKool 455468v1
Without providing any analysis, the ALJ concluded that Rule 210.12(a)(9)(ii) required
adding additional documents, namely: a copy of the PLAA between VirnetX and SAIC,
Amendment 1 to the PLAA, Amendment 2 to the PLAA, and the Security Agreement between
VirnetX and SAIC. (Order No. 14 at 1)
6
Not one of these documents is a certified copy of
assignments as contemplated by Rule 210.12. See 19 C.F.R. §§ 210.12(a)(9)(ii),
210.12(a)(9)(iv), and 210.12(c)(1) (requiring, respectively, attachment to the complaint of
certified copies of the asserted patent, certified copies of assignments, and certified copies of the
patent file history—all of which are available from the U.S. Patent and Trademark Office). In
fact, three of the these documents—the PLAA, Amendment No. 2 to the PLAA, and the Security
Agreement—are not even arguably assignments. (See Ex. C (PLAA) § 4.1
7
Ex. F (Am. No. 2 to PLAA)
Ex. D (Security Agreement)
The remaining document, Amendment No. 1 to the
PLAA,
certified by the PTO, and filed by VirnetX
with the Complaint. (Ex. E (Am. No. 1 to PLAA) at 1)
The ALJ’s holding that these documents were required to be attached to the original
complaint was legally erroneous in view of Rule 210.12(a)(9)(ii), and the ALJ abused his
discretion in finding that the sole reason that VirnetX lacked good cause was because they were
not attached to the Complaint.

6
As addressed separately in Section V.B, the ALJ also held that VirnetX failed to attach the ’181
patent assignment agreement to the complaint, which is simply not the case.
7
Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359, 1364-65 (Fed. Cir. 2010)
(“[C]ontracts that obligate the owner to grant rights in the future do not vest legal title to the
patents in the assignee.”).
PUBLIC VERSION

20
McKool 455468v1
VI. CONCLUSION
VirnetX filed the Complaint in good faith, providing a certified copy of the assignment
executed by SAIC, and asserting VirnetX was the owner of the suit patent by assignment. When
Judge Davis in the Cisco Litigation determined in a “close call” that SAIC was a necessary party
(even though, as Judge Davis observed, VirnetX’s position was “reasonable”), VirnetX worked
to secure SAIC’s participation and joinder in the Cisco Litigation (which was granted) and in the
ITC. Although there would be no prejudice to Apple (as confirmed by the ALJ), the parties had
even agreed to continue the case, undoubtedly curing any possible prejudice. Yet the ALJ
refused the extension, ignored the established procedure on voluntary joinder (or the fact that it
had been already been arranged), and criticized the Complaint for failing to include the very
certified assignment document that it did include. These circumstances do not warrant
termination of the investigation.
Accordingly, VirnetX respectfully requests the Commission to review and reverse Orders
14 and 15, grant joinder of SAIC, and remand the case to the ALJ for further proceedings.
PUBLIC VERSION
21
McKool 455468v1
Dated: July 26, 2012 Respectfully submitted,
MCKOOL SMITH, P.C.
By: /s/ Mark L. Mathie____
Douglas Cawley
Mark Mathie
Ivan Wang
Jason Cassady
Austin Curry
Brad Caldwell
Daniel Pearson
MCKOOL SMITH P.C.
300 Crescent Court, Suite 1500
Dallas, TX 75201
Telephone: (214) 978-4000
Telecopier: (214) 978-4044
VirnetX_AppleITC@mckoolsmith.com
Benjamin Levi
Jeffrey I. Frey
Robert A. Auchter
Brandon Jordan
Kent Stevens
MCKOOL SMITH P.C.
1999 K Street, N.W., Suite 600
Washington DC 20006
Telephone: (202) 370-8300
Telecopier: (202) 370-8344
VirnetX_AppleITC@mckoolsmith.com
Jennifer Truelove
MCKOOL SMITH P.C.
104 East Houston, Suite 300
Marshall, TX 75670
Telephone: (903) 923-9000
Telecopier :(903) 923-9099
VirnetX_AppleITC@mckoolsmith.com
Ann Schofield Baker
MCKOOL SMITH P.C.
One Bryant Park, 47th Floor
New York, NY 10036
Telephone: (212) 402-9400
Telecopier: (212) 402-9444
VirnetX_AppleITC@mckoolsmith.com

Counsel for Complainant VirnetX, Inc.

PUBLIC VERSION

CERTIFICATE OF SERVICE

I hereby certify that a copy of the PUBLIC VERSION OF COMPLAINANT VIRNETX,
INC.’S PETITION FOR REVIEW OF ORDER NO. 15 AND APPEAL OF ORDER NO. 14
was served as indicated, to the parties listed below, on Monday, July 30, 2012:
The Honorable Lisa R. Barton
Acting Secretary
U.S. INTERNATIONAL TRADE COMMISSION
500 E Street, S.W., Room 112
Washington, D.C. 20436
(VIA ELECTRONIC FILING)
The Honorable David P. Shaw
Administrative Law Judge
U.S. INTERNATIONAL TRADE COMMISSION
500 E. Street, S.W. Room 317
Washington, D.C. 20436
(VIA HAND DELIVERY – Two copies)
Patricia Chow
Attorney Advisor to the Honorable David P. Shaw
patricia.chow@usitc.gov
(VIA EMAIL)
Respondent
Counsel for Apple Inc.
Marcia H. Sundeen
T. Cy Walker
Brett Watkins
Kenyon & Kenyon LLP
1500 K Street, N.W.
Washington, DC 20005
Telephone: (202) 220-4200
Fax: (202) 220-4201
337-818-Kenyon@kenyon.com
(VIA EMAIL)

Megan Olesek
Michelle McLeod
Kenyon & Kenyon LLP
1801 Page Mill Road, Suite 210
Palo Alto, CA 94304-1216
Telephone: (650) 384-4700
Fax: (650) 384-4701
337-818-Kenyon@kenyon.com
(VIA EMAIL)
Counsel for Apple Inc.
Danny L. Williams
Terry D. Morgan
Ruben S. Bains
Christopher N. Cravey
Kyung Kim
Scott Woloson
Richard Groseclose
Matthew R. Rodgers

Williams, Morgan & Amerson, P.C.
10333 Richmond, Suite 1100
Houston, TX 77042
Telephone: (713) 934-7000
Fax: (713) 934-7011
WMA-AppleVirnetX@wmalaw.com
(VIA EMAIL)

/s/ Mekbib Solomon
Mekbib Solomon
Senior Paralegal
McKool Smith P.C.
1999 K Street, N.W., Suite 600
Washington, DC 20006

EXHIBIT
A
PUBLIC VERSION
Ex hi bi t 2
'!!QJA'IlIl, '!!QJ _IE Sl>: !!'U'S.E"'l!l!!l S ...... Il,
UNITED STATES DEPARTMENT OF COMMERCE
United States Patcnt and Trademark Office
November 09, 2011
THIS IS TO CERTIFY THAT ANNEXED IS A TRUE COPY FROM THE
RECORDS OF THIS OFFICE OF A DOCUMENT RECORDED ON
JUNE 21 , 2007.
By Authority of the
Under Secretary of Commerce for Intellectual Property
and Director of tbe United States Patent and Trademark Office
Certifying Officer
PUBLIC VERSION
[
PATENT ASSIGNMENT
Electronic Version v1. 1
Stylesheet Version v1. 1
SUBMISSION TYPE:
NATURE OF CONVEYANCE:
CONVEYING PARTY DATA
NEW ASSIGNMENT
ASSIGNMENT
Name
Science Applications International Corporation
RECEIVING PARTY DATA
lName: IIVimetX, Inc.
IStreet Address: 115615 Scotts Valley Drive, Suite 11 0
IC.,.: IIScotts Valley
IState/Country: IICALIFORNIA
IPo,",,' Code: 1195066
PROPERTY NUMBERS Total: 3
I
Property Type
II
IApPlication Number: 1111301022
I Application Number:
11"679416
I Application Number:
11"532002
CORRESPONDENCE DATA
Fax Number: (617)535-3800
Number
Correspondence WIll be sent via US Mall when the fax attempt is unsuccessful
Phone: (617) 5354108
Email: aroyaee@rnwe.com
Correspondent Name: Atabak R. Royaee
Address Une 1: 28 State Street
Address line 2: McDermott Will & Emery, l lP
Address line 4: Boston, MASSACHUSETTS 02109
NAME OF SUBMITTER: Atabak R. Royaee
Total Attachments: 4
source=VimetX#page1.tif
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ASSIGNMENT
HilS ASSIGNMENT is made and entered into by and between Science Applications International
Corporation, II Delaware corporation ("SAle"), and VirnetX Inc., II Delaware corporation ("Transreree").
RECJTALS
WHEREAS, SAle has the entire rights, tit le. Rnd interest in and to the issued patents and pending
patent applications listed in Exhibit A (the "Patents");
WHEREAS, SAle and Transferee entered into an agreement dated 3S of August 12, 2005
enti tled, "Patent License lind Assignment Agreement" (the "Original Agreement");
W!1EREAS, SAle and Trunsfcree Ilntered into an amendment to the Original Agreement on or
about November 2, 2006 entitl ed, "Amendment No. 1 10 Patent License and Assignment Agreement" (the
"Amendment"); and
WHEREAS, Transferee is desirous of acquiring, and SAIC is desirous of transferring to
Trunsferee, all of SAle's rights, titie, ann inlerest in and to the Patents pursuant to the terms of the
Original Agreement and the Amendment.
NOW, THEREFORE, for good and valuable consideration, the receipt for and sufficiency of
which are hereby acknowledged, SAle does hereby assign, convey, transfer and quitclaim to Transferee
all of SAle's rights, litle, and interest in and to the Patents, including. without limitation, the right to
claim priority based on the Patents in subsequent patent applications filed anywhere throughout the world.
including. without limitatioll, any and all intemationnl applications, national applications, national stage
applications, regional applications, continuations, divisionals. substitut es, renewals, reissues, re-
examinati ons, and extensions of the Patents, which llave been or may be fil ed in the United States or any
and all other countries and regions worldwide, including without limitation, any and all Letters Patents
which have been or may be issued for the Patents in the United States or in any and all other countries and
regions worldwide, including. wilhotil limitation, the right to enforce the Patents and such Lcners Patents
for past infringement, including, without li mitation, the righl to sue for inj unction, damages, and
othcrwise. anrl col lect damages and fees for Transreree including, wi thout limitation, the right to file in
Transferee'S own name applications for palents in the Unitcd States and allY and all other countries and
regions worldwide for inventions claimed in the Patents and to seeure in Transferee's own name Letters
Patent or Patents issued thereon.
AND SAle authorizes and requests the Commissioner of Patents and Trademarks or any ot her
proper officer or agency of nny country 10 issue all said Letters Patents to Transferee.
IN WITNESS WHEREOF, the parties have hereunto set hand and executed this AGREEMENT
as of December 21,2006:
SCIENCE APPLlCA nONS
INTERN 0 ALCORPORATION

Name: Pam la J. Bumann
Title: Sr. Vice Presidcnt
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SAle Parent Rights
Clluntry P.alentJAppllc.ation Nil. Filing Date Title Dllcket Nos.
JP lP Application No. 10/29199 An Agile Network Protocol For Secure Communications SAfC 98- IO-JAP
2000-580354 With Assured System Availability BW 000479.00042
CA C'.A Application No. 10129/99 All Agile Nc:twork Protocol For Secure Communications SAle 98· 10·CAN
2,.349,520 With Assured System Availability BW 000479.00043
AU AU Application No. 10129199 An Agile Network Protocol For S e c ~ Communications SNC 98-IO-AUS
16003/00 With Assured System Avai labi lity BW 000479.00046
EU EPO Application No. 10129199 All Agile Network Protocol For Secure Communications SAIC 98·10-EPO
99958693.6 With Assured System Availability BW 000479.00047
US U.S. Application No. 10/29199 An Agile Network Protocol For Secute Conununicalions SAlC98- 10-US
I tltvI5\O""\.of 091429,643
With Assured System Availabil ity B W 000479.84602
... 1\1"30\1°2..1- 12/13/05
US U.S. Application No. 3131103 An Agile Network Protocol For Secure Communications SAlC98-IO-DIV
10/401,551 With Assured System Availability BW 000479.00102
JP JP Application No. 1012911)9 An Agile Nctwork Protoco.1 For Secure Commullications SATC98-10-JAP2
2000-580350 With fissural System Availabi[ity BW 000479.00040
CA CA App[ication No, [0/29199 An Agile Network Protocol For Secure Communications SAle 98-10-CAI\f2
2,3495 [9 With Assured System Availability BW 000479.0004 [ .
AU AU App[ication No. 10129199 An Agi[e Network Protocol For Secure Communications SAIC 98-IO-AUSl
14553100 With Assured SYSl.em Avai[ability BW 000479.00048
Exhibit A-I
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Country PateollApplieation No.
EU EPO Application No.
99971606.1
us U.S. Patcot No.
6,502,135
EU EPO Application No.
01910528.7
1P JP Application No.
2001·560062
us U.S. Patent No.
6,618,761
us U.S. Patent No.
6,907,473
us U.S. Patent No.
6,834,310
us
EU
U.S. Application No.
10/259,494
EPO Application No.
01932629.7
Filing Date
10129199
2115/00
2/15/00
2I1s/00
2(26/02
31J1/03
2126102
9130102
4126100
Title
An Agile Network Protocol For Sccure Cornmunicatiom;
Wi th AssuredSystCffi AvaHDbi1ity
Agile Network Protocol for Secure Communications with
Assured System Availability
ImprovcmcnlS to an Agile Network Prmocol for Secure
Communications with Assuml System Availability
Improvements to an Agile Network Protocol for Secure
Communications with Assured Systcm Availubility
Agile Network. Protocol For Secure CommWlications With
Assured System Availability
Improvements to an Agile Network Protocol For Sc:curc
Communications With Assured System Avai lability
PrcvCIlting Packet Flooding of a Computer on a Computer
Network
Establishment of a Secure Communication Unk Based on a
Domain Name Scrvice (DNS) Request
ImprOVt:lnCllts 10 an Agile Nc[Work Protocol for Secure
Communications with Assured System Availability
Exhibit A - 2
Docket Nos,
SAIC 98-IO-EPO-2
BW 000479.00049
SAIC 10003
B\VOO0479.85672
SAIC 10003-EPO
BW 000479.00080
SAle IOOOJ-JAP
BW 000479.0008\
SAle IOOO3-D1V
BW 000479.00067
SAIC IOOO3-DIV-1
BW 00049.00101
SAle IOO03-D1V-2
000479.00068
SAJC l000J-DIV-3
I3W 000479.00082
SAle 100000EPO
OW 000479.00085
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Country Patent/Application No.
·JP lP Application No.
2001·583006
US U.S. Patent No.
6,839,759
EU EPO Application No.
01932628.9
JP H' Application No.
2001-501144
US U.S. AppliC3tion No.
IOnt4.849
EU EPa Application No.
05102086.5-24[3
US U.S. Application No.
09/874,258
ItOlllIN!,I,mO!J Of \ \ /532,002
Ell EPC Application No.
02718836.0
US U.S. Applicution No.
or lon02.486

US U.S. [lillenl No.
6,826,616
Filing Date Title Nos.
4126/00 Improvemenu to an Agile Network Protocol for Sccurc SAle IOOO6·1AP
Communications with Assured System Availability BW 000479.00086
IlntOJ Method for Establishing Secure CommW1icalions Link SAle 10006,Co111
Between Computers of Virtual Private Network Without User BW 000479.00110
Entering Any Cryptographic lnfolTIlation
4/26100 Improvements to an Agile Network Protocol for Secure SAle IOOO7-EPO BW
Communications with Assured System Availability 000479.00087
41'26100 Tmprovements to an Agile Network Protocol for Secure SAle lOOO7-JAP
Communications with Assured System Availability 000479.00088
1 III 8103 An Agile Network Protocol for Secure Communications. SAIC JOOO7-Cont
Using Secured Domain Names 000479.00111
3116/05 ImprovemCflts to an Agile Nclwork Protocol for Secure SAIC 10007-EPO-DIV
Communications with Assured System Availability BW 000479.00145
6/('i/OI Third Part)' VPN Certification SAle JOIOI-US
0'I/i1\I o6
BW 000479.00032
1/17102 Third Party VPN Certification SAle !OlOl-EPC
BW 000419.00\08
IlnlOJ M('lhod for Establishing Securc Communication Link SAIC JOOO6-DlV( I)
Between Computers ofVinuaJ Private Network BWOO0479.00112
2/',/D1
lin/a) Method for Establishing Secure Communication Link SAle IOOO6-DTV (2)
Between Computm of Virtual Private Network BW 000479.00113
ExhibitA-3
PUBLIC VERSION
-

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
November 09, 2011
THIS IS TO CERTIFY THAT ANNEXED IS A TRUE COpy FROM THE
RECORDS OF THIS OFFICE OF A DOCUMENT RECORDED ON
ruNE 21 , 2007.
By Authority of the
Under Secretary of Commerce for Intellectual Property
and Director of the United States Patent and Trademark Office

Certifying Officer
PUBLIC VERSION
~
PATENT ASSIGNMENT
II
Electronic Version v1. '
Stylesheet Version v1.1
SUBMISSION TYPE:
II NEW ASSIGNMENT
NATURE OF CONVEYANCE:
II ASSIGNMENT
CONVEYING PARTY DATA
Name
I
Execution Date
I
IVictor larson
f1"06l2003
IRobert Dunham Short 111 110127/2003
I l ~ u n d Colby Munger
11110512003
illiamson 11110512003
RECEIVING PARTY DATA
!Name: IISCIENCE APPLICATIONS INTERNATIONAL CORPORATION
I
,
IStreet Address: 1110260 Campus Point Drive
,
ICily, IISan Diego
,
Istate/country: IICALIFORNIA
Ipostal Code:
1192121
PROPERTY NUMBERS Total: 1
I
Property Type
II
Number
I
I Appl ication Number:
11"679416
I
CORRESPONDENCE DATA
Fax Number: (617)535-3800
Correspondence will be sent via US Mail when the fax attempt is unsuccessful.
Phone: (617) 535-4108
Emai l: aroyaee@mwe.com
Correspondent Name: Atabak R. Royaee
Address line 1: 28 Siale Street
Address Li ne 2: McDermott Will & Emery, LLP
Address Line 4: Boston, MASSACHUSETTS 02109
ATTORNEY DOCKET NUMBER:
I 00479-00112
I
NAME OF SUBMITTER:
I
Atabak R. Royaee
PATENT
500300478 REEL: 019463 FRAME: 0762
,
PUBLIC VERSION
,
Total Attachments: 2
source=00479.00112#page1.1if
SQurce=00479.001 12#page2.lif
PATENT
REEL: 019463 FRAME: 0763
PUBLIC VERSION
1
I
il
..
AluJruey Dockd No. 00479.00112
rOD'IT ASSIGNMENT
WHEREAS, we, Victor Larson. having a post office address of 12026 Lisa Marie Court, Fairfax,
Virginia 22D33; Robert Dunham Short, III, having a post office address of 38710 Goose Creek Lane,
Leesburg,- Virginia. 20175; Edmund Colby MUnger, having a post office 'address 'of 1101 Opaca Comt,
Crownsville, Maryland 21032; and Michael Williamson, baving a post office address of 26203 Ocala
Circle, South Riding, Virginia 20152, are the joint inventon; of certain inventions Bnd improvements
described in a U.S. patent application identified by Attorney Docket No. 00479.00112 and baving the
title:
METHOD FOR FSTABLISffiNG SECURE COMMUNICATION LINK BETWEEN
COMPurERS OF VIRTUAL PRIVATE NETWORK
which application is flIed herewith
executed on . fI/'/O,' ,,/rio; II/qo or
filod on __ __ and assigned application serial number . \ \/61'1, ;
and WHEREAS
)\ limhw .. A-hO" of IO/-=f01,4Sb
nOlA u.s. YA"" \\\0 . l ll'OS,I'i::O
SCIENCE APPLICATIONS INTERNATIONAL CORPORATION
10260 campus Point Drive
San Diego. California 92121
A Forporation of the state of DELAWARE
ASSIGNEE, desires to acquire the entire right, title and interest in and to the said application,
inventions and improvements and any patents that may be granted on or as a result thcccof in the United
States of America (U.S.) and in any and all foreign countries;
NOW, TIIEREFORB, for good and valuable consideration, receipt of which is hereby
acknowledged,
We hereby assign. to the above named ASSIGNEE, its successon;, assigns and legal
representatives (NOMINEES) the entire right, title and interest in and to said application, inventions and
improvements throughout the world and to any and all patents, peUy patents and utility model patents
which may be granted therefor, and all continuations, continuations-in-part, divisions, reissues,
extensions, renewals, and any non-provisional based on a provisional thereof (LETI'ERS PA1ENT).
And we covenant that we have full right to convey the entire interest herein assigned, and that we
have nol executed and will not execute any agreement or do anytlring in conflict herewith;
And we further covenant and that we will without undue delay execute without further
consideration all such papen as may be necessary to perfect the title to said application, inventions and
improvements, and LB'ITERS PATENT in the ASSIGNEE or its NOMINEES, and we agree to
commUnicale to said ASSIGNEE or its NOMINEES all known facts respecting said application,
I
PATENT
REEL: 019463 FRAME: 0764
I
I,
[ I
!
I
,
I
l
b
,
PUBLIC VERSION
I
,
I
1
1
"
.- .
Joiul Auig:nmcm
AttorDeyDockctNo. 00479.oo1Il
inventions, improvemeDts, and I...El1ERS PATENT, to testify in any legal proceedings, to sign all lawful
papers, and generally to do all thlngs necessary to aid ASSIGNEE or its NOMINEES to obtain and
enforce for their own beoefit patcnt protection for said application, inventions and improvements in any
and all countries, all at the expense, howeva. of the ASSIGNEE Of its NOMINEES;
And we authorize the ASSIGNEE or its NOMINEES to file in our Dames or their own, as
appropriate, application for LETTERS PATENT in any and all countries of the world, and we authorize
and request the Commissioner of Patents and Trademarks of the United States, and any proper official of
any country. to issue to said ASSIGNEE or its NOMJNEES any and all LEITBRS PATENT for said
application, inventions and improvements, for their role use, to the full end of the term for which such
LETI'ERS PATENT may be granted;
ADd we hereby grant our attorneys at the law fum of Banner & Witcoff the power to insert into
this document information sufficient to identify the patent application to which this assignment pertains.
Date: liMO'< Inventor. 1/,.4.. %0
Victor Larson
,
Date:
(0 Inventor:
,
Robert Dunham Short, m
Date; fl/S/OJ Inventor:

Date:
/(MC3 Inventor:

Note: No legalization or other witness required.
LAWOFFlCES
BANNER & WITCOFF, LTD.
1001 G STREET, N.W.
WASHINGTON,D.C.20ooI4597
(202) 824-3000
2
PATENT
RECORDED: 06/21/2007
REEL: 019463 FRAME: 0765
I
I
I
, I
PUBLIC VERSION
EXHIBIT
B
PUBLIC VERSION
MCKOOL SMITH
Benjamin Levi
Direct Dial: (202) 370-8320
blevi@mckoolsmith.com
Admitted in New York
Admission pending in D.C.
VIA HAND DELIVERY
The Honorable James R. Holbein
1999 K Street NW
Suite 600
Washington, D.C. 20006-1101
November 22, 2011
Secretary, U.S. International Trade Commission
500 E Street, S.W., Room 112
Washington, DC 20436
Telephone: (202) 370-8300
Telecopier: (202) 370-8344
RE: In the Matter of Certain Devices with Secure Communication Capabilities,
Components Thereof, and Products Containing the Same, DN 2854
Dear Secretary Holbein:
Ori November 4, 2011, Complainant VirnetX, Inc. (VirnetX) filed a Complaint pursuant
to Section 337 ofthe Tariff Act of 1930 with the U.S. International Trade Commission. I write
on behalf of VirnetX to supplement to the Complaint, as follows:
1. One (1) original, unbound copy of Public Exhibit 1, Certified Copy of U.S. Patent No.
8,051,181
1
.
2. One (1) original, unbound copy ofPublic Exhibit 2, Certified Copy of the Recorded
Assignments for U.S. Patent No. 8,051,181.
3. One (1) CD loaded with Exhibits 1 and 2 referenced above, as well as Public versions of
Confidential exhibits 3C, 23C and 27C.
4. One (1) additional copy ofthe exhibits for service upon the proposed respondent; and
one (1) additional copy of the exhibits for service upon counsel for the respondent once
appropriate subscriptions to the protective order have been filed, pursuant to 19 C.F .R.
§§ 210.8(a) and 210.11 (a)(1).
5. Four (4) CDs loaded with 215 of the remaining 223 technical references to U.S. Patent
8,051,181 ("the '181 patent"), which were unavailable at the time of filing of the
Complaint, are included as Supplemental Appendix B pursuant to 19 C.F.R. §
1
Complainant's November 4, 2011, letter to Secretary Holbein regarding initiation of an lTC investigation stated that Complainant would
provide Certified copies of the '181 patent and assignments upon receipt from the U.S. Patent & Trademark Office.
McKool 403309v4
PUBLIC VERSION
The Honorable James R. Holbein November 22,2011
21 0 .12( c )(2 )
2
• We will provide the remaining technical references as soon as we are able
to locate them.
Thank you for your attention to this matter.
Respectfully submitted,
. I
~ L
Benjamin Levi
Enclosures
2
Complainant's November 4, 20 II, letter to Secretary Holbein regarding initiation of an lTC investigation stated that Complainant would
provide the remaining 21 I technical references to the '181 patent upon receipt. Similarly, footnote 2 of the November 4 Complaint stated that
Complainant had obtained 543 of the 754 total references. However, after a recalculation, Complainant discovered there were a total of756
references cited, of which 533 were submitted with the Complaint on November 4.
2
McKool 403309v4
PUBLIC VERSION



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