`
`Paper No.
`Filed: October 30, 2013
`
`
`Filed on behalf of: VirnetX Inc.
`By:
`Joseph E. Palys
`
`Naveen Modi
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
`Telephone: 571-203-2700
`Facsimile: 202-408-4400
`E-mail: joseph.palys@finnegan.com
`
` naveen.modi@finnegan.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NEW BAY CAPITAL, LLC
`Petitioner
`
`v.
`
`VIRNETX INC.
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2013-00376
`Patent 7,490,151
`
`
`
`
`
`
`
`
`
`
`
`
`Submission of Transcript of
`Teleconference of October 29, 2013
`
`
`
`
`
`
`
`Patent Owner VirnetX Inc. hereby submits a copy of the transcript from the
`
`teleconference held on October 29, 2013.
`
`Dated: October 30, 2013
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
`
`Counsel for VirnetX Inc.
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`
`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
`
`1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`——————————————————————————————
`NEW BAY CAPITAL, LLC, |
` Petitioner, | Case IPR2013-00375
` v. | Patent 6,502,135
`VIRENTX INC., |
` Patent Owner. |
`——————————————————————————————
`NEW BAY CAPITAL, LLC, |
` Petitioner, | Case IPR2013-00376
` v. | Patent 7,490,151
`VIRENTX INC., |
` Patent Owner. |
`——————————————————————————————
`NEW BAY CAPITAL, LLC, |
` Petitioner, | Case IPR2013-00377
` v. | Patent 7,418,504
`VIRENTX INC., |
` Patent Owner. |
`——————————————————————————————
`NEW BAY CAPITAL, LLC, |
` Petitioner, | Case IPR2013-00378
` v. | Patent 7,921,211
`VIRENTX INC., |
` Patent Owner. |
`——————————————————————————————
` Tuesday, October 29, 2013
` 3:00 p.m. EST
` Teleconference before the Honorable Sally C.
`Medley, the proceedings being recorded stenographically
`by Jonathan Wonnell, a Registered Professional Court
`Reporter (NCRA #835577) and Notary Public of the State
`of Minnesota, and transcribed under his direction.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
`
`2
` A P P E A R A N C E S O F C O U N S E L
` (All participants appearing by phone)
`
` Patent Trial and Appeal Board:
` HONORABLE SALLY C. MEDLEY
` HONORABLE KARL D. EASTHOM
` HONORABLE STEPHEN SIU
`
` On behalf of Apple Computers:
` JEFFREY P. KUSHAN, ESQ.
` JOSEPH A. MICALLEF, ESQ.
` Sidley, Austin, Brown & Wood
` 1501 K Street, N.W, Suite 600
` Washington, D.C. 20005
` (202) 736-8000
` jkushan@sidley.com
` jmicallef@sidley.com
` -- and --
` JENNIFER YOKOYAMA, ESQ.
` DAVID E. MELAUGH, ESQ.
` Apple Inc.
` 1 Inifinite Loop
` Cupertino, California 95014
` (408) 974-0761
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
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`
`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
`
` A P P E A R A N C E S (Cont'd)
`
`3
`
` On behalf of Virnetx Inc.:
` JOSEPH E. PALYS, ESQ.
` Finnegan, Henderson, Farabow, Garrett &
` Dunner, LLP
` Two Freedom Square
` 11955 Freedom Drive
` Reston, Virginia 20190-5675
` (571) 203-2700
` joseph.palys@finnegan.com
` -- and --
` NAVEEN MODI, ESQ.
` Finnegan, Henderson, Farabow, Garrett &
` Dunner, LLP
` 901 New York Avenue, N.W.
` Washington, D.C. 20005
` (202) 408-4000
` naveen.modi@finnegan.com
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`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
`
` A P P E A R A N C E S (Cont'd)
`
`4
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` On behalf of New Bay Capital:
` ROBERT M. ASHER, ESQ.
` Sunstein, Kann, Murphy & Timbers LLP
` 125 Summer Street
` Boston, Massachusetts 02110-1618
` (617) 443-9292
` rasher@sunsteinlaw.com
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
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`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
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` P R O C E E D I N G S
` (2:00 p.m.)
` JUDGE MEDLEY: Good afternoon. This is
`Judge Medley. I have with me on the line Judges
`Easthom and Siu. This is in regards to
`IPR2013-00375, 376, 377 and 378. Do I have a court
`reporter on line?
` THE REPORTER: Yes, Judge. This is Jon
`Wonnell. I'll put myself on mute.
` JUDGE MEDLEY: All right. Court
`reporter. Great. So we can go ahead and begin.
`And I'd like to take a roll call. For Apple?
` MR. KUSHAN: Jeff Kushan from Sidley
`Austin with Joe Micallef.
` MS. YOKOYAMA: Jennifer Yokoyama with
`Apple.
` MR. MELAUGH: David Melaugh with Apple.
` JUDGE MEDLEY: Okay. And Jennifer and
`David, you're not counsel of record?
` MR. MELAUGH: I am in-house counsel with
`Apple.
` MS. YOKOYAMA: As am I.
`
`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
`
`6
`
` JUDGE MEDLEY: Okay. And then for New
`Bay?
` MR. ASHER: Robert Asher from Sunstein,
`Kann, Murphy & Timbers.
` JUDGE MEDLEY: Thank you. And do you
`have anyone else with you?
` MR. ASHER: Just myself.
` JUDGE MEDLEY: Okay. And then Virnetx?
` MR. PALYS: Hi, Your Honor. This is
`Joseph Palys. And with me is Naveen Modi, both
`from Finnegan Henderson.
` JUDGE MEDLEY: All right. Thank you.
`The panel understands that New Bay would like to
`file a motion to terminate the four proceedings and
`that the request is also not based on a settlement
`agreement. So we'd like to begin the conference
`call letting counsel for New Bay explain the
`situation.
` MR. ASHER: Yes, Your Honor. Actually
`at this point this would be a joint motion to
`terminate in which both parties, Virnetx and New
`Bay, join in this request to terminate the IPRs.
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`www.hendersonlegalservices.com
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`
`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
`
`7
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`The parties no longer wish to contest this
`proceeding and we expect that the normal course
`where there are no parties with anything to
`contest, that the inter partes review should be
`terminated typically pursuant to the statute 35
`U.S.C. 317.
` JUDGE MEDLEY: But that has to do with
`settlement and you've represented that there is no
`settlement.
` MR. ASHER: There is no settlement other
`than the fact that we indicated our interest in
`filing a motion to terminate and Virnetx is in
`agreement with that.
` JUDGE MEDLEY: Okay. So I don't think
`that 317 is the proper statute for this situation
`because under that particular statute, at the top
`it's entitled settlement and then there's
`agreements in writing. If there are agreements,
`you know, you have to file a true copy if you have
`an agreement.
` So in a situation where you don't have
`an agreement or a settlement it doesn't seem to
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`www.hendersonlegalservices.com
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`
`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
`
`8
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`really fit within the purviews of that.
` MR. ASHER: Well, it's not clear to me
`how a settlement is construed. We have the e-mail
`that we sent and the e-mail that Virnetx sent
`agreeing to termination.
` JUDGE MEDLEY: Mm-hmm.
` MR. ASHER: So --
` JUDGE MEDLEY: I mean, to back up, we
`originally understood that Petitioner wanted to
`terminate and that properly could be construed as a
`request to adverse judgment under 42.73 in which
`the Board would enter judgment because you are
`abandoning the contest.
` And we don't have a settlement here. So
`it doesn't seem like that would be the appropriate
`way to go under 317, to terminate. So if we
`authorized a motion to -- for you to file a motion
`to terminate, it seems like that is what you would
`be requesting, unless I'm -- I mean, you're
`abandoning the contest, correct?
` MR. ASHER: Correct. I'm not -- not
`having seen prior cases and seeing anything in the
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`www.hendersonlegalservices.com
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`
`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
`
`9
`statute, it's not clear to us what the effect of an
`adverse judgment would be.
` JUDGE MEDLEY: Well, we were thinking
`that under 325(d), if you were to come back before
`us, that we likely would not institute -- I mean,
`we wouldn't go forward on another petition. That
`is, if you drop this abandonment and then try to
`come back in, I think we'd have a pretty good leg
`to stand on under 325(d).
` And in particular, it says "In
`determining whether to institute order proceeding
`under this chapter, chapter 30, or chapter 31, the
`director may take into account whether, and reject
`the petitioner request because, the same or
`substantially the same prior art or arguments
`previously were presented to the Office."
` So in effect there's no estoppel, Rule
`42.73(b) estoppel, because there is not going to be
`a final determination. However, we feel like that
`the likely scenario would be there would be a
`352(b) estoppel.
` MR. ASHER: Yeah. So the estoppel
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`www.hendersonlegalservices.com
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`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
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`10
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`exists in the Patent Office but there's no final
`decision. So that Statute 315 does not apply?
` JUDGE MEDLEY: I think that's with
`respect to final determination, if I'm not
`mistaken. 315?
` MR. ASHER: Yeah. 315(e) relates to a
`final written decision.
` JUDGE MEDLEY: That's correct. That's
`the way I read that too.
` MR. ASHER: Right.
` JUDGE MEDLEY: But I think that that's
`why 325(d) would be -- that would be the concern, I
`guess, to New Bay. So in other words if you want
`out -- we understand that if you want out you want
`out. You abandon the contest. Then if you tried
`to come back in, you know, I think you're going to
`be out of luck, unless I'm --
` MR. ASHER: We're fine with that as long
`as there's no final written decision that arises
`out of these four IPRs.
` JUDGE MEDLEY: Okay. All right. So I
`then -- I don't know that we need a joint motion.
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`www.hendersonlegalservices.com
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`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
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`It could just be an unopposed motion.
` MR. KUSHAN: Well -- excuse me, Your
`Honor. This is Jeff Kushan. We would oppose that
`motion and we're ready to give you the reasons we
`have for opposing it.
` JUDGE MEDLEY: Okay. Right. I'm just
`trying to work between the two parties that are the
`parties in this case.
` So if that sounds agreeable to New Bay
`we would -- we would probably authorize motion to
`terminate and then you would just file it and say
`it's unopposed. You would, you know, follow 42.73
`requesting adverse judgment, so abandonment of the
`contest. Then we would enter judgment and we would
`cite to 325(d).
` MR. ASHER: Okay.
` JUDGE MEDLEY: All right. Okay. Before
`I move on to hear from Mr. Kushan, does Mr. Palys
`want to chime in?
` MR. PALYS: Thank you, Your Honor. Yes,
`this is Joe Palys for Virnetx. Obviously we don't
`object. We wouldn't oppose that motion. So from
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`www.hendersonlegalservices.com
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`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
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`that standpoint there's nothing more to say from
`Virnetx's side.
` But I do -- since I've already got the
`floor I was wondering if I could address what it
`appears that Apple is going to be voicing in
`opposition.
` JUDGE MEDLEY: Well, let's hear from
`them first. Okay?
` MR. PALYS: Okay. I'll reserve time.
`Thank you.
` JUDGE MEDLEY: Apple?
` MR. KUSHAN: Sure, Your Honor. We've
`looked at every termination decision that has come
`out of the Board, both before institution and trial
`and after institution and trial. One thing that we
`keep seeing is one of the primary determinations in
`whether to grant that motion is whether there is
`concurrent litigation involving the same patent.
` And what we see consistently being
`stated by the panels in these decisions is that the
`absence -- there's an absence of concurrent
`litigation involving the contested patents and that
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`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
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`13
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`is a factor supporting termination. And we take
`from that the view that if there is concurrent
`litigation involving the same patent then that is a
`factor that should be considered against granting a
`motion to terminate.
` JUDGE MEDLEY: But New Bay is not a
`party to the litigation. Is that correct?
` MR. KUSHAN: That's right. But when we
`look at these decisions they don't limit the focus
`to the parties in the IPR. They look at other
`parties, third parties, against whom the patent has
`been asserted. And we believe in this instance
`there are a number of very good reasons, public
`policy reasons, why you should defer terminating
`the proceeding as to New Bay.
` As you'll recall, you authorized a
`briefing of a joinder motion for Apple's petitions
`relative to the petitions that have been filed by
`New Bay.
` JUDGE MEDLEY: Right.
` MR. KUSHAN: That briefing is complete,
`as is the briefing -- the patenter has filed
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`www.hendersonlegalservices.com
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`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
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`14
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`oppositions, their opening statements, their
`openings responses, in all of the petitions that
`have been filed both from New Bay and Apple. And
`so the record is pretty much complete right now
`waiting for the Board to act on all these petitions
`and the joinder motion.
` Our view is that you should defer
`termination of the proceeding as to New Bay until
`after you decided whether to institute the
`proceeding and decide the joinder motion. We've
`all invested a fair amount of effort to bring the
`issues for joinder, and we believe that the
`proceeding is certainly warranted based on the
`merits of the claims and the status of those claims
`and concurrent Office proceedings. Both -- each of
`those claims and each of the patents has been held
`unpatentable at this point.
` So in our view the filing of a motion to
`terminate at this point in the proceedings is
`premature and would be a waste of time for
`everybody. We believe that the ultimate outcome of
`the proceedings, both from the basis of the Apple
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`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
`
`15
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`petitions or from the basis of the New Bay
`petitions, is something that should be taken up and
`conducted in an IPR. And through the joinder
`motion hopefully you would grant the motion to join
`these proceedings.
` One thing as well I just wanted to make
`clear is that we would -- while we would oppose the
`termination at this point before you've had a
`chance to consider the joinder motion and make a
`determination on that, we would not oppose New Bay
`being terminated in the proceeding if you were to
`institute trial. And from that perspective we
`believe it's somewhat efficient for you to defer
`the question of whether it's appropriate to
`terminate or not.
` I want to make sure you're also aware
`that -- and we've done -- in our periodic updates
`there's an appeal proceeding underway out of a
`district court action in Texas. Virnetx had filed
`two actions under these patents against Apple and a
`number of other parties. The first trial ended and
`that decision, which was adverse to Apple, is on
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`www.hendersonlegalservices.com
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`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
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`appeal at the federal circuit. We've just filed an
`opening appeal brief about a week and a half ago.
` JUDGE MEDLEY: Mm-hmm.
` MR. KUSHAN: We want to flag that
`because in the event that that appeal proceeding
`does not reverse the judgment of the district court
`in Texas, then some of the claims that have
`presently been found unpatentable by the Office in
`their inter partes reexamination proceedings may
`not be continued in the PTO proceedings.
` So there's at least some claims that are
`currently found to be unpatentable in the PTO in
`inter partes review, inter partes reexamination,
`which may not get to an ultimate outcome because of
`the estoppel provisions of the old law. And so
`there is a public policy reason for the Office to
`continue its conducting of an evaluation of the
`patentability of at least some of these claims in
`our view. That wouldn't be a factor we think as
`relevant to continuing an IPR on the basis of these
`proceedings.
` So to wrap up, we look at this situation
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`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
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`as something where if the panel were to consider
`and act on the petitions that have been filed and
`on the joinder motion briefed and were to decide to
`institute trial, we would not oppose at that point
`the withdrawal of New Bay from these proceedings
`and that would in one sense obviate the need for
`any briefing or discussion of the motion to
`terminate with regard to them.
` JUDGE MEDLEY: Okay. This question for
`you: How does it become proper, then, if we were
`to go forward, join the cases, and then let them
`out? How is it proper at that point for them to
`come out of the cases when prior to it would be
`improper because of the ongoing litigation?
` MR. KUSHAN: Well, the question I think
`that's uncertain at this point is the status of
`Apple's petitions under the section 315 of --
`315(b). And we know that there have been a couple
`decisions of panels looking at situations where a
`party has been sued more than one year prior to the
`institution or its filing of a petition.
` Our case involves a somewhat different
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`Henderson Legal Services, Inc.
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`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
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`18
`situation. We have been sued twice by Virnetx and
`we're within the second window of that litigation.
`So, you know, in one sense if the Board were to
`find that the first institute, the first trial, the
`first action, set the clock and is not reset by the
`second action Virnetx has filed, then there may be
`a scenario where we would not be able to
`participate in an IPR in this case absent the
`joinder of our proceeding to the proceedings -- the
`petitions that have been filed by New Bay.
` So in this instance there is a
`consequence of the timing of the termination
`decision by the panel that may arise. And then
`again, we're somewhat in uncertain status right
`now. We don't know exactly how you would act on or
`consider the question of 315(b) relative to the
`Apple petitions. But --
` JUDGE MEDLEY: Okay. Okay. I think I
`understand. I just thought -- at first you had
`said that the Board had come out with some decision
`saying that we wouldn't terminate a proceeding if
`there was ongoing litigation between the parties or
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
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`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
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`something to that effect.
` MR. KUSHAN: Yes. And --
` JUDGE MEDLEY: And we all recognize that
`New Bay is not part of the litigation. But then
`you said it didn't matter, that any third party,
`that that would be applicable.
` And so I'm just trying to clarify. You
`said that that should prevent us from going forward
`with the termination, but after we were to
`institute then it would be okay. So I was just
`trying to clarify if it was okay if we were to join
`the cases.
` MR. KUSHAN: Sure. Well, let me try to
`make this very clear. I think the statute is very
`clear that you would be able to institute trial on
`the basis of the Apple petitions when they're
`accompanied by a joinder motion. And the joinder
`motion would be authorized, is connected to the New
`Bay petitions.
` So if you were to institute trial on the
`basis of the Apple and New Bay petitions there's no
`question you're entitled to conduct trial once
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
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`that's been determined.
` What we've seen in all the termination
`decisions that have come out of the panel is that
`the panel will weigh as a factor whether to grant
`termination the existence against any party of
`litigation involving the same patent. In fact that
`seems to be the only criteria that seems to be
`consistently identified in justifying termination.
` So those are two separate --
` JUDGE MEDLEY: But that is a post
`institution, right? That's not a factor that we
`weigh necessarily before we institute?
` MR. KUSHAN: No. It's been in a number
`of pre-institution cases as well. I can give you a
`couple of the orders.
` JUDGE MEDLEY: No. That's okay. I
`think we can find them if they're out there.
` MR. KUSHAN: There's about a half a
`dozen of them.
` JUDGE MEDLEY: Okay. Thank you very
`much. And now I'd like to hear from New Bay.
` MR. ASHER: Firstly, Your Honor, we
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
`
`21
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`don't see how Apple has standing to present
`arguments or take a position in these IPRs at all.
`The joinder is not timely. The IPRs have not been
`instituted. And so we don't see how Apple has any
`standing at all.
` Secondly, if you are going to consider
`concurrent litigation, please understand that New
`Bay has been subjected to seven subpoenas. I've
`been subpoenaed. My partner has been subpoenaed.
`My firm has been subpoenaed. We've been subjected
`with over 300 document requests, 300 documents for
`deposition. There have been briefs filed in
`Massachusetts, Delaware and Florida to quash these
`discovery requests from Virnetx.
` It is New Bay's interest in bringing
`this all to an end and taking the relevance of
`these proceedings totally off the board as soon as
`possible so that it does not have to incur these
`continued gross legal expenditures to deal with all
`the discovery requests that are out and ongoing.
` So if the concurrent litigation is a
`factor in your decision we think those things
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
`
`22
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`should be taken into account so that the Board
`would terminate this proceeding as soon as
`possible.
` JUDGE MEDLEY: Okay. Are you finished?
` MR. ASHER: Yes.
` JUDGE MEDLEY: All right. And then
`counsel for Virnetx?
` MR. PALYS: Thank you, Your Honor. Just
`to address some of the points that Apple's counsel
`has raised, just to begin with, you know, we kind
`of agree with New Bay's counsel that we think --
`Apple is not a party to these proceedings right now
`and we think it would actually be against public
`policy to allow an entity to interfere with the
`joint requests of the only participants in this
`proceedings, in this case New Bay and Virnetx,
`willing to terminate these IPR proceedings.
` And having said that, you know,
`regarding the public policy, I think the Patent
`Trial Office practice guides suggest that there is
`strong public policy reasons to favor settlement
`and thus termination between parties, especially if
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
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`23
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`there's a joint request to do that.
` JUDGE MEDLEY: But there's no
`settlement, so --
` MR. PALYS: Well, we understand that,
`but the point is that we think that -- if there is
`a joint request between the parties to terminate
`the proceedings, we think there is actually even
`more strong public policy to do so if it's before
`institution.
` Again, the only two parties that are
`really involved in these proceedings is New Bay and
`Vernetx and both are willing to terminate the
`proceedings and we think it actually helps the
`public policy or supports this idea of favoring
`settlement, if you will, or, if not, termination.
` JUDGE MEDLEY: Okay.
` MR. PALYS: Following along with --
`about prejudice, Apple raised some issues on
`prejudice. Just A couple points on this.
` Apple, as you know, Your Honor, already
`has -- I don't know. I think it's around eleven
`inter partes reexams pending against Virnetx
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
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`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
`
`24
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`patents. Some of those involve all four of the
`patents at issue in the New Bay IPRs. The same
`claims, the same patents and the same prior art.
` So the fact that Apple not being able to
`participate in the IPR, I think they have these
`inter partes reexaminations. They're going to have
`the same body review these eventually, which is the
`PTAB, and they did it through appeal. So we think
`they will have their day in court regarding
`challenging the validity of the same patents here.
` The second point is, you know, according
`to Apple and in their petitions and even in their
`motion to terminate, that they don't have a 315(b)
`problem. I mean, when they filed their petitions
`they specifically said their position was that
`they're not time barred. Of course Virnetx
`disagreed with that, but from Apple's perspective,
`they don't need New Bay's petitions.
` So they have their own -- I believe it's
`seven IPRs pending right now. There would be no
`prejudice, according to them, because under 315(b)
`doesn't apply to their petition.
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
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`
`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
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` JUDGE MEDLEY: Okay. All right.
` MR. PALYS: And one last point, Your
`Honor. I'm sorry to interrupt. But just on the
`idea of motion for joinder, I believe -- I'd like
`just to point the Board to the decision by Judge
`Lee in IPR 2013, 134. That's paper number 34. And
`in there Judge Lee specifically points out that a
`motion to joinder does not and should not act as an
`automatic stay of the proceedings.
` Facts very similar to what we're
`addressing here. In this decision they were
`addressing an adverse judgment request. And the --
` JUDGE MEDLEY: Okay. I'm aware of that.
` MR. PALYS: Thank you.
` JUDGE MEDLEY: Okay. I think we have
`enough information and we're going to confer so if
`you'd please wait for us for a few minutes we will
`get back on line.
` (Pause, approximately 2 minutes.)
` JUDGE MEDLEY: Okay. The panel is back.
`And we're going to take it under advisement, all of
`the arguments from today. When can we get a
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
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`transcript?
` THE REPORTER: I have no problem getting
`it to you tomorrow morning.
` JUDGE MEDLEY: Okay. So if you could
`file that tomorrow morning we should been able to
`get an order out in the next day or two.
` Okay. Are there any questions,
`comments?
` MR. KUSHAN: Yes, Your Honor. Just one
`last thing. I wanted to -- I mean, if you would
`like any updates on the status of these
`proceedings, we've been filing them but there seems
`to be some question based on Virnetx's comments
`about which ones we've filed at Apple, what the
`status of them are and other variables.
` If that's relevant we're happy to
`provide you with further information.
` JUDGE MEDLEY: Okay. We'll let you
`know. Any other questions, comments?
` MR. PALYS: Not from Virnetx, Your
`Honor.
` MR. ASHER: No, thanks.
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`
`
`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
`
`27
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` JUDGE MEDLEY: Okay. Thank you very
`much.
` MR. ASHER: Thanks.
` MR. KUSHAN: Thank you.
` JUDGE MEDLEY: Bye.
` (Whereupon, the conference call ended at
`3:27 p.m. EST.)
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`Patent Nos. 6,502,135, 7,490,151, 7,418,504, 7,921,211
`Teleconference
`October 29, 2013
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` CERTIFICATE OF REPORTER
` I, Jonathan Wonnell, a Registered
`Professional Court Reporter (NCRA #835577) and
`Notary Public of the
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