`571-272-7822
`
`Date: November 1, 2013
`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`NEW BAY CAPITAL, LLC
`Petitioner
`
`v.
`
`VIRNETX, INC.
`Patent Owner
`____________
`
`Cases IPR2013-00375 (Patent 6,502,135 B1)
` IPR2013-00376 (Patent 7,490,151 B2)
` IPR2013-00377 (Patent 7,418,504 B2)
` IPR2013-00378 (Patent 7,921,211 B2)1
`____________
`
`
`Before SALLY C. MEDLEY, MICHAEL P. TIERNEY, KARL D. EASTHOM,
`and STEPHEN C. SIU, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`1 This order addresses a similar issue in the four cases. Therefore, we exercise
`discretion to issue one order to be filed in each case. The parties, however, are not
`authorized to use this style of heading in subsequent papers.
`
`
`
`Case and Patent No.
` IPR2013-00375 – 6,502,135 B1
` IPR2013-00376 – 7,490,151 B2
` IPR2013-00377 – 7,418,504 B2
` IPR2013-00378 – 7,921,211 B2
`
`
`On October 29, 2013, a conference call was held between counsel for the
`
`respective parties and Judges Medley, Tierney, Easthom and Siu.2
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`The purpose of the conference call was for New Bay to seek Board
`
`authorization to file a motion to terminate the four proceedings. VirnetX does not
`
`oppose the filing of the motion.
`
`
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`Counsel for New Bay explained that New Bay is abandoning the contest.
`
`Paper 12 at 8 (IPR2013-00375). The Board explained that a motion to terminate
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`making such a representation would be construed as a request for adverse
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`judgment under 37 C.F.R. § 42.73(b)(4). Based on the facts presented, the Board
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`further explained that if the Board grants a motion to terminate, New Bay likely
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`would be estopped from challenging the same VirnetX patents before the Office at
`
`a later time under 35 U.S.C. § 325(d). Paper 12 at 10. (Id.)
`
`
`
`Based on the facts of these proceedings, New Bay is authorized to file four
`
`motions to terminate the four proceedings briefly explaining that the motion is
`
`unopposed by VirnetX and why termination is appropriate in this case in
`
`accordance with the conference call held before the Board. Apple, as a third party,
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`is not authorized to file an opposition to the motions to terminate.
`
`Accordingly, it is
`
`ORDERED that New Bay is authorized to file four motions to terminate the
`
`four proceedings;
`
`FURTHER ORDERED that the motions are due November 6, 2013; and
`
`
`2 Counsel for Apple, Inc. in related proceedings IPR2013-00348, -00349, -00354, -
`00393, -00394, -00397, and -00398 was also on the call. A court reporter was
`present.
`
`2
`
`
`
`
`Case and Patent No.
` IPR2013-00375 – 6,502,135 B1
` IPR2013-00376 – 7,490,151 B2
` IPR2013-00377 – 7,418,504 B2
` IPR2013-00378 – 7,921,211 B2
`
`
`FURTHER ORDERED that Apple, as a third party, is not authorized to file
`
`an opposition to the motions to terminate.
`
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`3
`
`
`
`
`Case and Patent No.
` IPR2013-00375 – 6,502,135 B1
` IPR2013-00376 – 7,490,151 B2
` IPR2013-00377 – 7,418,504 B2
` IPR2013-00378 – 7,921,211 B2
`
`For PETITIONER:
`
`Robert Asher
`rasher@sunsteinlaw.com
`
`Jeffrey Klayman
`jklayman@sunsteinlaw.com
`
`
`
`For PATENT OWNER:
`
`Joseph Palys
`joseph.palys@finnegan.com
`
`Naveen Modi
`naveen.modi@finnegan.com
`
`
`
`
`4
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`
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