PLANET DEPOS
`VVe
`it »happen.
`
`Transcript of TELEPHONIC CONFERENCE CALL HELD
`BEFORE JUDGES EASTHOM, SIU, TIERNEY
`
`Date: January 16, 2014
`
`Case: RPX CORPORATION v. VIRNEXT, INC. AND SCIENCE
`APPLICATION INTERNATIONAL CORPORATION
`
`Planet Oepos
`Phone: 888-433-3767
`Fax : 888-503-3767
`Email: transcripts@planetdepos.com
`Internet: www.planetdepos.com
`
`Court Reporting I Videography I Videoconferencing I Interpretation I Transcription
`
`RPX Corporation Exhibit 1077
`RPX Corporation v. VirnetX, Inc. et al.
`Case IPR2014-00171
`
`
`VVe
`it »happen.
`
`Transcript of TELEPHONIC CONFERENCE CALL HELD
`BEFORE JUDGES EASTHOM, SIU, TIERNEY
`
`Date: January 16, 2014
`
`Case: RPX CORPORATION v. VIRNEXT, INC. AND SCIENCE
`APPLICATION INTERNATIONAL CORPORATION
`
`Planet Oepos
`Phone: 888-433-3767
`Fax : 888-503-3767
`Email: transcripts@planetdepos.com
`Internet: www.planetdepos.com
`
`Court Reporting I Videography I Videoconferencing I Interpretation I Transcription
`
`RPX Corporation Exhibit 1077
`RPX Corporation v. VirnetX, Inc. et al.
`Case IPR2014-00171
`
`
`
`1
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`UNITED STATES PATENT AND TRADEMARK OF F ICE
`
`BEFORE THE PATENT TRI AL AND AP PEAL BOARD
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`-- ------ - ------- ----- --------- ----- ---x
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`RPX CORPORATION,
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`Pe titioner,
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`v .
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`Case IP R
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`2014 -0 0171
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`VIRNETX,
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`INC . AND SC IENCE APPLICATION
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`Patent
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`I NTERNATIONAL CORPORAT I ON,
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`6 , 502,135
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`Pa tent Owner
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`-- ------ ------- -- ---- ------ - ---------- x
`
`CONFIDENT I AL - PURSUANT TO PROTECT I VE ORDER
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`Te lephon ic Confer ence Call
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`Held Before Judge s Eastham, Siu, Tier ney
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`j
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`Th ursday, Janu ary 16 , 20 14
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`4:00 p . m.
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`Job No.: 51086
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`Pa ges: 1 -
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`42
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`Repor ted by: Bonnie Pa nek
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`_ • • • • :rELEPHONIC CONfERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`A P PEA RAN C E S
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`ON BEHALF OF PETITIONER RPX:
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`OLIVER R. ASHE, JR., ESQUIRE
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`ASHE, PC
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`11440 Isaac Newton Square North
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`Reston, Virginia 20190
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`(703) 467-9001
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`GREGORY M. HOWISON, ESQUIRE
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`HOWISON & ARNOTT, LLP
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`Lincoln Centre II
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`5420 LBJ Freeway
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`Suite 660
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`Dallas, Texas 75240
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`(972) 479-0462
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`888.433.3767 I WWW.PLANETDEPOS.COM
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`__ • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHaM . SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,20 13
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`A P PEA RA N C E S CON T I N U E 0
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`ON BE HA LF OF RESPONDENT VIRNETX:
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`JOSEP H E. PALYS , ESQUIRE
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`FINNEGAN , HENDERSON, FARABOW , GARRETT &
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`DUNNER , LLP
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`Two Fr eedom Square
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`11955 Freedom Dr i ve
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`Reston , Vi r gin i a 20190
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`(5 71) 203 - 2700
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`NAVEEN MODI , ESQUIRE
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`F I NNEGAN , HENDERSON , FARABOW , GARRETT &
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`DUNNER, LLP
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`901 New York Avenue , NW
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`Wash ington, DC 200 0 1
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`(?02) 408 - 4000
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`___ .~TELEPH ONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`A P PEA R AN C E S CON TI N U E D
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`ON BEHALF OF RESPONDENT APPLE:
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`JEFFREY P. KU SHAN, ESQUIRE
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`JOSEPH A. MICALLEF, ESQUI RE
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`SIDLEY AUSTIN , LLP
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`1501 K Stree t, NW
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`Wash ington, DC 20005
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`(202) 73 6- 8000
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`• • • • aTELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`CON TEN T S
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`PAGE
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`E X H I BIT S
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`(None. )
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`REMARKS BY :
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`Mr. P alys
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`Mr . Modi
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`Mr. Ashe
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`Mr . Kushan
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`RUL I NG ISSUED :
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`FURTHE R REMARKS BY:
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`Mr. Mod i
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`Mr. Paly s
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`Mr . Kushan
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`Mr. Ashe
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`Mr. Kushan
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`Mr . Ashe
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`" ";''''': .'''_';';",,,00'''· ~ ~~~
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`888.433.3767 I WWW.PLANETDEPOS.COM
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`_____ .TELEPHONIC CONFERENCE CA LL HELD BEfORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANU ARY 16,2013
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`PRO C E E DIN G S
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`JUDGE TIERN EY: Due to the issues tha t were
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`raised previously ,
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`I ' m going to begin the cal l by
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`ask ing is eve ryone o n t he line at this point in time
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`subject to the prot e ct ive order .
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`If not , please speak
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`up .
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`I note n o o ne objected to or po inted out
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`t hat they we r e not sub j ect t o the protect i ve orde r .
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`Accordingly, eve r yo ne on the line today is subject to
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`the boards d e f au l t protect i ve order.
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`If th ere ' s a ny
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`questions about t hat please speak up now or we 'l l
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`b egin. Heari ng no objection, we 'll begin today.
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`Vir net X,
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`I bel ie ve we le ft off wi t h some
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`ques t ions a nd concerns possi b ly about a discovery t ha t
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`was occurring in d i str i ct co urt, and we wanted to have
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`a few more d e t a ils, so I'd like you to beg i.n toda y by
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`giving us a littl e backgro und on th e dist r ict cou rt
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`action and ju st a brie f ove rview of the n atu re a nd
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`scope of t he di scove ry t o da te in th ose cases as it ma y
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`p erta i n to this p r oceed ing today .
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`MR . PALYS :
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`Su r e , Your Hon o r. Yeah , as we
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`lef t off th e bo ard ask ed us to look into what d i scovery
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`888.433.3767 I WWW.PLANETDEPOS.COM
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`• ___ .
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`TELEPHONIC CON FERENCE CALL HELD BEFORE JUDGES EASTH OM. SIU. T IERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
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`was bei ng sought i n the district cou r t li tigat io n .
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`We've had t ime to do t hat and we've obt ained copies o f
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`the discovery reques t, and I 'll be happy t o discuss
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`them with you and ge t in to any detail s th a t you wa nt
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`to .
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`I' d jus t
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`l ike t o r a ise a coupl e of poin t s
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`be f o r e I do that because I
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`t hink t hey ' re re l evant to
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`th is t ype of di scovery . The fi rst poin t , Your Ho nor ,
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`is that dis covery that ' s sought in that distr i ct court
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`from RPX is for purposes of that litigation. Now , as
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`you 'll know
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`MR . HOWISON : This is Greg Howison .
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`JUDGE TIERNEY : Thank you for joining, and
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`ju s t con fir min g you ' re sub jec t
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`t o the protective order?
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`MR . HOWISON : Yes , s ub ject to the protective
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`order, yes .
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`JUDGE TIERNEY : Thank you. Mr . Palys ,
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`please continue .
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`MR . PALYS : Thank you , sir. Now , you ' re
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`going to see there is some ove r l ap with the type of
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`in formati o n that ' s sough t in t he distri ct co urt and
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`with the r eal party of inte res t issues that we ' r e
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`• • • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`discussing in these proceedings, but that overlap in
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`the discovery itself is for purposes of that
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`litigation.
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`The second point, Your Honor, is that
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`currently RPX in that district court proceeding is
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`refusing to provide any discovery in that litigation
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`and, in fact, RPX had objected to that discovery before
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`Mr. Ashe even raised this issue on the call last week.
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`JUDGE TIERNEY: Mr. Palys, could you please
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`clarify for us? You say that litigation. Give us a
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`little background on what you're referring to as that
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`litigation.
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`MR. PALYS: Sure.
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`I'm sorry, sir.
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`So
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`there's litigation between VirnetX and Apple.
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`I'm
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`looking up the captions right now, sir. There's a
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`matter, Civil Action Number 611CD-563, and that's
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`pending in the Eastern District of Texas, Tyler
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`Division, and that's against Apple, Incorporated.
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`And then there's another litigation in the
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`same district, Your Honor, against Microsoft
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`Corporation, and that's 613CD-351. There's actually
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`another Civil Action Number for the Apple one I forgot
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`• • • • • aTELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EAST HOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 201 3
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`t o mention, Your Honor .
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`I th ink they 're the same
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`action, ju st different action numbers. Tha t ' s
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`612CD-855, and in t hese - -
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`that's what I wa s r efe rring
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`to with th ose li t ig at i ons .
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`J UDGE TIERNEY:
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`Tha nk you.
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`MR. PALYS : Sure .
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`So back to t hat second
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`po i nt --
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`MR. AS HE: Your Hono r, just since we ' re
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`discussing t hi s litigatio n, we should no te t ha t RPX is
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`not a party to a ny of t h e s uits that were described .
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`JUDGE TIERNE Y: That's righ t . That was
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`clear f r om the capt i on at this po int . Le t' s l et Mr .
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`Pa l ys h ave the floor a nd go over t he det ai l s and then
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`you wi l l have an oppo rtu n i ty to chime in, bu t let ' s
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`t inish up with Mr. Pal ys .
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`MR. PALY S : Thank you, sir. Cont inuing on
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`with what I wa s say ing, basical ly the point he r e is
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`that to th e extent RPX may be forced to give that
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`discovery i n t hose l i tigations ,
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`I should say , becau se
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`th e re's t wo o f the m, we don ' t k now when a nd i f
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`t ha t may
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`be .
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`And l ast l y , r eally, Your Honor ,
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`i s that even
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`• • • • • ~TELEPH ON I C CONfERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDA Y, J ANU AR Y 16, 2013
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`if RPX i s fo r c e d by co ur t order or ot herw ise to give
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`t h e d i s cove ry th a t ' s be ing sought in t he re i t ' s co vered
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`by a protec t ive orde r , a nd we raised th i s I belie v e
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`last week if th a t' s so .
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`Eve n i f
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`t he di s c overy i s ava i lable in th e
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`l it iga t ion fO r . p urposes of th a t
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`l i t i ga t i on we ca n ' t use
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`i t he r e in t hese p r o c eed i ngs, and I be li eve there is
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`s ome -- a t
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`l e a s t some -- at l east one board d ecisio n
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`where t he boa r d h as b a s i cally l eft i ssues of t h e
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`protective orde r at t he dis trict cour t
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`l e vel to t h e
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`district c ourt .
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`So ba sical l y given the speed of t hes e
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`p r oceedi ng s , we bel i eve t he prope r mecha n i s m here is t o
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`addr ess th e r e al par t y o f
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`i nt erest i s sues i n t hes e
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`proceed i ng s t hrough t he a d d it ional di s cove r y me ch a n i s ms
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`provided un de r th e r u l e s
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`i n Garmin, and so I
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`j u s t
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`wanted to ma k e s ur e t h e boa rd is awar e of t h os e i s s ues
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`here.
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`I'm h a ppy to go in t o th e di sc overy that' s b e ing
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`sought and any de t a i l s that t he board may wan t to .
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`J UDGE TI ERNEY : Well , we 're t a lking i n
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`ge nera l di s covery s ought .
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`I t ha s been ment ione d a t
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`l e a s t
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`f rom the cap ti on i t would a ppe ar RPX i s n ot a
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`• • • • • • TELEPHON IC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANU ARY 16,201 3
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`pa r ty . Please e xp lain , firs t o f a ll , why the discovery
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`wou l d be sough t agai ns t a nonp a r t y h e r e or a third
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`p arty, an d wh at is th e scop e of the d iscover y that is
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`be ing s ou ght . You mentione d there was a overlap .
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`Could you give a few more details?
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`MR . PALYS :
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`Sur e .
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`So t he categories of
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`i nforma t ion sought in the RPX s ubpoenas , Your Ho n o r ,
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`re l a te s to -- th e RPX ' s corpo r ate structure ,
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`or ganiz ation, what it does , it s int erests ,
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`r elationship , communications with var io u s companies
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`i ncluding Apple , Microsoft , Cisco, New Bay , et cetera ,
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`and tha t' s
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`t he majority o f the t ype o f informa ti on
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`sought by the -- th e dis cover y request in topics.
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`There ' s also ano t he r cat egory t hat relates
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`to vi r ne t X's pa t ent s and the va r ious IPR petitions ,
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`r e al pa r t y in interest , and p rior ar t rela t ed to
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`VirnetX's patents .
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`JUDGE TIERNEY : Ok ay .
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`So t hey were s eeking
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`discovery in the district cour t s pec i fic to the IPRs?
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`MR. PALYS:
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`That ' s ri ght.
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`J UDGE TIERNEY: Okay . And how does that
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`pe r ta i n to the d istric t court litiga ti on?
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`• • • • • tTELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`MR. PALYS: Well, as I understand it there's
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`several issues, I believe, and again I just want to
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`make sure the record is clear that we don't represent
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`VirnetX in the litigation, but for terms of
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`JUDGE TIERNEY: Let me stop there. Do you
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`represent VirnetX today?
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`MR. PALYS: Yes, Your Honor.
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`JUDGE TIERNEY: Okay.
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`So you're
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`representing VirnetX in general, so I just want to keep
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`it clear that when you're speaking you're speaking for
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`VirnetX today?
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`MR. PALYS: Yes, Your Honor.
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`JUDGE TIERNEY: Okay. Thank you.
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`MR. PALYS: Yes, Your Honor.
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`So my point
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`was -- is that there are issues relating to the
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`liti.gat i.on why that discovery be sought. One example
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`would be estoppel issues under Section 315.
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`There could be entities that may be in
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`privity with RPX, and if -- for example, if these IPR
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`proceedings proceed and there's an estoppel that
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`applies, the issue of who's in privity with that
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`estoppel may apply in terms of a litigation issue.
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`_____ .. TELEPHON IC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
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`J UDGE TIERNEY : Let ' s s top toddy .
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`Is Lltere
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`any potenti al for estoppe l if we ended the case t oday
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`with a non i n s t i t ut i on ?
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`MR . PALY S : Well, my unders ta ndin g i s t hat
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`estoppel doe sn ' t app l y until a final wri t ten decision .
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`J UDGE TIERNEY: But you ' ve a lready sough t
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`di scove ry on an i ssue t hat is not an actua l issue t h en .
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`You ' ve taken upon a potential issue tha t mayor may not
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`oc cur.
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`MR. PALY S : We ll , yeah. Ag ain , my -- le t me
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`-- I just want to say the reaso n why I brought up that
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`I don 't represent VirnetX i n th e l it i gation issue is
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`not j us t
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`t o say I don ' t represe nt Vi rn e t X, Your Honor .
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`I
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`j ust wa nt to be c l ear t hat there's issues t ha t
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`l i tigation counsel may be bes t to addr ess some of these
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`issues.
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`So I wa nt to make sure that I ' m just
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`mindful, and what I'm sayi ng here has bee n my basis of
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`representing Vir netX in these p r oceedings , but having
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`sa id t ha t , the idea t h at they're seeking discover y
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`during d i scovery of a liti ga tion I think that - -
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`I
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`don 't see a -- I guess a problem wi th doing that
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`• • • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`because there's a time frame, as you know, to seek the
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`discovery.
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`And the estoppel issues that may occur will
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`eventually -- may occur after the -- if an estoppel
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`issue raises, and of course there's also broader
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`discovery in district court under at least the federal
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`rules that apply there, too.
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`JUDGE TIERNEY:
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`I would like to know for
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`purposes of today if VirnetX obtained information it
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`thought was pertinent to this case through their
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`discovery in the district court litigation would you
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`then try and bring that to our attention?
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`MR. PALYS:
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`If it was relevant to this case,
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`absolutely, Your Honor, but the issue here is that --
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`as I kind of pointed out in the beginning is that it's
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`not available.
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`We can't use it under the protective order
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`right now, so basically again RPX is refusing to
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`provide any discovery, but if they are for some reason,
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`if they're compelled to produce this discovery and
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`there's some overlap of information that's relevant to
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`the narrow issues that we're discussing for these
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`• • • • • • ;rELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM, SIU, TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`proceedings, well, certainly we would raise that to the
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`board's attention.
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`I mean, the point here is, Your Honor, we're
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`-- we think that the mechanisms for the proceedings
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`here are proper through additional -- the additional
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`discovery mechanisms and the rules allowing such
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`discovery for these IPR proceedings. There's -- the
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`fact that there's discovery ongoing in a litigation,
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`again it is focused toward those issues in a
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`litigation.
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`JUDGE TIERNEY: Forgetting the focus to the
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`litigation issues, but their focus right now is on the
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`second category to the IPR issues apparently.
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`MR. MODI: Your Honor,
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`I can try to maybe
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`address that question. I'll try.
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`So I think that the
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`iSSlle is similar as to what Mr. Palys was saying.
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`Obviously the reason the IPR issues are -~ were raised
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`in those subpoenas to RPX in the district court, our
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`understanding is again for issues raised in the
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`district court yet, you know, we don't deny having
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`looked at the discovery.
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`There is overlap in the type of discovery we
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`• • • • • ItTELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`will be seeking from the board. You kIIOW, that's --
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`obviously was the purpose of the last three calls, not
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`including this one, but that discovery always was
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`intended for use in the district court, and one issue
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`we have is RPX, if and when it gives VirnetX any
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`information in those litigations, we may not even know
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`what the information is because it's presumably going
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`to be marked under the protective order in those cases.
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`So we may not be -- even though VirnetX may
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`have that information, Your Honor, or VirnetX's counsel
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`might have it, as counsel for VirnetX in these IPR
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`proceedings we may never see that information, so
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`that's the issue we're having.
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`But we can assure you that the discovery
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`that we're seeking is for purposes of the district
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`court, and as you're well aware to the extent that
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`RPX has already objected and that's an issue for the
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`district court to decide, and presumably it will decide
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`that issue at some point.
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`As we stand today, RPX has objected to every
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`single request in the district court, and it has
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`• • • • • ~TELEPHONIC CON fERENCE CALL HELD BHORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`c l early t o ld Vir ne tX it doe s not intend t o p r ov i d e any
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`documents or te s timony , s o I feel the is s ue ma y be moot
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`at this point. Ag ain , we're happy to s ee k th e board ' s
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`guidance on thi s
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`i s sue .
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`If RPX on th i s c a l l
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`t oday
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`tells us they ar e wil l ing to give informat i o n in th e
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`d i strict c ou rt we a r e more than happy t o withdr aw t he
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`request he r e , You r Honor .
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`We ar e try ing t o figure ou t how do we ge t
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`this informati o n in fro nt of You r Honor i n t hese IP R
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`proceedings, because a gain given the speed o f th e
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`proceedings we ma y be in a situat ion whe r e le t' s s ay
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`RPX is compe l led t o p r oduce t hat discove r y by t h e
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`dist r ic t cour t
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`i n t he d is t r ic t c ourt l i ti g at i o n.
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`It
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`may be t oo l ate . These p r oceedings ma y be well
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`underway.
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`And we obvio usly would like to b r ing th e se
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`issues up t o the board now through th e mech a ni s ms
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`provided by Garmin,
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`t hr ough the AlA, and as y ou ' re well
`
`aware the tri a l pra c ti ce guide ac t ua l l y does s ay o ne o f
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`t he is sues t h a t s ho uld be raised early in the ca ses is
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`the real par ty in inte r e s t , and that's p r ec i s e ly what
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`we ' ve done he r e, so we wou l d of cours e s eek Your
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`888.433.3767 I WWW.PLANETDEPOS.COM
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`• • • • • ~·TELEPHON IC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16. 2013
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`Ilonor 's gu i dan ce where we go fr om here , but t hat ' s our
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`18
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`position .
`
`JUDGE TIERNEY : Anything else be for e I
`
`t urn
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`it over t o App le -- I ' ll turn it over n e xt to RPX , but
`
`is t here anyth i ng furthe r from Vir ne tX?
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`MR. PALY S : No , You r Honor.
`
`JUDGE TI ERNEY : Okay. RPX ,
`
`i f you ' d like t o
`
`a ddr ess some of the issues t hat were raised you may do
`
`so no w .
`
`MR . ASHE : Okay . Thank you, Your Honor .
`
`Firs t wi th regard t o th e characteriz at ion of t h e
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`subpoenas that we r e se rve d on RPX,
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`I d isagr ee wit h the
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`charact erizati o n t hat they ' re anythin g other tha n
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`d i rected t o these proceedings .
`
`And t h e discovery tha t they ' re seek i ng in
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`the distri ct court i s esse ntially the same a s wh at
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`th ey're dri ving for h ere , a nd that is the unde rl y ing
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`fac ts for the rea l party in interest, and I think that
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`You r Honor has touched on t he approp ri ate i ss ue with
`
`r esp ect to the d is tr ic t cour t, and that ' s one o f
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`ripeness .
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`The issue regar ding estoppe l at a minimum is
`, ....... _.",
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`_ • • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHaM. SIU, TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`not ripe in Lhe disLricL court, and Lllerefore really
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`isn't an explanation for the timing of these subpoenas
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`being filed on RPX. The filing of the subpoenas on RPX
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`coincided with VirnetX's request to access the
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`documents that were filed under seal with the RPX
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`petitions.
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`Therefore, at least from the RPX
`
`perspective, these -- it seems to be a coordinated
`
`effort to really, you know, squeeze the information out
`
`of RPX.
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`Just basically the district court subpoenas,
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`if it's not ripe and they're barred from using it in a
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`because of the protective order, then really those
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`subpoenas amount to nothing more than harassment, and
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`that's RPX's position.
`
`RPX has objected to the subpoenas that were
`
`served on it. It is continuing to go through the
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`district court process, and the context in which I
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`raised this issue on the last call related to the undue
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`burden and delay that these subpoenas are causing RPX
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`outside of the IPR proceeding, so I think those are
`
`important points to keep in mind as we go forward. Are
`
`there any other issues you'd like me to address?
`
`888.433.3767 I WWW.PLANETDEPOS.COM
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`. . . . . . . TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. T IERNEY
`CONDUCTED ON TH URSDAY , JANUARY 16, 201 3
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`JU DGE TI ERNEY: Not a t
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`t h i s
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`t i me . I'l l
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`t u r n
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`it ov er to Jud ge Si u , J udge Easthom . Any quest i on s you
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`have befor e we g o to Apple ?
`
`JUD GE EASTHOM: No,
`
`I don' t h a ve a ny
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`quest i ons .
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`J UDGE SI U: No ques t io ns .
`
`J UDGE TI ERNEY : Oka y . At th i s
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`t i me we 'l l
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`get g i ve t he floo r to App l e to see if there a r e a ny
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`commen ts Apple would l ike t o prov i de on t h is i ss ue .
`
`MR. KUSHAN: Thank you , You r Hon or . We ll,
`
`first and foremost , we just wa nt to r eitera t e our
`
`concern t h a t all t he t hing s we 're go i n g th rough wit h
`
`t h e b ri e f i ng or p oss i b l e br i e f ing in t h is iss ue n ot
`
`become a r eason t o d e l ay a ny o f the p r oceedings .
`
`Tha t' s bee n o ur overarc h i ng co ncern wi th enga ge ment o f
`
`t his iss ue .
`
`I
`
`t h i nk we loo k at t hi s issue with kind of a
`
`jaded e y e be c aus e t he r e ' s a n issue o f fut i li ty . We
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`assume t hat eve n if you we r e t o aut hor ize di s cov ery
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`you're g o i ng to end up wit h where y o u are t oday wi t h
`
`your know l edge o f wha t y ou know , and what we be l ie ve i s
`
`f rom what you already know the re' s n o ba s i s f o r
`
`
`
`. . . . . . . "ELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`privity.
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`We would welcome, you know, if the board
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`deems it appropriate a briefing of the issue to make
`
`sure that there's a clear record as to why you would or
`
`would not grant any discovery, but we look at this with
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`primarily a concern, it being another diversionary
`
`tactic that might be used to delay the proceedings.
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`And one question I do have is logistical,
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`and that is the issues that relate to the privity
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`question I think pertain to the RPX petitions,
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`I don't
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`think there's been any question that Apple's petitions
`
`against the 697 patent are timely filed, and there is
`
`no privity issue, and so if you were to authorize
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`briefing we just want to make sure we understand how we
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`would participate in that briefing.
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`And just as a housekeeping matter, we ar~
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`wondering how to get copies of confidential deposition
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`transcripts that are not being filed in our petitions,
`
`so those are the issues I wanted to raise.
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`JUDGE TIERNEY:
`
`Is there anything else from
`
`I'll go back to VirnetX before we take a few moments
`
`by the panel and discuss the matter. Anything from
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`888.433.37671 WWW.PLANETDEPOS.COM
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`
`
`• • • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
`
`VirnetX you need to reply to before we take a brief
`
`22
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`recess?
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`MR. PALYS: No, Your Honor. Unless you have
`
`any questions for us we're open.
`
`JUDGE TIERNEY:
`
`I have no questions at this
`
`time.
`
`I note it's about 4:19.
`
`I'd like to confer with
`
`my colleagues for a couple of minutes. We'll be back
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`on the line in approximately three or four minutes.
`
`Please have your phones stay on the line while we
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`discuss the matter. Thank you.
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`(There was a brief recess in the
`
`proceedings.)
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`JUDGE TIERNEY:
`
`The panel has conferred.
`
`Judge Siu, are you back on line?
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`JUDGE SIU: Yes, I'm back on line.
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`JUDGE TIERNEY:
`
`,Judge Easthom, are you back
`
`on line?
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`JUDGE EASTHOM: Yes, I am.
`
`JUDGE TIERNEY: Thank you.
`
`Just to confirm
`
`the parties are back on the line, do we have a
`
`representative from VirnetX?
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`MR. PALYS: Yes, Your Honor.
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`888.433.3767 I WWW.PLANETDEPOS.COM
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`
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`• • • • • ~TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`JUDGE TIERNEY: RPX?
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`MR. ASHE: Yes, Oliver Ashe.
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`MR. KUSHAN: And Jeff Kushan.
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`JUDGE TIERNEY: Good. The panel has
`
`conferred and come to the following decision. At this
`
`time we will authorize briefing, but a very limited
`
`briefing on the issue, whether or not additional
`
`discovery shall be granted. A briefing will be limited
`
`to five pages given that we've already had extensive
`
`discussions.
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`We've had three phone calls already going
`
`into these issues. The question then becomes of
`
`timing.
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`I believe at the last call we were going to
`
`have approximately a week given for filing a motion on
`
`discovery, for additional discovery.
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`I would like to
`
`start with VirnetX whether or not that one week is
`
`still appropriate.
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`MR. PALYS: Yes, Your Honor. Of course
`
`we'll entertain anything, earlier dates if the board
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`would like to discuss that.
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`JUDGE TIERNEY:
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`I leave it up to you. You
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`would be the ones filing the motion.
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`If you'd like it
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`• • • • • • TELEPHONIC CON FERENCE CALL HELD BEFORE JUDGES EASTHOM , SI U. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`sooner, t ha t would be r ille wi th u s,
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`If you need a
`
`week , that's f in e .
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`I f yo u need longe r , le t' s discuss ,
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`MR. MODI : Yo ur Honor, I th i nk a week would
`
`be fine.
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`I did want to get clarificat io n on the page
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`li mit ati ons , You r Honor .
`
`I assume you ' re saying one
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`mot i on for al l -- bot h the I PRs?
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`J UDGE TIERNEY : Ye s, I am .
`
`MR : "MODI : Okay . Your Honor, of cou r se
`
`we'll do our bes t
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`t o meet the limitati on , but i t may be
`
`nice to just h a v e a co uple of extra pages , but of
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`course we ' ll go wi t h t h e board 's discre tion on t he
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`pages.
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`J UDGE TIERNEY : Please a d v i se me why , afte r
`
`t he three ca l ls, we would need more t h an five pages ,
`
`I f you d o need it ,
`
`l et me know now.
`
`MR. MODI : Your Honor, obviou sly we have n't,
`
`you know, wr itten th e mo t ion, and if I may just give n
`
`we have to go thr ough and , you know, make our case I
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`wa s
`
`j ust th i nking tha t five pages may b e just -- you
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`know , we were think i ng mor e like seven.
`
`It wasn 't
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`go ing to be a lot . We were just thin k ing a coupl e of
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`extra pages might be help ful, Your Honor.
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`888.433,3767 1 WWW.PLANETDEPOS.COM
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`
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`• • • • • • TELEPHONIC CON f ERENCE CALL HELD BEFORE JU DGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 201 3
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`J UDG E TIERNEY :
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`I' ll e xe r c i se discretion
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`toda y .
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`I will give the sev en pages abse n t an objection
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`from my colleagues .
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`I d o not hear an objec t ion fro m my
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`co l league s .
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`I wi ll go a head and we will as a panel
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`t hen g i ve seven pages . Again , we want this kept
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`foc us ed g i ven the amount o f di scu ss i on we ' ve already
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`had on t hese i ssues .
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`I thi nk the ques t ion the n becomes fo r
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`p u rposes of putt i ng in oppo s i tions, we do have two
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`separate p art i es t hat a r e c hallenging the Vir netX
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`patents. Th e r e a r e two di ff e r ent ca ses , and
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`part i c ul ar ly t here ' s the App le c a ses and t here ' s a l so
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`the RPX cases . How do we h and le t hose as a procedura l
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`mat ter? Should we have App l e r es pond and oppose?
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`Let ' s back up .
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`I s Vi r ne tX seeki ng the
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`ndditional di.scovery in t h e Apple case s , or is it
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`solely in the RPX cases you'll be seek i ng addit i on a l
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`discovery?
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`MR . PALYS : Well , Your Honor ,
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`I 'm g lad you
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`asked t hat ques ti on because I did have a quest i on for
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`t he boa r d on this. To answer you r ques ti on , we ' re
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`seeking d iscove r y i n the RPX ma t te r s, but because Appl e
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`888.433.3767 I WWW.PLANETDEPOS.COM
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`. . . . . . . . TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 20 13
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`i s invo l ved wi t h t hese RPI issues we're actual l y goi ng
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`to ask the board ' s gu i dance on this.
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`We und e r sta nd that your orde r -- co rr ect me
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`if I'm wrong, sir -- re l a t e s to seeking addi tio nal
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`d i scovery f rom RPX , but we we r e wonderi ng what the
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`p r oce d ur es or what gui d a n ce the bo ar d ca n g i ve us for
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`s eek in g di scove r y f rom App l e o n the se issues , and
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`i t
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`probabl y -- I th i nk we s ho u ld be in t he RP X matter , so
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`I think that might be under 4252 .
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`I'm no t qu i te s u re .
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`I just want e d t o see k t he board 's gui dan ce on t his .
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`JUDGE TIERNEY: Well , this is an inter e s ting
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`case b e c au se t here are d i ffe rent p atents invo l ved ,
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`separate families . However , if you are -- a nd I wasn ' t
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`c l e ar.
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`If you are seek in g in f o rmat ion fro m Ap ple woul d
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`i t be appr op ri a t e
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`t he n to just have t he s ame motion
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`filed in both sets of case s but being cl e a r as to who
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`you're seeking wh ich inf ormati on from?
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`If you' re s eek i ng particular in forma t io n
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`f rom RPX y ou can i d e nti
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