`
`Filed on behalf of: RPX Corporation
`
`Paper No.
`Filed: February I l, 2014
`
`By:
`
`Oliver R. Ashe, Jr., Esq.
`ASHE, P.C.
`11440 Isaac Newton Sq. North
`Suite 210
`Reston, VA 20190
`Tel.:
`(703) 467—9001
`Fax: (703) 467—9002
`E-mail: oashe@ashepc.com
`
`,
`
`Gregory M. Howison
`HOWISON & ARNOTT, LLP
`Lincoln Centre II
`5420 LBJ Freeway, Suite 660
`Dallas, Texas 75240
`Tel.: (972) 680-6050
`- Fax: (972) 479-0464
`E-mail: ghowison@dalpat.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RPX CORPORATION,
`
`Petitioner,
`
`V.
`
`VIRNETX, INC. AND SCIENCE APPLICATION
`
`INTERNATIONAL CORPORATION,
`Patent Owner
`
`Case IPR2014—0017l
`
`Patent 6,502,135
`
`PETITIONER’S PROPOSAL REGARDING DISCOVERY
`
`
`
`
`
`— easeNo.IPR2m-00171
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`I.
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`INTRODUCTION
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`In accordance with the Order dated February 10, 2014 (Paper NO. 25), the
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`parties conferred regarding the Patent Owner’s discovery requests. The ending
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`point of these discussions was substantially the same as the starting point —
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`VirnetX’s Exhibits 2002-2005, which the Board has already ruled are overly broad.
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`RPX and Apple presented proposed modifications to the VirnetX discovery
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`requests with the objective Ofproviding responsive information to VirnetX while
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`balancing a variety of other factors. VirnetX rejected the RPX and Apple
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`proposals.
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`II.
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`RPX’S PROPOSAL REGARDING DISCOVERY
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`The following reflects the proposal RPX presented to VirnetX:
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`REQUEST FOR PRODUCTION NO. 1: .—
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`RE! QUEST FOR PRODUCTION NO. 2: Documents or things containing
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`communications occurring On or prior to November 22, 2013, between RPX and
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`Apple regarding the preparation or filing of the RPX IPRs.
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`REQUEST FOR PRODUCTION N0. 3:—
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`
`
`— Case No. IPR2014—00171
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`REQUEST FOR PRODUCTION NO. 4: Engagement agreements or
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`retainer agreements and corresponding termination agreements between RPX and
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`Sidley Austin, RPX and Howison & Arnott, and RPX and ASHE relating to the
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`RPX IPRs.
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`WITNESS STATEMENTS/FOLLOW—UP INTERROGATORIES: RPX
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`will provide written state1nent(s) by one or more witnesses to testify to
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`communications in request for production Nos. 2, 3 and/or 4 (above) that were not
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`reduced to writing. VirnetX may submit a reasonable number of follow—up
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`interrogatories within the scope of such written statement(s).
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`MODIFICATION TO INSTRUCTIONS: Delete Instruction Nos. 3 and 4;
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`add the term “responsive” before each instance of the term “document.”
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`MODIFICATION TO DEFINITIONS: Limit “communications” to tangible
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`means and limit the terms “RPX”, “Apple”, “Sidley Austin”, “Howison & Arnott”
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`and “ASHE” to employees (and/or partners) of each entity.
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`ADDITIONAL REQUIREMENTS: With respect to RFP Nos. 1-4, RPX
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`proposes that all materials be produced in accordance with the provisions of the
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`Default Protective Order currently in effect in these proceedings. Also, RPX
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`proposes that the parties agree that the production of the documents in response to
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`
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`_ easeNo.11121111-111111
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`RFP No. 4 would not be construed as a waiver of any privilege in these or any
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`other proceedings.
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`III. DISCUSSION
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`RPX believes its proposal strikes the appropriate balance between a number
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`of potentially competing factors (producing information that is properly focused on
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`the issues raised in the VimetX motion for discovery; maintaining the current
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`schedule for the patent owner’s preliminary responses; avoiding unnecessarily
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`delving into privileged information; achieving an efficient and cost-effective
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`discovery process, era). VirnetX only accepted RPX’s proposed RFP Nos. 1 and
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`4, but these RFP’s were of the same scope as or broader than the original VimetX
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`RFPs.
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`.
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`Production in response to proposed RFP Nos. 1—4 would provide VirnetX
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`with the information it sought regarding—
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`-any documents or things containing communications between Apple and
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`RPX regarding the preparation and filing of the RPX IPR petitions (including the
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`111111 01111111111me1—
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`—; 111111111111 11111
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`which Sidley Austin, Howison & Arnott, and ASHE were each retained by RPX.
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`The Witness Statement/Follow-Up Interrogatories proposal (including an
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`3
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`
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`_ easeNo.IPR2m4-oom
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`opportunity for follow—up interrogatories) is intended to efficiently provide an
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`organized and first-hand accounting of any communications encompassed by
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`proposed RFP Nos. 2, 3 and 4 that were not reduced to writing. VirnetX flatly
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`rejected this proposal and, in discussions, appeared to want to parlay the RPX
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`proposal into a deposition under FRCP 30(b)(6), thereby broadening its original
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`requests for discovery from RPX. VirnetX also flatly rejected an alternative RPX
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`proposal to allow cross—examination of any Witness Statements, again advocating
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`for an open—ended 30(b)(6)-sty1e deposition. Frankly, in addition to timing and
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`expense, RPX’s largest concern with presenting any witnesses for live testimony is
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`that it will be perceived by VirnetX as an unfettered opportunity to expand the
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`scope of any discovery granted by the PTAB which, in turn, will provoke
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`voluminous disputes regarding scope and privilege that will likely require
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`significant PTAB involvement for resolution.
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`The reasonableness of VirnetX’s current position should be viewed in light
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`of the fact that, after RPX filed its petitions, VirnetX waited 36 days before
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`seeking access to Exhibits 1072 and 1073 and 47 days before raising the issue of
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`discovery with the PTAB.
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`Respectfully submitted,
`
`
`/Oliver R. Ashe Jr./
`
`Oliver R. Ashe, Jr.
`Registration No. 40,491
`Counsel for Petitioner
`
`
`
`— Case No- IPR2014-00171
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`CERTIFICATE OF SERVICE
`
`The. undersigned hereby certifies that a copy of the paper entitled
`“PETITIONER’S PROPOSAL REGARDING DISCOVERY” was served this
`11th day of February, 2014, by e—1nail, on the following counsel of record for Patent
`Owner and Apple, 1110.:
`
`Joseph E. Palys
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`11955 Freedom Drive
`
`Reston, VA 20190-5675
`
`Phone: (571) 203—2700
`
`Fax: (202) 408-4400
`E-mail: joseph.palys@finnegan.com
`
`Naveen Modi
`
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW
`
`Washington, DC 20001-4413
`Telephone: (202) 408-4065
`Facsimile: (202) 408—4400
`E—mail: naveen.modi@finnegan.com
`
`Jeffrey P. Kushan
`Sidley Austin LLP
`1501 K Street NW
`
`Washington, DC 20005
`Email: jkushan@sidley.c01n
`
`February 11, 2014
`
`
`/Oliver R. Ashe Jr./
`Oliver R. Ashe, Jr
`
`
`
`