`571-272-7822
`
`
`
`Paper 6
`Date: 14 August, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`NEW BAY CAPITAL, LLC
`Petitioners
`
`v.
`
`VIRNETX, INC.
`Patent Owner
`____________
`
`Cases IPR2013-00348, -00349, -00375 (Patent 6,502,135 B1) (SCM)
`IPR2013-00354, -00376 (Patent 7,490,151 B2)
`IPR2013-00377, -00393, -00394 (Patent 7,418,504 B2)
`IPR2013-00378, -00397, -00398 (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.
`
`
`1 This order addresses a similar issue in the eleven 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. Apple, Inc. is the
`petitioner in the -00348, -00349, -00354, -00393, -00394, -00397, and -00398
`cases. New Bay Capital, LLC is the petitioner in the -00375, -00376, -00377, and -
`00378 cases. VirnetX, Inc. is the patent owner in the eleven cases.
`
`VIRNETX EXHIBIT 2036
`RPX v. VirnetX
`Trial IPR2014-00172
`
`Page 1 of 6
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`On August 5, 2013, the following individuals participated in a conference
`
`call:
`
`(1) Mr. Jeffrey Kushan and Mr. Joseph Micallef, counsel for Apple Inc.
`(“Apple”);
`(2) Mr. Robert Asher and Mr. Jeffrey Klayman, counsel for New Bay
`Capital, LLC (“New Bay”);
`(3) Mr. Joseph Palys and Mr. Naveen Modi, counsel for VirnetX Inc.
`(“VirnetX”); and
`(4) Sally Medley, Michael Tierney, Karl Easthom, and Stephen Siu,
`Administrative Patent Judges. 2
`The purpose of the conference call was for VirnetX to seek Board
`authorization to file a motion to dismiss each of the petitions filed by Apple in
`IPR2013-00348, -00349, -00354, -00393, -00394, -00397, and -00398 as untimely
`under 35 U.S.C. § 315(b). Prior to the conference call, Board personnel notified
`the parties to be prepared to discuss potential joinder of cases and the related
`pending reexaminations.
`
`Motion to Dismiss
`VirnetX is of the opinion that Apple’s petitions are untimely under 35
`U.S.C. § 315(b). As such, VirnetX requests authorization to file a motion to
`dismiss each Apple petition. The request was denied for the following reasons.
`A patent owner is provided an opportunity to file a preliminary response to a
`
`
`2 A court reporter was present.
`
`2
`
`Page 2 of 6
`
`
`
`petition. 35 U.S.C. § 313; 37 C.F.R. § 42.107. A preliminary response may
`include reasons why no inter partes review should be instituted. 35 U.S.C. § 313.
`VirnetX is provided an opportunity to file a preliminary response and may address
`the 35 U.S.C. § 315(b) issue in that context, and, therefore, separate briefing in the
`form of a motion to dismiss is not necessary.
`
`Motion for Joinder
`As explained during the conference call, the timeliness limitation of 35
`
`U.S.C. § 315(b) does not apply to a request for joinder. 35 U.S.C. § 315(b). The
`statutory provision for joinder is as follows:
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to
`that inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`partes review under section 314.
`
`Based on the discussion concerning joinder, Apple requested leave to file a
`
`motion(s) for joinder. Counsel for VirnetX indicated that Apple could not file a
`motion for joinder, because they should have done so when Apple filed its
`petitions, citing 37 C.F.R. § 42.122(b) and § 42.101(b). Counsel for New Bay
`indicated that we could not consider a motion for joinder, because no inter partes
`review has been instituted.
`We agree with New Bay that Apple cannot be joined to any New Bay
`proceeding unless a determination is made to institute an inter partes review.
`However, it is within the Board’s discretion to obtain briefing from the parties
`regarding joinder prior to determining whether it will institute any inter partes
`review. Accordingly, we exercise our discretion to obtain briefing on the issue of
`3
`
`Page 3 of 6
`
`
`
`joinder at this juncture in the proceedings. Counsel for New Bay did not assert that
`taking such action would be an abuse of the Board’s discretion.
`We have considered VirnetX’s argument that Apple cannot file a motion for
`joinder because it is too late; that Apple should have filed a motion for joinder
`when it filed its petitions. The Board does not agree that the rules are as restrictive
`as VirnetX perceives them to be. The pertinent provision of 37 C.F.R. § 42.122(b)
`concerning a request for joinder, provides that the time period set forth in
`§ 42.101(b) does not apply when the petition is accompanied by a request for
`joinder. The rule does not specify that the accompaniment must take place
`simultaneously. In other words, we disagree that the rule requires the petition and
`the motion for joinder to be filed simultaneously in order to be considered under
`every circumstance. And even if the rule is so restrictive, which we find that it is
`not, the rule does not cover necessarily the present situation. At least with respect
`to some of the petitions Apple filed, it could not have filed a motion for joinder
`simultaneously with the filing of its petition, because New Bay had yet to file a
`petition. See 37 C.F.R. § 42.5(a). Moreover, the statutory provision for joinder
`provides that joinder is within the discretion of the Director. 35 U.S.C. § 315(c).
`Authorizing Apple to file motions for joinder after filing its petitions is within the
`discretion provided to the Director to determine if joinder is appropriate.
`Accordingly, Apple is authorized to file a motion for joinder, e.g., to join
`Apple as a party to the appropriate New Bay case of IPR2013-00375, -00376, -
`00377, and -00378. Each motion for joinder should explain why joinder is
`appropriate, identify any claims or grounds raised in the corresponding Apple
`petition for consideration with respect to the motion for joinder, and explain what
`impact joinder would have on the scheduling of events. VirnetX and New Bay are
`authorized to file an opposition.
`
`4
`
`Page 4 of 6
`
`
`
`Inter Parte Reexamination Proceedings
`A discussion was had regarding the related inter partes reexamination
`
`proceedings of the four involved patents. Based on the discussion, the panel
`determined that it was not necessary to stay any of the reexaminations. Nor will
`the Board merge those proceedings with any of the eleven proceedings before us.
`As discussed, Apple shall provide a brief update regarding a status change of any
`of the reexamination proceedings.
`
`Order
`
`It is
`
`ORDERED that Apple is authorized to file a motion for joinder with a
`
`corresponding New Bay case in each of IPR2013-00348, -00349, -00354, -00393,
`-00394, -00397, and -00398 by August 21, 2013 in accordance with the above;
`
`FURTHER ORDERED that each motion is limited to ten pages;
`FURTHER ORDERED that New Bay3 and VirnetX are authorized to file
`oppositions by August 28, 2013;
`FURTHER ORDERED that each opposition is limited to ten pages;
`FURTHER ORDERED that Apple shall, within two weeks of this order, and
`two weeks thereafter (if there is something to report), file with the Board a status
`update of the co-pending reexamination proceedings.
`
`
`3 New Bay is not a party to IPR2013-00348, -00349, -00354, -00393, -00394, -
`00397, and -00398. Accordingly, New Bay shall file any opposition to any Apple
`motion for joinder in the respective New Bay cases IPR2013-00375, -00376, -
`00377, and -00378.
`
`5
`
`Page 5 of 6
`
`
`
`For Petitioner Apple Inc.:
`Jeffrey P. Kushan
`Joseph A. Micallef
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`jmicallef@sidley.com
`
`For Petitioner New Bay Capital, LLC:
`Robert M. Asher
`Jeffrey Klayman
`SUNSTEIN KANN MURPHY & TIMBERS LLP
`rasher@sunsteinlaw.com
`jklayman@sunsteinlaw.com
`
`For Patent Owner VirnetX, Inc.:
`
`Joseph E. Palys
`Naveen Modi
`FINNEGAN, HENDERSON, FARABOW
` GARRETT & DUNNER, L.L.P.
`joseph.palys@finnegan.com
`naveen.modi@finnegan.com
`
`6
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`Page 6 of 6
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`