Transcript of TELEPHONIC CONFERENCE CALL HELD
`BEFORE JUDGES EASTHOM, SIU, TIERNEY
`
`Date: January 16, 2014
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`Case: RPX CORPORATION v. VIRNEXT, INC. AND SCIENCE
`APPLICATION INTERNATIONAL CORPORATION
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`Planet Depos
`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 IPR2014-00173
`
`
`BEFORE JUDGES EASTHOM, SIU, TIERNEY
`
`Date: January 16, 2014
`
`Case: RPX CORPORATION v. VIRNEXT, INC. AND SCIENCE
`APPLICATION INTERNATIONAL CORPORATION
`
`Planet Depos
`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 IPR2014-00173
`
`
`
`UNITED STATES PATENT AND TRADEMARK OF FICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`-- ------- ------- ----- ---------- ---- - --x
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`RPX CORPORATION,
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`Pet itioner ,
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`v .
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`Case IPR
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`2014 -001 71
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`VIRNETX,
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`INC. AND SCIENCE APPL ICATION
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`Patent
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`INTERNAT IONAL CORPORATION,
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`6 , 502 , 135
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`Patent Owner
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`-- - - ------------- ---- ------ - ------- ---x
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`CONF I DENT IAL - PURSUANT TO PROTECTI VE ORDER
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`Te l ephoni c Conference Call
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`Held Before Judges Eastham, Siu, Tierney
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`Thursd ay , January 1 6 , 20 14
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`4: 00 p.m.
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`~-
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`J ob No.: 51086
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`Pages : 1 - 42
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`Repor t ed by : Bonnie Panek
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`----·:TELEPHONIC CONfERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
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`A P P E A R A N 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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`- - · · · TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SI U. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
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`A P P E A R A N C E S
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`C 0 N T I N U E D
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`ON BE HALF OF RESPONDENT VI RNETX :
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`JOSEPH E. PALYS, ESQUIRE
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`FINNEGAN, HENDERS ON, FARABOW, GARRET T &
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`DUNNER, LLP
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`Two Freedom Square
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`11955 Fr eedom Drive
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`Reston, Vi rginia 20 190
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`(571) 203 - 2700
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`NAVEEN MODI, ESQUI RE
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`F INNEGAN, HENDERSON, FARABOW, GARRETT &
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`DUNNER , LLP
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`901 Ne w York Avenue , NW
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`Washington, DC 20001
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`(?.02) 408 - 4000
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`- - - · ·TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
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`A P P E A R A N C E S
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`C 0 N T I N U E D
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`ON BEHALF OF RESPONDENT APPLE :
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`JEFFREY P . KUSHAN, ES QUIRE
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`JOSEPH A. MICALLEF , ESQUIRE
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`SIDLEY AUSTIN, LLP
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`1 501 K Stree t, NW
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`Wash ing ton, DC 20005
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`(202) 736 - 8000
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`• • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`E X H I B I T S
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`(None .)
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`REMARKS BY :
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`Mr. Palys
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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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`FURTHER REMARKS BY:
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`Mr. Modi
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`Mr. Paly s
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`Mr. Kushan
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`Mr . Ashe
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`· - - - - ·TELEPHON IC CON FERENCE CALL HELD BEfORE JUDGES EASTHOM . SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
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`P R 0 C E E D I N G S
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`JUDGE TI ERNEY: Due to the issues t ha t were
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`ra i sed p r eviously, I ' m go i ng t o b egin the ca ll by
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`as ki ng is every one on t he line at thi s point i n time
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`s ubjec t to the prot e ct ive order .
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`If n o t , p l ease speak
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`up.
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`I note n o o ne objected to or pointe d out
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`t hat they were not s ub j ect to the protect i ve orde r.
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`Ac cordingly, eve r yone o n the li n e today is subject to
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`t h e b oard s defau l t protect i ve order.
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`If th e r e 's a ny
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`que s tions abo ut t hat please speak up now o r we ' l l
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`begin . Heari ng no objection / we ' ll begin to day.
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`Vir net X,
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`I bel ieve we le f t off wi t h some
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`questions and concerns possibly about a discovery t hat
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`was occurri ng in d i str i ct cou rt 1 and we wanted to have
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`a few more d e t a ils, so I' d like you to hRgi.n tod ay by
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`giv ing u s a littl e background o n t he d i strict court
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`ac t ion and just a brie f ove r view of
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`t he n a ture a nd
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`scope of the discovery t o da t e in those cases as it may
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`pe rta i n to t h i s p r oceeding today .
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`MR . PALYS :
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`Sur e , Your Hon o r. Yeah, as we
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`left of f the board asked us to look into what d i scovery
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`- - - - - TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU, TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`was bei ng sought in the district court li tigation.
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`We've had time to do that and we ' ve obtained copies of
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`the discovery reques t, and I 'll be happy to discuss
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`them with you and get into any details that you want
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`to .
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`I'd j ust l ike t o raise a couple of poin ts
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`be f or e I do that because I
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`t hink t hey ' re re l evant to
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`t his type of discovery. The fi rst point , Your Ho nor ,
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`is that discovery that's sought in that distr i ct court
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`from RPX i s for purposes of that litigati on . Now, as
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`you 'l l know
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`MR. HOWISON: This is Greg Howison.
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`JUDGE TIERNEY: Tha nk you for joining, and
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`just confirming you ' re subject t o the protective order?
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`MR . HOWISON: Yes , s ubj ect to the protective
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`o rder, yes .
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`JUDGE TIERNEY: Thank you . Mr. Palys,
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`p lease 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 lap with the type of
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`in formation that's sought in the district court and
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`with the real party o f interest issues that we 're
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`• • • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. S!U. 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. 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 ln 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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`• • • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`to menti on, Your Honor.
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`I think they 're the same
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`act i on ,
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`ju st different action numbers. Tha t ' s
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`612CD-855, and in t h ese -- that 's what I wa s r efe rring
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`to with t hose l itigations .
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`J UDGE TIERNEY : Tha nk you.
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`MR . PALYS: Sure . So back to that second
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`po i nt
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`MR . ASHE: Your Honor , just since we ' re
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`discussing t h is litigat i o n, we should note that RPX is
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`not a party t o a ny of t h e s uits that we re described .
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`J UDGE TIERNEY : That 's right . That was
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`clear from the capt i on at th i s point
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`. Le t' s let Mr.
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`Pa l ys have the floor a nd go over t he det ai l s and t h en
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`you wi ll have an opportu n i ty to chime in, but let ' s
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`f inish up with Mr. Palys.
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`MR. PALYS:
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`Thank you, sir. Cont inuing on
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`with what I wa s saying, basically the point he r e is
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`t hat to th e extent RPX may be forced to give that
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`discovery in t h ose litigati ons, I should say , becau se
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`t here's t wo o f them , we d on' t know when and i f that may
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`be.
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`And l ast l y ,
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`r eal ly, Your Honor ,
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`i s that even
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`·····~ TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
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`if RPX i s forced by cour t order or ot herw ise to give
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`the dis covery that's being sought
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`in t here it ' s covered
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`by a protect ive ord er , a nd we raised this I believ e
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`l ast week if that ' s so .
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`Even if t he discovery i s available in the
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`l it igation for . purposes of tha t
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`l i t i gation we can ' t use
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`i t here in these proc eedings , and I believe there is
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`some - - at l east some -- at l east one boar d d ecision
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`where the board has basicall y left is s ues of the
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`protective orde r at t he district court l evel to the
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`district court.
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`So basical l y given the speed of t hese
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`p r oceedings , we bel i eve t he proper mechan i sm here is t o
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`address the real party o f int eres t issues i n t hese
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`proceedings t hrough t he additional discovery me c han i sms
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`provided und er the rules i n Garmin, and so I just
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`wanted to make s ure the board is aware of t hose i ss ues
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`here.
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`I'm h appy to go into t he discovery that ' s being
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`sought a nd any det ai l s that the board may want to.
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`JU DGE TI ERNEY: Well , we're t a lking in
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`general di scovery sought.
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`It has been mentioned a t
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`l e ast from the caption it would appear RPX is not a
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`• • • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. T IERNEY
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`party . Please explain ,
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`f i rs t of all , wh y the discovery
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`wo uld be sought against a nonparty he r e or a t h ird
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`party, and what is the scope of the dis covery that i s
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`b e ing sought . You menti oned 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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`Sure . So the categories of
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`in formation sought in the RPX s ubpoenas , Your Honor ,
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`rela te s to --the RPX ' s corpo rate structure ,
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`o rganizat i on, what it does ,
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`i ts inter es t s,
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`re latio ns h ip, communi ca tions with various companies
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`i ncluding Apple , Microsoft , Cisco, New Bay , et cetera,
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`and t hat ' s t he majority o f
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`t he type of information
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`sought by the -- t he discovery request in topics.
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`There ' s also anot he r category that relates
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`t o VirnetX ' s patents and the variou s I PR petitions ,
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`rea l par ty in interest, and prior art relat ed to
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`Vi rnetX' s p atent s .
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`JUDGE TIERNEY: Okay . So t hey were seeking
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`discovery in the d i strict court spec i fic to the IPRs?
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`MR. PALYS : That ' s right.
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`J UDGE TIERNEY: Okay . And how does that
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`pertain to the dist r ict court litiga ti on?
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`•••••tTELEPHONlC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SlU. 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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`litigation 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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`. . . . . . . TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. T IERNEY
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`J UDGE TI ERNEY:
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`Le t
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`' s s top t oday .
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`Is Lhe r e
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`any potential for es t op pe l if we ended th e case t oday
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`with a noninstitu t ion?
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`MR. PALY S : Well, my unders tan d i n g i s
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`t h at
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`e stoppe l d oe s n ' t appl y until a final wr i t t en dec i sio n.
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`J UDGE TIERNEY: But you ' v e a lready sou g ht
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`d iscovery on an i ssue
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`t h a t
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`i s no t an act ual i ssue
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`t h en .
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`You ' ve take n upon a po t e ntia l
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`issue t h a t may o r ma y n o t
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`o ccur .
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`MR . PALYS : Well, yeah. Again, my -- le t me
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`-- I just want t o s ay t he reason why I b roug h t u p that
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`I don 't r eprese nt Virn e tX i n the litigat io n issue i s
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`not j us t
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`t o s a y I don ' t
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`r e pr e s ent VirnetX, Your Hono r.
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`I just wan t
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`t o be clear
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`t h a t
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`t here's iss u es t hat
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`litigat ion coun sel may b e b e s t to a d d r ess some o f
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`t h ese
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`i ssues .
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`So I want
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`t o make sure th at I'm just
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`mindful, and wh a t I'm s aying here has bee n my b as i s of
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`rep resenting VirnetX i n the s e p r oceedings , but havin g
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`said tha t ,
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`t he i d e a
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`t h a t they're seeking discover y
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`during di scovery of a li t igati on I thi nk tha t
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`- -
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`I
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`d on 't see a -- I gu ess a prob l em wi t h d o ing 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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`I'
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`eventually
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`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:
`
`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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`• • • • • • >TELEPHONIC 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, I can try to maybe
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`address that question. I'll try. So I think that the
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`issu12 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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`··-··~TELEPHONIC 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 know, 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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`discovery is improper for the district court obviously
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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 CONFERENCE CALL HELD BEfORE JUDGES EASTHOM . SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
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`clearly to l d Vir netX it does not intend t o prov i d e any
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`documents or testimony , so I feel t he i ssue may be moot
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`at this point. Agai n, we're happy to seek the board ' s
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`gu i d ance on this i ssue .
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`If RPX on th i s cal l today
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`tells us they are willing to g i ve information in the
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`district court we are more than happy to withdraw t he
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`reques t here , Your Honor .
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`We are trying to figure out how do we get
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`this information i n front of Your Honor in these IPR
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`p roceedings , because again given the speed of the
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`proceedings we may be in a situat i on where let ' s say
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`RPX is compelled to produce that discovery by t he
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`district cour t in the district court l i ti gation .
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`It
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`may be too late . These p r oceedings may be well
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`underway .
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`And we obviously would like to bring these
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`issues up t o the board now through the mechan isms
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`provided by Garmin , through the AIA, and as you ' re wel l
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`aware t he trial pra ctice guide ac t ual l y does say one of
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`t he i ssues that s hould be ra ised early in the cases is
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`t he real part y in inter est, and that ' s preci sely what
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`we ' ve done here , so we would of course seek Your
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`. . . . . . . TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
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`Ilonor ' s guidance whe r e we go from he r e , but t ha t ' s our
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`1 8
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`pos i t io n .
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`JUDGE TIERNEY : Anything e l se be f or e I
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`t u r n
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`i t ove r to Apple -- I ' ll turn it over next to RPX, but
`
`is t h ere a nything furt he r f r om Vi r net X?
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`MR. PALYS : No , You r Ho nor .
`
`JUDGE TIERNEY : Okay . RPX ,
`
`i f you ' d l i ke t o
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`ad dress some of the i ss ues t hat were raised you may do
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`s o now .
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`MR. ASHE : Oka y . Thank you, Your Honor .
`
`Fi r s t with r e gard t o t he c ha ract e r i zat io n of t he
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`s ubpoenas that were served o n RPX,
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`I disa gree with the
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`chara c t e ri za t ion t ha t
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`t hey ' re a nyt hi ng other tha n
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`d i r ected t o these proceeding s.
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`And the discover y t hat
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`t h ey ' re seeking i n
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`t he d i stri c t co ur ~ i s essen t ia l ly the same a s what
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`t h e y'r e dr i ving f or h ere , and that i s the unde r l y ing
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`fac t s for the rea l p a r ty i n i nteres t, a nd I thi nk t h at
`
`You r Honor h a s touch e d on t he app r op ri a t e issue with
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`resp ect t o the d istrict cou r t, and t hat ' s one o f
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`ripenes s .
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`The issue regarding es t oppe l at a min imum is
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`---···TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU, TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`not ripe in the district court, and therefore really
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`isn't an explanation for the timing of these subpoenas
`
`being filed on RPX. The filing of the subpoenas on RPX
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`coincided with VirnetX's request to access the
`
`documents that were filed under seal with the RPX
`
`petitions.
`
`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.
`
`Just basically the district court subpoenas,
`
`if it's not ripe and they're barred from using it in a
`
`because of the protective order, then really those
`
`subpoenas amount to nothing more than harassment, and
`
`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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`outside of the IPR proceeding, so I think those are
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`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. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
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`JU DGE TI ERNEY: Not a t this time . I'll t urn
`
`it over t o Judge Si u , Judge Eastham. Any quest i o n s y ou
`
`have before we go to Apple?
`
`JUD GE EASTH OM: No,
`
`I don ' t ha ve a ny
`
`q uestion s .
`
`J UDGE SI U: No que st i ons.
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`J UDGE TI ERNEY : Okay . At th i s time we 'll
`
`g et give t he floor to Apple to see if there a r e a ny
`
`comments App l e would l ike to provide o n this is s u e .
`
`MR. KUSHAN:
`
`Thank you, Your Ho no r. We ll,
`
`first and f o remost , we just want to reitera t e o ur
`
`c oncern tha t all t he t hin gs we 're go ing t h rough wit h
`
`t h e brie f ing o r p oss i ble br i e f i ng in t hi s iss u e not
`
`bec ome a reason to de l ay a ny of the p r oceedings .
`
`That's b e e n o ur overarch i ng c oncern wi th e ngage ment o f
`
`this is sue .
`
`I
`
`t hink we look at this issue with kind of a
`
`j aded eye be c aus e the r e ' s an i ssue of fut i l ity . We
`
`assume t hat eve n if you we re t o aut horize di scove r y
`
`you're going to end up with where yo u are t oday wi t h
`
`y our kn owledge of wh a t y ou k now, and what we be l ie ve is
`
`from what y ou already kn o w ther e ' s no bas i s f o r
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`888.433.3767 I WWW.PLANETDEPOS.COM
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`,
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`' I
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`•••••at~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
`
`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
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`tactic that might be used to delay the proceedings.
`
`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.
`
`I don't
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`think there's been any question that Apple's petitions
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`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.
`
`And just as a housekeeping matter, we are
`
`wondering how to get copies of confidential deposition
`
`transcripts that are not being filed in our petitions,
`
`so those are the issues I wanted to raise.
`
`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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`. . . . . . TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SJU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
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`VirnetX you need to reply to before we take a brief
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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.
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`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.
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`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
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`proceedings.)
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`JUDGE TIERNEY:
`
`The panel has conferred.
`
`Judge Siu, are you back on line?
`
`JUDGE SIU: Yes, I'm back on line.
`
`JUDGE TIERNEY:
`
`Judge Easthom, are you back
`
`on line?
`
`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?
`
`MR. PALYS: Yes, Your Honor.
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`888.433.3767 I WWW.PLANETDEPOS.COM
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`
`·--··TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. S!U. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`JUDGE TIERNEY: RPX?
`
`MR. ASHE: Yes, Oliver Ashe.
`
`MR. KUSHAN: And Jeff Kushan.
`
`JUDGE TIERNEY: Good. The panel has
`
`conferred and come to the following decision. At this
`
`time we will authorize bri e fing, 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.
`
`We've had t hree phone calls already going
`
`into these issues. The question then becomes of
`
`timing.
`
`I believe at the last call we were going to
`
`hav e approximately a week given for filing a motion on
`
`discovery, for additional discovery.
`
`I would like to
`
`start with VirnetX whether or not that one week is
`
`still appropriate.
`
`MR. PALYS: Yes, Your Honor. Of c ourse
`
`we'll entertain anything, earlier dates if the board
`
`would like to discuss that.
`
`JUDGE TIERNEY:
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`I leave it up to you. You
`
`would be the ones fil~ng the motion.
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`If you'd like it
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`• • • • • • TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`sooner, that would be fine with us .
`
`If you need a
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`week,
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`t hat' s f ine.
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`I f you need longer, le t' s discuss .
`
`MR. MODI : Your Honor ,
`
`I th in k a week would
`
`be fine.
`
`I d id want to get clarification on the page
`
`limitations, Your Honor.
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`I assume you ' re saying one
`
`mot i on for al l -- bot h the IPRs?
`
`J UDGE TIERNEY : Yes , I am .
`
`MR : "MODI : Okay . Your Honor, of course
`
`we'll d o our best to meet the limitation , but it may be
`
`nice to just h ave a couple of extra pages, but of
`
`course we'll go with the board 's d iscretion on t he
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`pages .
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`JUDGE TIERNEY: Please advis e me why , afte r
`
`t h e three calls , we would need mor e
`
`t han five pages.
`
`I f you d o need it , let me know now .
`
`MR. MODI: Your Ho nor , obvious ly we haven ' t,
`
`you know, written the motion, and if I may just given
`
`we have to go through and , you know, make our case I
`
`was just th in king that five pages may be just -- you
`
`k now, we were thinking more like seven.
`
`It wasn 't
`
`go ing to be a lot . We were just thinking a couple of
`
`extra pages might be helpful, Your Honor .
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`• • • • • • TELEPHONIC CONrERENCE CALL HELD BEFORE JUDGES EASTHOM. StU. TIERNEY
`CONDUCTED ON THURSDAY, JANUARY 16, 2013
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`JUDGE TIERNEY:
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`I' ll exercise discretion
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`today.
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`I wil l give the seve n pages ab se n t an objection
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`from my colleagues .
`
`I do not hear an obj ec tion fro m my
`
`colleagues .
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`I will go ahead and we will a s a pa nel
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`then give seven pages. Aga in , we want this kept
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`focused g i ven the amount o f dis cussion we ' ve already
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`had on t hese i ss ues .
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`I
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`t h i nk the question then becomes for
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`purposes of pu tt ing in opposit ions, we do have two
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`separat e parties t h at are cha l lenging the Virnet X
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`patents. The r e are two di ff e r ent cases, and
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`particularly t here ' s the Apple cases and t h ere ' s also
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`the RPX cases. How do we h andle t h ose as a procedu r a l
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`mat ter? Should we have Apple respond and oppose?
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`Le t's back up.
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`I s Virne tX seekin g the
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`additional d iscovery i n t he Apple cases , or is i t
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`solely in the RPX cases you ' ll be seeking addit i on a l
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`discovery?
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`MR. PALYS: We ll , Yo ur Hon or, I 'm glad you
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`asked that ques ti o n because I did have a quest i on for
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`the b oar d on this . To answer your question , we're
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`seeking discover y in t he RPX matt ers, but because Apple
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`888.433.3767 I WWW.PLANETDEPOS.COM
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`. . . . . . . . TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TI ERNEY
`CONDUCTED ON THURSDAY, JANUARY 16,2013
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`26
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`i s involve d wi th these RP I issues we 're actually going
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`to ask the board ' s guidance on thi s .
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`We under stand that your order -- correct me
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`if I'm wrong, sir -- rela t es to seeking a ddit ional
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`discovery f rom RPX, but we were wondering what the
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`procedu r es or what guidan ce the board can give us for
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`seek i ng di scovery fr om Apple on t hese issues , and it
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`probably - -
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`I th i nk we s hou ld be i n the RPX matter, so
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`I thin k that might be under 4252 .
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`I'm not quite s ure .
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`I just wan t ed to seek t h e board's guidan ce o n this .
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`JUDGE TIERNEY: We l l, this is an interes ting
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`case because there are d i fferen t pa t ents involved ,
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`sepa rat e families. However , if you are -- and I wasn ' t
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`c l e ar.
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`If you are seekin g in f o r mation from Apple would
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`i t be appropriate then to just have t he s ame mot i on
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`file d in bot h sets of cases but be i ng clear as to who
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`you 're seeking which informatio n from?
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`I f you ' re s eeking part ic u la r in formation
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`from RPX you can identify it as RPX on l y information.
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`I f
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`i t 's fr om Apple i t ' s Apple on l y. But it would be - -
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`the same discovery moti on could be filed in each of the
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`set s of cases .
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`Is that a ppropr iat e ?
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`888.433.3767 I WWW.
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`•••••a TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
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`CONDUCTED ON THURSDAY, JANUARY 16, 2013
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`MR. PALYS: Well, the question I have, or I
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`27
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`guess the comment, Your Honor, is that the Apple
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`matters that I think Mr. Kushan raises, they're
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`different patents ~~
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`JUDGE TIERN
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