`571-272-7822
`
`
`
` Paper 19
`
`Entered: January 28, 2014
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION
`Petitioner,
`
`
`
`
`
`v.
`
`VIRNETX INC.
`Patent Owner.
`____________
`
`Case IPR2014-000171 (Patent 6,502,135)
`Case IPR2014-000172 (Patent 6,502,135)
`Case IPR2014-000173 (Patent 7,490,151)
`Case IPR2014-000174 (Patent 7,921,211)
`Case IPR2014-000175 (Patent 7,921,211)
`Case IPR2014-000176 (Patent 7,418,504)
`Case IPR2014-00177 (Patent 7,418,504)1
`____________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
` 37 C.F.R. § 42.5
`
`
`1 This decision addresses an issue that is identical in each case. We, therefore,
`exercise our discretion to issue one Order to be filed in each case. Unless
`otherwise authorized, the parties, however, are not authorized to use this style
`heading for any subsequent papers.
`
`
`
`Case IPR2014-000171 (Patent 6,502,135); Case IPR2014-000172 (Patent
`6,502,135); Case IPR2014-000173 (Patent 7,490,151); Case IPR2014-000174
`(Patent 7,921,211); Case IPR2014-000175 (Patent 7,921,211); Case IPR2014-
`000176 (Patent 7,418,504); Case IPR2014-00177 (Patent 7,418,504)
`
`Conference calls were held on January 8, 10 and 16, 2014, involving
`
`Administrative Patent Judges Tierney, Siu and Easthom and representatives from
`Apple, RPX and Virnetx.2 The purpose of the calls was to discuss scheduling and
`concerns regarding identification of real party in interest and privies. A court
`reporter was present on the calls.3
`
`Scheduling
`1.
`RPX filed its involved petitions challenging Virnetx’s patents on November
`
`20, 2013. Apple filed on December 6, 2013, its petitions challenging a Virnetx
`patent, which claims 35 U.S.C. § 120 benefit of at least two of the RPX challenged
`patents.
`
`The Board inquired as to whether the time for filing a patent owner
`preliminary response should be the same for both the RPX and Apple inter partes
`reviews. Based on the information provided by the parties, the Board concluded
`that the issues raised in the RPX petitions overlapped those raised in previously
`filed petitions and, further, that the issues raised in the RPX petitions overlapped
`those raised in the Apple petitions. Accordingly, the Board held that the time for
`filing patent owner preliminary responses in both the RPX and Apple proceedings
`is set for March 6, 2014.
`
`
`
`2 Although Apple and RPX filed separate petitions, based on the nature of the
`issues raised by the petitions, the Board exercised its discretion and held a joint
`conference call.
`3 This Order summarizes statements made during the conference call. A more
`complete record may be found in the transcripts, which may be found in the record,
`e.g., IPR2014-00171, Exs. 1075, 1076 and 1077.
`
`
`
`2
`
`
`
`Case IPR2014-000171 (Patent 6,502,135); Case IPR2014-000172 (Patent
`6,502,135); Case IPR2014-000173 (Patent 7,490,151); Case IPR2014-000174
`(Patent 7,921,211); Case IPR2014-000175 (Patent 7,921,211); Case IPR2014-
`000176 (Patent 7,418,504); Case IPR2014-00177 (Patent 7,418,504)
`
`Discovery
`2.
`Virnetx raised concerns regarding the proper identification of the real parties
`
`in interest in the RPX petitions. Specifically, Virnetx contends that there exists a
`real party in interest issue and/or privity relationship between RPX and Apple that
`impacts the RPX proceedings. Virnetx requests additional discovery to further
`investigate the relationship between RPX and Apple as Virnetx believes that the
`issue may be case dispositive.
`
`Based upon the information provided over the course of the three conference
`calls, the Board authorized Virnetx to file a motion for additional discovery. The
`motion is due no later than January 27, 2014, and Apple and RPX are authorized to
`file oppositions by no later than February 3, 2014. As the issues were discussed
`extensively during the calls, the Board limited the motions and oppositions to no
`more than seven (7) pages each.
`
`PETITIONER:
`
`Oliver R. Ashe, Jr.
`Gregory M. Howison
`HOWISON & ARNOTT, LLP
`oashe@ashepc.com
`ghowison@dalpat.com
`admin@dalpat.com
`
`PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`joseph.palys@finnegan.com
`naveen.modi@finnegan.com
`
`
`
`3
`
`
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