Filed on behalf of: RPX Corporation
`
`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
`
`Paper No. __ _
`Filed: February 3, 2014
`
`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 IPR2014-00173
`Patent 7,490,151
`
`PETITIONER'S OPPOSITION
`(To Patent Owner's Motion for Discovery)
`
`
`
`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
`
`Paper No. __ _
`Filed: February 3, 2014
`
`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 IPR2014-00173
`Patent 7,490,151
`
`PETITIONER'S OPPOSITION
`(To Patent Owner's Motion for Discovery)
`
`
`
`Table of Contents
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`REASONS THE PATENT OWNER'S MOTION SHOULD BE DENIED .. !
`
`III. CONCLUSION ................................................................................................ 7
`
`1
`
`
`
`PETITIONER'S OPPOSITION
`(To Patent Owner's Motion for Discovery)
`
`I.
`
`INTRODUCTION
`
`The Patent Owner's Motion for Additional Discovery (Paper No. 16;
`
`"POM") should be denied because it is grounded in speculation, not a showing that
`
`the requested additional discovery is in the interests of justice. RPX is the sole real
`
`party in interest as reflected by the undisputed facts already of record in these
`
`proceedings.
`
`II. REASONS THE PATENT OWNER'S MOTION SHOULD BE
`DENIED
`
`In the paragraph bridging pages 3-4, POM sets forth various rationales for
`
`the requested discovery. However, each of the stated rationales is based on
`
`speculation
`
`POM does not cite a shred of evidence to support its speculative rationales.
`
`Moreover, the proffered rationale for discovery of any and all communications,
`
`agreements, payments, etc. among Apple, RPX, Sidley Austin, Howison & Arnott,
`
`and ASHE, P.C. is based on speculation that contradict the undisputed facts,
`
`including at least the following:
`
`
`
`Petitioner's Opposition to Patent Owner's Motion for Discovery
`Case IPR2014-00173
`Page 2 of7
`
`0
`
`0
`
`o
`
`RPX retained Sidley Austin to assist RPX's existing outside patent
`
`counsel (Howison & Amott) to prepare petitions based on the existing publicly
`
`available petitions filed by New Bay and Apple. (Ex. 1074, p. 7, lines 7-15).
`
`o
`
`The difference between the starting point (publicly available petitions
`
`and declarations) and the ending point (RPX's petitions and declaration) is a matter
`
`of public record. The PT AB and VimetX have expressly noted that the RPX
`
`petitions and the Apple/New Bay petitions are similar. (Ex. 1075, p. 40, In. 20 to
`
`
`
`Petitioner's Opposition to Patent Owner's Motion for Discovery
`Case IPR2014-00173
`Page 3 of7
`
`p. 41, ln. 3, p. 42, lns. 5-8, p. 53, ln. 22 top. 54, In. 1, p. 54, lns. 7-8, p. 55, Ins. 1-
`
`3).
`
`o
`
`The metadata associated with RPX's petitions is attributable to Sidley
`
`Austin acting in its capacity as RPX's counsel. (Ex. 1076, p. 13, In. 12 top. 16, In.
`
`14, p. 28, Ins. 5-11 ). Sidley Austin did not sign the RPX petitions and is not
`
`RPX's counsel of record before the PTAB.
`
`o
`
`The RPX petitions certify that the decision to file the petitions, the
`
`content of the petitions, and prosecution of the IP Rs have been at the sole
`
`discretion ofRPX. (See, e.g., Petition at p. 3 (Paper No. 1); Ex. 2001, p. 61, lns. 8-
`
`21, p. 63, In. 15 top. 65, In. 6).
`
`Faced with these undisputed facts, POM turns to speculation that is based on
`
`misstatements of fact. For example, at page 1, last line; page 2, last line; page 3,
`
`first line, POM uses the terms "Apple's attorneys" and "Apple's counsel" to refer
`
`to Sidley Austin acting in its capacity as RPX' s counsel. While this play on words
`
`in POM aims to fuel the speculative nature of the motion, it is a misstatement of
`
`fact. Also, on page 5, at lines 1and10-12, POM states that RPX and Apple are
`
`"sharing" counsel. This is another significant misstatement of fact. RPX
`
`separately retained Sidley Austin to assist RPX' s existing counsel in the
`
`
`
`Petitioner's Opposition to Patent Owner's Motion for Discovery
`Case IPR2014-00173
`Page 4 of7
`
`preparation of the RPX petitions. POM does not cite any evidence suggesting that
`
`Sidley Austin has violated its legal or ethical obligations in its separate
`
`representations of Apple and RPX. Moreover, Sidley Austin was not designated as
`
`lead or backup lead counsel on any RPX petition and does not have the authority to
`
`act in such a capacity in these proceedings. Therefore, RPX maintains that it does
`
`not "share counsel" with Apple. Further, a finding that RPX and Apple "shared
`
`counsel" would not alone provide grounds for establishing privity, which is
`
`consistent with the analyses in the Asahi Glass and Phelps cases cited on page 5 of
`
`POM, as well as with recent PTAB decisions. See, e.g., Syntroleum Corporation v.
`
`Neste Oil OYJ, IPR 2013-0178, Paper No. 22, p. 7 (PTAB September 4, 2013);
`
`Samsung Electronics Co., Ltd. v. Unifi Scientific Batteries, LLC, IPR2013-0236,
`
`Paper No. 10, pp. 30-31 (PTAB September 25, 2013); Innolux Corporation v.
`
`Semiconductor Energy Laboratory Co., Ltd., IPR2013-00038, Paper No. 20, pp. 3-
`
`4 and Paper No. 25, p. 4 (PTAB April 30, 2013 and May 21, 2013, respectively).
`
`Additionally, notwithstanding the speculative arguments in the first full paragraph
`
`of page 2 of POM, RPX was solely responsible for the selection of claims and the
`
`decision to file corrected petitions.
`
`, Apple had no
`
`involvement or control in the filing of the corrected RPX petitions.
`
`
`
`Petitioner's Opposition to Patent Owner's Motion for Discovery
`Case IPR2014-00173
`Page 5 of7
`
`In a further attempt to fuel speculation to support the request for discovery,
`
`POM attempts to analogize to In re Guan, Control No. 95/001,045, Decision
`
`Vacating Filing Date (Aug. 25, 2008). In re Guan involved a "Troll-Busters"
`
`website that was offering to take "aim and fire" and "blue-light specials" to
`
`invalidate patents assigned to specific target companies on a quid pro quo basis on
`
`behalf of unidentified real parties in interest. The individual petitioner and real
`
`party in interest appeared to be one in the same, the petitioner did not reveal the
`
`sources for the information contained in the petition, and the petitioner was unable
`
`to identify entities that would provide input in the prosecution of the
`
`reexamination. The USPTO properly concluded "Troll Busters cannot act as a
`
`'shill' in an inter partes reexamination request to shield the identity of the real
`
`party or parties in interest." In re Guan at p. 7.
`
`RPX is a publicly-traded company founded in 2008 with over 125
`
`employees, more than 160 member companies, and 2012 revenues of more than
`
`$197 million. (Ex. 2007, pp. 6, 13, and 39). RPX is transparent about its business
`
`model and the various services it provides to its members. RPX's Annual Report
`
`is publicly available and describes virtually every aspect ofRPX's business. (Ex.
`
`2007). Likewise, RPX maintains a website that describes the RPX business model
`
`
`
`Petitioner's Opposition to Patent Owner's Motion for Discovery
`Case IPR2014-00173
`Page 6 of7
`
`and the various services offered to its growing network of member companies.
`
`(See http://www.mxcom.com/). POM does not identify a single entry in any of the
`
`documents it relies upon to suggest that RPX offers quid pro quo services, seeks to
`
`hide the identity of the real parties in interest in IP Rs (or any other proceeding), or
`
`has "blue-light specials" to target specific companies or patents. Rather, RPX is
`
`the leading provider of patent risk solutions, offering defensive buying; acquisition
`
`syndication, patent intelligence, insurance services, and advisory services. RPX's
`
`decision to engage in IPR proceedings is a natural, logical, and legitimate
`
`outgrowth of its commercial interests in reducing risks posed by patents that are
`
`overvalued and/or are of questionable validity.
`
`Apple and RPX likely share a common view that the involved VirnetX
`
`claims are not patentable over the prior art, but have separate and distinct interests
`
`with respect to the VirnetX patents. VirnetX and Apple have a long history of
`
`litigation, including ongoing litigation and pending reexamination proceedings
`
`against the involved VirnetX patents. (Ex. 2009; Ex. 1075, p. 21, Ins. 2-3).
`
`Therefore, Apple and VirnetX have ample reasons to advance their own interests
`
`and seek a bilateral solution to their ongoing disputes. However, a resolution of
`
`the Apple - VimetX disputes would not address all ofRPX's interests, which
`
`
`
`Petitioner's Opposition to Patent Owner's Motion for Discovery
`Case IPR2014-00173
`Page 7 of7
`
`separately take into account the impact of the VirnetX patents and these petitions
`
`on the entire patent market, including the valuation oflow-quality patents, risk of
`
`assertion of the VirnetX patents against other companies (including RPX's current
`
`160+ member companies), the impact on RPX products that provide insurance to
`
`policyholder members against infringement suits brought by non-practicing
`
`entities, and RPX's ability to use IPRs to improve patent quality. Therefore, while
`
`the factual bases for the Apple and RPX petitions may be similar, the interests of
`
`each party are separate and distinct.
`
`III. CONCLUSION
`
`POM does not establish that additional discovery would serve the interests
`
`of justice and, therefore, the relief requested therein should be denied.
`
`February 3, 2014
`
`Respectfully submitted,
`
`/Oliver R. Ashe Jr./
`Oliver R. Ashe, Jr.
`Registration No. 40,491
`Counsel for Petitioner
`
`ASHE, P.C.
`11440 Isaac Newton Square North, Suite 210
`Reston, VA 20190
`Tel.: 703-467-9001
`E-mail: oashe@ashepc.com
`
`
`
`Appendix A To Petitioner's Opposition to Patent Owner's Motion for Discovery
`Case IPR2014-00173
`Page 1 of2
`
`Appendix A
`
`List of Evidence
`
`I.
`
`Exhibits Cited
`
`The following exhibits are cited in this opposition:
`.
`
`. .
`
`" · " ·--••
`
`.
`
`,Exhib1t!No .. ) I
`
`·..
`
`. . ;.·"· .. ,.
`
`·· ...
`
`Ex. 1073
`
`' "
`
`' , " '
`
`•
`
`.. .
`Desc.ription ofDocumeut
`. ...
`••••••••••• ••••
`PROTECTIVE ORDER MATERIAL - Executed Addendum
`
`.
`
`.· .
`
`••
`
`•·
`
`..
`
`••
`
`Agreement.
`
`Ex. 1074
`
`PROTECTIVE ORDER MATERIAL- Confidential Transcript
`
`of Conference Call held on January 10, 2014.
`
`Ex. 1075
`
`Redacted Transcript of Conference Call held on January 8, 2014.
`
`Ex. 1076
`
`Redacted Transcript of Conference Call held on January 10, 2014.
`
`Ex. 2001
`
`PROTECTIVE ORDER MATERIAL - Confidential Transcript
`
`of Teleconference of January 8, 2014.
`
`Ex. 2007
`
`RPX Corp., Annual Report (Form 10-K) (Mar. 11, 2013),
`
`available at
`
`htt11://ir.mxcom.com/secfiling.cfin?filingID= 1509432-13-8
`
`Ex. 2009
`
`Final Judgment Against Apple in VirnetX Inc. v. Cisco Systems,
`
`Inc. et al., Case No. 6:10-CV-417 (E.D. Tex. Feb. 28, 2013).
`
`
`
`Appendix A To Petitioner's Opposition to Patent Owner's Motion for Discovery
`Case IPR2014-00173
`Page 2 of2
`
`II.
`
`Paper Cited
`
`The following paper is cited in this opposition:
`
`Paper No. 1
`
`Petition for Inter Partes Review, filed November 20, 2013.
`
`Paper No. 16
`
`PROTECTIVE ORDER MATERIAL-Patent Owner's Motion
`
`for Discovery from RPX Corporation and Apple, Inc., filed
`
`January 27, 2014.
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the paper entitled
`"PETITIONER'S OPPOSITION (To Patent Owner's Motion for Discovery)"
`was served this 3rd day of February, 2014, by e-mail, on the following counsel of
`record for Patent Owner:
`
`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
`
`February 3, 2014
`
`/Oliver R. Ashe Jr./
`Oliver R. Ashe, Jr.
`
`
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