Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 24
`
`Entered: February 10, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION
`Petitioner,
`
`
`
`
`
`v.
`
`VIRNETX INC.
`Patent Owner.
`____________
`
`Case IPR2014-00171 (Patent 6,502,135)
`Case IPR2014-00172 (Patent 6,502,135)
`Case IPR2014-00173 (Patent 7,490,151)
`Case IPR2014-00174 (Patent 7,921,211)
`Case IPR2014-00175 (Patent 7,921,211)
`Case IPR2014-00176 (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.
`
`
`571-272-7822
`
`
`
` Paper 24
`
`Entered: February 10, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION
`Petitioner,
`
`
`
`
`
`v.
`
`VIRNETX INC.
`Patent Owner.
`____________
`
`Case IPR2014-00171 (Patent 6,502,135)
`Case IPR2014-00172 (Patent 6,502,135)
`Case IPR2014-00173 (Patent 7,490,151)
`Case IPR2014-00174 (Patent 7,921,211)
`Case IPR2014-00175 (Patent 7,921,211)
`Case IPR2014-00176 (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 IPR2014-00171 (Patent 6,502,135); Case IPR2014-00172 (Patent 6,502,135);
`Case IPR2014-00173 (Patent 7,490,151); Case IPR2014-00174 (Patent 7,921,211);
`Case IPR2014-00175 (Patent 7,921,211); Case IPR2014-00176 (Patent 7,418,504);
`Case IPR2014-00177 (Patent 7,418,504)
`
`A conference call was held on February 7, 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 VirnetX’s request for discovery
`regarding the identification of real party in interest and privies. A court reporter
`was present on the call.3
`
`
`Background
`In June and July 2013, Apple filed a series of petitions challenging VirnetX
`
`patents 6,502,135, 7,490,151, 7,418,504, and 7,921,211. See IPR2013-00354,
`IPR2013-00348, IPR2013-00349, IPR2013-00393, IPR2013-00394, IPR2013-
`00397, and IPR2013-00398. These patents were also challenged in a series of
`petitions filed by New Bay Capital. See IPR2013-00375, IPR2013-00376,
`IPR2013-00377, and IPR2013-00378. New Bay Capital later requested that its
`proceedings be terminated and the Board terminated the proceedings on November
`12, 2013.
`
`On November 20, 2013, RPX filed its involved petitions challenging
`VirnetX’s ’135, ’151, ’504 and ’211 patents. The content of the petitions
`substantially overlaps those filed by Apple and New Bay Capital.
`
`On December 6, 2013, Apple filed two petitions challenging VirnetX’s
`8,504,697 patent. See IPR2014-000237 and IPR2014-00238. The ’697 patent
`
`
`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 is to be filed by VirnetX.
`
`
`
`2
`
`
`
`Case IPR2014-00171 (Patent 6,502,135); Case IPR2014-00172 (Patent 6,502,135);
`Case IPR2014-00173 (Patent 7,490,151); Case IPR2014-00174 (Patent 7,921,211);
`Case IPR2014-00175 (Patent 7,921,211); Case IPR2014-00176 (Patent 7,418,504);
`Case IPR2014-00177 (Patent 7,418,504)
`
`claims priority benefit of a series of applications, including the applications which
`issued as the ’135, ’504 and ’211 patents.
`
`The Board denied Apple’s petitions challenging the ’135, ’151, ’504 and
`’211 patents on December 17, 2013.
`
`
`Discovery
`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. In light of the information provided during
`the conference calls, the Board authorized VirnetX to file a motion for additional
`discovery and RPX and Apple to file oppositions thereto.
`
`As stated during the February 7, 2014 conference call, the Board reviewed
`the motion and oppositions with respect to several factors including: questions as
`to whether payments were made to RPX by another group in exchange for the
`filing of the inter partes review requests, and whether another entity was directing
`or controlling the filing and content of the inter partes review petitions. Based
`upon the specific facts of this proceeding, the Board determined that VirnetX has
`demonstrated that it is in the interests of justice that at least some discovery be
`permitted on the issue of control of the proceeding. To aid the Board in
`determining the scope of discovery to be permitted, the Board authorized the
`parties to file briefs by no later than February 11, 2014. The parties are authorized
`to file up to five pages each of briefing as to the extent of discovery that should be
`
`
`
`3
`
`
`
`Case IPR2014-00171 (Patent 6,502,135); Case IPR2014-00172 (Patent 6,502,135);
`Case IPR2014-00173 (Patent 7,490,151); Case IPR2014-00174 (Patent 7,921,211);
`Case IPR2014-00175 (Patent 7,921,211); Case IPR2014-00176 (Patent 7,418,504);
`Case IPR2014-00177 (Patent 7,418,504)
`
`permitted on the issue of control with the understanding that a joint request filed by
`the three parties is not page limited.
`
`
`
`
`
`4
`
`
`
`Case IPR2014-00171 (Patent 6,502,135); Case IPR2014-00172 (Patent 6,502,135);
`Case IPR2014-00173 (Patent 7,490,151); Case IPR2014-00174 (Patent 7,921,211);
`Case IPR2014-00175 (Patent 7,921,211); Case IPR2014-00176 (Patent 7,418,504);
`Case IPR2014-00177 (Patent 7,418,504)
`
`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
`
`
`
`
`5
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