Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`——————————————————————————————
`RPX CORPORATION |
` Petitioner, |
` v. | Case IPR2014-00171
`VIRNETX INC. | Patent 6,502,135
` Patent Owner. |
`——————————————————————————————
`RPX CORPORATION |
` Petitioner, |
` v. | Case IPR2014-00172
`VIRNETX INC. | Patent 6,502,135
` Patent Owner. |
`——————————————————————————————
`RPX CORPORATION |
` Petitioner, |
` v. | Case IPR2014-00173
`VIRNETX INC. | Patent 7,490,151
` Patent Owner. |
`——————————————————————————————
`RPX CORPORATION |
` Petitioner, |
` v. | Case IPR2014-00174
`VIRNETX INC. | Patent 7,921,211
` Patent Owner. |
`——————————————————————————————
`RPX CORPORATION |
` Petitioner, |
` v. | Case IPR2014-00175
`VIRNETX INC. | Patent 7,921,211
` Patent Owner. |
`——————————————————————————————
` (Caption continues on next page)
` Friday, February 7, 2014
` 10:00 a.m. EST
` CONFIDENTIAL PURSUANT TO PROTECTIVE ORDER
`Teleconference before the Patent Trial and Appeals Board
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 1 of 33
`
`VIRNETX EXHIBIT 2027
`RPX v. VirnetX
`Trial IPR 2014-00173
`
`
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`——————————————————————————————
`RPX CORPORATION |
` Petitioner, |
` v. | Case IPR2014-00171
`VIRNETX INC. | Patent 6,502,135
` Patent Owner. |
`——————————————————————————————
`RPX CORPORATION |
` Petitioner, |
` v. | Case IPR2014-00172
`VIRNETX INC. | Patent 6,502,135
` Patent Owner. |
`——————————————————————————————
`RPX CORPORATION |
` Petitioner, |
` v. | Case IPR2014-00173
`VIRNETX INC. | Patent 7,490,151
` Patent Owner. |
`——————————————————————————————
`RPX CORPORATION |
` Petitioner, |
` v. | Case IPR2014-00174
`VIRNETX INC. | Patent 7,921,211
` Patent Owner. |
`——————————————————————————————
`RPX CORPORATION |
` Petitioner, |
` v. | Case IPR2014-00175
`VIRNETX INC. | Patent 7,921,211
` Patent Owner. |
`——————————————————————————————
` (Caption continues on next page)
` Friday, February 7, 2014
` 10:00 a.m. EST
` CONFIDENTIAL PURSUANT TO PROTECTIVE ORDER
`Teleconference before the Patent Trial and Appeals Board
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 1 of 33
`
`VIRNETX EXHIBIT 2027
`RPX v. VirnetX
`Trial IPR 2014-00173
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`2
`
` (Continued caption:)
`——————————————————————————————
`RPX CORPORATION |
` Petitioner, |
` v. | Case IPR2014-00176
`VIRNETX INC. | Patent 7,418,504
` Patent Owner. |
`——————————————————————————————
`RPX CORPORATION |
` Petitioner, |
` v. | Case IPR2014-00177
`VIRNETX INC. | Patent 7,418,504
` Patent Owner. |
`——————————————————————————————
`
` Friday, February 7, 2014
` 10:00 a.m. EST
` Teleconference before the Patent Trial and Appeals
`Board, the proceedings being recorded stenographically
`by Jonathan Wonnell, a Registered Professional Court
`Reporter (NCRA #835577) and Notary Public of the State
`of Minnesota, and transcribed under his direction.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 2 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`3
`
` A P P E A R A N C E S O F C O U N S E L
` (All participants appearing by phone)
`
` On behalf of the Patent Trial and Appeal
` Board:
` MICHAEL P. TIERNEY, ESQ., Administrative
` Patent Judge
` STEVEN C. SIU, ESQ., Administrative Law
` Judge
` KARL D. EASTHOM, ESQ., Administrative Law
` Judge
`
` On behalf of RPX Corporation:
` OLIVER R. ASHE, JR., ESQ.
` Ashe P.C.
` 11440 Isaac Newton Square North, Suite
` 210
` Reston, Virginia 20190
` (703) 467-9001
` oashe@ashepc.com
` -- and --
`
`1 2
`
`3
`
`4 5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 3 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`4
`
` A P P E A R A N C E S (Cont'd)
`
` On behalf of RPX Corporation (Cont'd):
` GREGORY M. HOWISON, ESQ.
` Howison & Arnott, LLP
` Lincoln Center II
` 5420 LBJ Freeway, Suite 660
` Dallas, Texas 75240
` (972) 680-6050
` ghowison@dalpat.com
`
` On behalf of Virnetx Inc.:
` JOSEPH E. PALYS, ESQ.
` Finnegan, Henderson, Farabow, Garrett &
` Dunner, LLP
` Two Freedom Square
` 11955 Freedom Drive
` Reston, Virginia 20190-5675
` (571) 203-2700
` joseph.palys@finnegan.com
` -- and --
`
`1 2
`
`3 4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 4 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`5
`
` A P P E A R A N C E S (Cont'd)
` On behalf of Virnetx Inc. (Cont'd):
` NAVEEN MODI, ESQ.
` Finnegan, Henderson, Farabow, Garrett &
` Dunner, LLP
` 901 New York Avenue, N.W.
` Washington, D.C. 20005
` (202) 408-4000
` naveen.modi@finnegan.com
`
` On behalf of Apple Computers:
` JEFFREY P. KUSHAN, ESQ.
` JOSEPH A. MICALLEF, ESQ.
` Sidley, Austin, Brown & Wood
` 1501 K Street, N.W, Suite 600
` Washington, D.C. 20005
` (202) 736-8000
` jkushan@sidley.com
` jmicallef@sidley.com
`
` ALSO PRESENT:
`
`1 2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 5 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`6
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` JONATHAN WONNELL, Court Reporter
` P R O C E E D I N G S
` (10:00 a.m. EST)
` JUDGE TIERNEY: This is Judge Tierney
`joining the conference call. Are Judges Siu and
`Easthom online?
` JUDGE SIU: Judge Siu is online.
` JUDGE EASTHOM: So is Judge Easthom.
` JUDGE TIERNEY: All right.
` JUDGE EASTHOM: Good morning.
` JUDGE TIERNEY: Good morning, everyone.
`Let's now check to see -- do we have
`representatives from the patent owner? Is Virnetx
`online, on the call?
` MR. PALYS: Yes, Your Honor. This is
`Joseph Palys and Naveen Modi for Virnetx and we
`have a court reporter on the line as well.
` JUDGE TIERNEY: Thank you. Do we have a
`representative from RPX on the phone?
` MR. ASHE: Yes. This is Oliver Ashe.
` MR. HOWISON: This is Greg Howison.
` JUDGE TIERNEY: And next do we have a
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 6 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`representative from Apple on the call?
` MR. KUSHAN: Yes, Your Honor. This is
`Jeff Kushan and Joe Micallef for Apple.
` JUDGE TIERNEY: Well, welcome everyone
`to the conference call. The purpose of today's
`call is to discuss the discovery motion oppositions
`that were filed previously. As you are aware, we
`are referring to inter partes review IPR
`2014-00171. We do have IPRs also 00172, et cetera,
`all the way to 178, as well as the Apple IPRs. The
`numbers I'll have to look at in a moment. I think
`it's 238. Apple, could you please chime in and
`give me the correct number?
` MR. KUSHAN: Yes. It's -- bear with me
`one second.
` JUDGE TIERNEY: I could find it. Just a
`moment. 237 and 238.
` MR. KUSHAN: That's correct.
` JUDGE TIERNEY: I just wanted to point
`out for purposes of today's call I will be
`referring mainly to the 171 with understanding that
`its effect is through the 178, and to the extent
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 7 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`necessary it also will be affecting the 00237 and
`00238 cases.
` Are there any questions regarding that?
` MR. PALYS: No, Your Honor. This is
`Joseph Palys. Just make a correction for the
`record. I believe the IPRs only go to 177.
` JUDGE TIERNEY: Thank you.
` MR. PALYS: I didn't know if you wanted
`these to control another matter.
` JUDGE TIERNEY: Since we do have the
`court reporter on the line we just want to make it
`clear that we're going to focus in -- if we only
`discuss 178 it does have affect to the other cases.
`I think that's my point. But yes, we should get
`the numbers corrected. So let the record reflect
`it only goes through 177 in my notes. Thank you
`for pointing that out.
` Anything else we need to be aware of
`before we begin? We'll start with patent owner.
` (No reply).
` JUDGE TIERNEY: Petitioner?
` MR. ASHE: Not for RPX.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 8 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` JUDGE TIERNEY: Apple? All right.
`Hearing no objections, I also want to point out to
`the extent necessary there may be information
`discussed concerning confidential business
`information. So I would like to know if anyone is
`online who is not subject to the protective order.
`If so please speak up now.
` Hearing no concerns or parties
`identifying themselves as not subject to the
`protective order, everyone who is partaking in the
`phone call will be subject to the protective order
`and we shall now begin.
` The board has reviewed the discovery
`motions and has the following to say. Basically to
`start off with, we have looked at the allegations
`and there are three basic areas that we've looked
`into. One is the funding. Is the funding given by
`Apple to RPX for purposes of filing these series of
`IPRs by RPX, and is it sufficient showing that it's
`necessary to take further discovery on that issue.
` As of this time based on the information
`provided the board concludes there has not been
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 9 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`10
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`sufficient information shown to go forward with
`discovery on that issue. Currently there has only
`been showing of speculation that there is anything,
`any relationship where Apple was providing funding
`to RPX for the purposes of filing these IPRs.
` Next, the question came up and we are
`looking at the Guan factors in particular. As
`pointed out by Virnetx, there was some question or
`issue raised -- at least they're raising an
`issue -- as to whether there has been sufficient
`control and direction such that Apple directed RPX
`to file the IPRs; and, secondly, whether or not
`Apple is exerting or has some level of control
`sufficient to show that there's a privy
`relationship between Apple and RPX for the ongoing
`IPRs.
` We are saying today that we will allow
`some level of discovery but we want it noted for
`the record, since we do have a court reporter, that
`in allowing discovery we are in no way reaching the
`underlying merits of the issue. Merely we are
`saying that there is sufficient basis shown at this
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 10 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`point in time to allow Virnetx to have some
`discovery on that issue.
` Now, also we want to point out that when
`we say some level of discovery we are cognizant
`that the statute provides that discovery must be
`necessary in the interests of justice.
`Furthermore, the legislative history consistent
`with the substitute speaks as to being conservative
`in our grants as to the discovery.
` So with that in mind, the board wants it
`noted that we are willing to provide some level of
`discovery on those issues. We have reviewed
`Virnetx's request. However at this time we are
`concerned that the request may be overly broad.
` So what we have today is the following.
`What we're going to go ahead with is allow the
`parties to identify -- and we're thinking somewhere
`in the range of five pages. No more than five
`pages, we should say. The parties will have
`sufficient time -- we're thinking an arrangement of
`next Tuesday. And we're going to have the parties
`speak to this in a moment -- where the parties
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 11 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`would let us know what they can agree on to have
`for discovery.
` So option one is they would be able to
`come to an agreement on those issues. We're
`looking at something less than what has been
`requested but something more than the zero which is
`what the opposition stated.
` If the parties are unable to come to an
`agreement as to what discovery should be had
`between the parties on these issues, then they are
`to each file and identify the specific boundaries
`of the requests. Specifically Virnetx would come
`in with a request saying this is what they are
`looking for. Also RPX and Apple would come in with
`some level of discovery.
` If RPX and Apple come back again with
`zero discovery on these two issues and Virnetx
`comes in with discovery of a certain nature, just
`be aware that between zero and something, the board
`will be inclined to give some discovery.
` However if Virnetx comes in with an
`overly broad request and Virnetx (sic) and Apple
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 12 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`come in with a more reasonable request, understand
`that we'd be more likely to take a more reasonable
`narrow request.
` If none of the requests come in and
`appear reasonable to the board, then the default is
`the board will go ahead and select itself with the
`understanding I think the parties are aware of that
`when the board is required to go ahead and pick and
`choose on its own, no one ends up very happy.
` So having said all that I'll ask my
`co-panelists if they have anything further to add
`on these points before we turn to the parties.
` Judge Easthom, do you have any further
`things you would like to add for the record?
` JUDGE EASTHOM: No. Thank you, Judge.
` JUDGE TIERNEY: Judge Siu, would you
`like to add anything for the record?
` JUDGE SIU: I have nothing to add.
` JUDGE TIERNEY: Okay. So at this time
`we will go and ask the parties if they have any
`questions or concerns regarding our outline that we
`just provided. I will start with the patent owner,
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 13 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Virnetx.
` MR. PALYS: Thank you, Your Honor. This
`is Joseph Palys. The one question I have is I
`understand from your ruling that if we come to an
`agreement the paper that we'd need to submit
`jointly would be five pages. But if there is no
`agreement am I correct to understand that our
`individual papers would be five pages as well?
` JUDGE TIERNEY: Yes. And actually let's
`back up. To sweeten the pot, shall we say, should
`the parties agree and have a joint request then the
`page limits are no longer necessary to be five.
`I'm open to a reasonable suggestion as to what it
`should be since it would be a joint request. And
`in fact do we actually need page limits if there's
`a joint request?
` MR. PALYS: The patent owner's position,
`the answer is no, I don't think so. But I will let
`the others respond.
` JUDGE TIERNEY: I'll go to first RPX.
`If it's a joint request would there need to be a
`page limit?
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 14 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`15
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` MR. ASHE: No, Your Honor.
` JUDGE TIERNEY: Apple?
` MR. KUSHAN: No, Your Honor.
` JUDGE TIERNEY: All right. So for
`purposes of today going forward the board
`authorizes the filing of a joint request with no
`page limit. The parties can go ahead and specify
`as they see fit. Again, keep in might the rules do
`provide whether the parties are in agreement as to
`discovery that the board -- the parties may agree
`at their own discretion and the board does not
`necessarily have to chime in as to the scope on
`that. So where the parties -- if they're able to
`agree, given that we are inclined to give some
`discovery, the board authorizes no page limit.
` Next, are there any further issues from
`Virnetx?
` MR. PALYS: Just to confirm, the due
`date is next Tuesday? Is that correct, Your Honor?
` JUDGE TIERNEY: That was what we had in
`mind. Again, we are cognizant that Virnetx has an
`upcoming filing for their preliminary response. We
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 15 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`16
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`wanted it to be timely with our discovery. If
`Tuesday causes concerns please let me know.
` MR. PALYS: No. We're fine with
`Tuesday, Your Honor.
` JUDGE TIERNEY: Okay. Any further
`things before I turn it over to the petitioner?
`RPX?
` MR. ASHE: We don't have anything
`additional, Your Honor.
` JUDGE TIERNEY: Okay. Apple, do you
`have any questions or concerns that we need to
`speak of today?
` MR. KUSHAN: I just wanted to raise two
`questions. First, the form of the filing that you
`would anticipate would be setting forth the
`discovery that has -- that the parties would agree
`to or would propose to be agreed to. It's not
`another briefing. It's simply identifying the
`discovery. Is that correct?
` JUDGE TIERNEY: Yes. The purpose of the
`briefing is not to go into whether or not the
`discovery should be authorized, but rather what is
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 16 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`17
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`the extent of the discovery that should be
`authorized.
` MR. KUSHAN: All right. And then the
`second question is in connection with the discovery
`that could be contemplated there is one issue about
`redundancy that I think we flagged in our brief,
`and that is to the extent that the discovery is
`directed toward communications between Apple and
`RPX, would there be a necessity of kind of dual
`production of essentially the same communications,
`or is that something you can provide guidance on at
`this point?
` JUDGE TIERNEY: I was hoping that the
`parties would be able to come to an amicable
`solution to that. My understanding is that there
`should not be a need to have duplicate production.
` MR. KUSHAN: Okay. Thank you, Your
`Honor.
` JUDGE TIERNEY: But I'm open to
`questions on that issue. Hearing no questions on
`that issue, my understanding is that the parties
`will be providing just one copy. Should there be
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 17 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`18
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`any questions or concerns about not having
`sufficient information provided of course we're
`available for a conference call on that issue.
` One issue I would like to point out now
`that we've had this brief discussion -- so we're
`going to have the filings on Tuesday. That will be
`five pages if the parties do not agree. Each party
`will be given five pages. I would like to go on to
`more the nitty gritty, which is I would like these
`papers filed -- Apple, do you have any problems
`filing them the same way you did in the last --
` MR. KUSHAN: No, Your Honor.
` JUDGE TIERNEY: So they will be filed
`with the 00171 as well as through the -- as pointed
`out by Virnetx -- through the 00177. The order
`we'll put out regarding this conference call will
`be put in both the 00171 through 177 as well as
`Apple filings.
` Now, an issue of concern that the board
`has is we understand that there is a concern that's
`been raised that the information sought would go to
`privileged communications. We would like at least
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 18 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`19
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`to have some discussion today as to the nature of
`the privilege and how we should go forward with
`this privilege being raised.
` And I will start with Apple on that
`issue since I believe it came up in their
`opposition.
` MR. KUSHAN: Thank you, Your Honor. The
`issue that we framed in our -- one of the issues we
`framed in our opposition was that there had been
`kind of an allegation of waiver of privilege which
`we did not believe had been substantiated. The
`motion filed by Virnetx didn't identify any waiver.
`And we also did not see a justification typically
`we'd see with requiring waiver of privileged
`communications.
` And in this vein we would assume that in
`the absence of a showing that it's fairly
`substantial, it would be improper to demand that
`either -- well, Apple -- waive privilege with
`regard to communications with counsel.
` You know, I can let RPX speak for
`itself. But our view is that they have not --
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 19 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`20
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`there has not been a basis established at this
`point for a waiver of privilege and we would assume
`that the discovery would be limited to the
`communications that would be non-privileged
`relating to RPX or Apple outside of the privileged
`communications with counsel.
` JUDGE TIERNEY: At this time the board
`has not found any waiver of privilege. Does that
`clarify things?
` MR. KUSHAN: Thank you, Your Honor.
` JUDGE TIERNEY: Okay. My concern, if
`you can speak a little more in detail, is I believe
`you've raised the issue of privilege. I believe it
`will be probably been coming up should there be
`some discovery on these issues. Can you enlighten
`the board as to how we should proceed where there
`is this privilege issue?
` MR. KUSHAN: Well, I guess we would
`proceed the way we would do it in litigation
`outside of the PTO proceedings where if there is a
`privileged communication sought we could provide a
`privilege log, if that is of value to the board.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 20 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`21
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`But, you know, at some level I would hope that the
`parties could agree to just focus on the
`non-privileged communications that exist and to
`bypass the issue.
` JUDGE TIERNEY: And this is Judge
`Tierney. That was the way I looked at this, it was
`going to be similar to litigation, but I wanted to
`make sure that you didn't believe that there was
`anything different, any approach that we should
`take here.
` Am I correct in saying that you would
`approach this the same way you would approach
`district court litigation where the issue of
`privilege arises?
` MR. KUSHAN: From our perspective at
`Apple, yes.
` JUDGE TIERNEY: Going to RPX on that
`issue, do you view this as needing to be approached
`in any different light than, say, a district court
`discovery when privilege is raised?
` MR. ASHE: No, Your Honor.
` JUDGE TIERNEY: Virnetx?
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 21 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` MR. PALYS: No, Your Honor. The only
`thing I would add is like we would have in district
`court litigation, we would like to hopefully hold
`the option for in-camera inspection by the board if
`we get a privilege log. To the extent the board
`wants to review these documents we're open to allow
`that to happen.
` JUDGE TIERNEY: I will express that it
`is the board's hope that the parties will be able
`to work out the issues. As a matter of fact, it's
`our hope that we will have a joint request next
`Tuesday. Furthermore, should the parties not be
`able to agree as to privilege, we would strongly
`encourage them to work out the details before
`coming to the board.
` The board is available to help on these
`issues but we always believe it's in the best
`interests of the parties to work it out themselves.
`With that being said, is there anything further,
`Apple, that you had questions or concerns regarding
`our decision and order today?
` MR. KUSHAN: No, Your Honor.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 22 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`23
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` JUDGE TIERNEY: Okay. I'll go back
`through. Before we adjourn I'm going to go back
`through everyone to make sure there is nothing
`further. I'll start again with the judges. Judge
`Siu, Judge Easthom, do you have anything further we
`need to raise today?
` JUDGE EASTHOM: Not from me, Your Honor.
`Judge Easthom.
` JUDGE SIU: Not from me either. Judge
`Siu.
` JUDGE TIERNEY: The panel has no further
`questions, so we'll go through the parties.
`Starting with patent owner.
` MR. PALYS: This is Joseph Palys. No
`further questions, Your Honor.
` JUDGE TIERNEY: RPX?
` MR. ASHE: No, Your Honor. Thank you.
` JUDGE TIERNEY: Apple?
` MR. KUSHAN: No, Your Honor. We're set.
` JUDGE TIERNEY: Okay. The last thing
`we'll say when the transcript becomes available --
`I believe, patent owner, you are providing the
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 23 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`24
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`court reporter today?
` MR. PALYS: That's correct, Your Honor.
` JUDGE TIERNEY: When the transcript is
`available would you please file it as an exhibit
`similar to the other transcripts you've had filed?
` MR. PALYS: Absolutely, Your Honor. And
`if I may, Jon, if you're on, we are requesting this
`to be rushed. If we can get a copy of that today
`that would be great. But we'll take care of that
`off line, Your Honor.
` JUDGE TIERNEY: All right. Thank you,
`everyone. We will put out an order summarizing
`what we've just discussed but keep in mind we will
`be referring and pointing to the transcript which
`is to be filed if the parties or the public would
`like further information.
` Is there any need to have this
`transcript identified as confidential subject to
`the protective order? I guess that's one issue I
`have before we adjourn. Patent owner?
` MR. PALYS: No, Your Honor.
` JUDGE TIERNEY: RPX.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 24 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`25
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` MR. ASHE: I think I'd like to look at
`the transcript before.
` JUDGE TIERNEY: Understood.
` MR. ASHE: So maybe provisionally have
`it submitted under seal.
` JUDGE TIERNEY: Understood. Is that any
`concern, going to patent owner, if you submit it
`under seal, provisionally under seal, to give time
`to the RPX to go ahead and see if there's something
`that needs be subject to the protective order?
` MR. MODI: No, Your Honor. In fact, we
`might be able to be make it easier. So we don't
`have to submit filings, we can send the transcript
`to RPX's counsel and work with them before we file
`it.
` JUDGE TIERNEY: I would appreciate that.
`All right. So the parties will work it out prior
`to filing to see if there is anything that
`potentially needs to be sealed.
` With that we're adjourned. We'll put
`out an order and I will put the details. I will be
`pointing to the transcript should people need
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 25 of 33
`
`
`
`Teleconference
`
`IPR2014-00171 - IPR2014-00177
`
`February 7, 2014
`
`26
`
`further details, but the order should be pretty
`straightforward. If there are any questions of
`course please contact the board and arrange a
`conference call.
` With that we're adjourned. Thank you
`everyone.
` (Whereupon, the conference call ended at
`10:19 a.m. EST.)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 26 of 33
`
`
`
`CERTIFICATE OF REPORTER
`
`I, Jonathan Wonnell, a Registered
`Professional Court Reporter
`(NCRA #835577) and
`Notary Public of the State of Minnesota, County of
`Hennepin, do hereby certify that the foregoing
`transcript is a true and accurate record of these
`proceedings;
`that said proceedings were taken in
`Stenotype note by me on the 7th day of February,
`2014, commencing at 10:00 a.m. EST and ending at
`10:19 a.m. EST.
`
`I further certify that present on behalf
`of Party Virnetx were Joseph Palys, Esq., and
`Naveen Modi, Esq., of Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP; on behalf of Party RPX
`Corporation was Oliver R. Ashe, Jr., Esq., of Ashe
`P.C. and Gregory M. Howison, Esq., of Howison &
`Arnott, LLC; and on behalf of Party Apple Inc. were
`Jeffrey Kushan, Esq., and Joseph A. Micallef, Esq.,
`of Sidley Austin LLP.
`
`I further certify that I am not related
`to, nor associated with any of the parties or their
`attorneys, nor do I have any disqualifying
`interest, personal or financial,
`in the actions
`within.
`
`Dated this 7th day of February, 2014,
`Hennepin County, Minnesota.
`
`in
`
`n Wonnell
`
`
`Public, Hennepin County, Minnesota
`My Commission expires January 31, 2017
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Page27of33
`
`Page 27 of 33
`
`
`
`
`
`TeleconferenceTeleconference
`
`February 7, 2014February 7, 2014
`
`1
`
`A
`a.m 1:20 2:12
`6:3 26:8 27:6,7
`able 12:3 15:13
`17:14 22:9,13
`25:12
`absence 19:17
`Absolutely 24:6
`accurate 27:5
`actions 27:14
`add 13:11,14,17
`13:18 22:2
`additional 16:9
`adjourn 23:2
`24:20
`adjourned
`25:20 26:5
`Administrative
`3:7,9,11
`affect 8:13
`agree 12:1 14:11
`15:10,14 16:16
`18:7 21:2
`22:13
`agreed 16:17
`agreement 12:4
`12:9 14:5,7
`15:9
`ahead 11:16
`13:6,8 15:7
`25:9
`allegation 19:10
`allegations 9:15
`allow 10:17 11:1
`11:16 22:6
`allowing 10:20
`amicable 17:14
`answer 14:18
`anticipate 16:15
`Appeal 1:1 3:5
`Appeals 1:22
`2:13
`appear 13:5
`
`appearing 3:3
`Apple 5:12 7:1,3
`7:10,12 9:1,18
`10:4,11,13,15
`12:14,16,22
`15:2 16:10
`17:8 18:10,18
`19:4,19 20:5
`21:16 22:20
`23:18 27:11
`appreciate
`25:16
`approach 21:9
`21:12,12
`approached
`21:18
`areas 9:16
`arises 21:14
`Arnott 4:6
`27:11
`arrange 26:3
`arrangement
`11:20
`Ashe 3:15,16
`6:20,20 8:22
`15:1 16:8
`21:21 23:17
`25:1,4 27:10
`27:10
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
