Filed on behalf of: RPX Corporation
`
`Case No. IPR2014-00173
`
`Paper No. __ _
`Filed: February 11, 2014
`
`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
`
`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 PROPOSAL REGARDING DISCOVERY
`
`
`
`Case No. IPR2014-00173
`
`Paper No. __ _
`Filed: February 11, 2014
`
`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
`
`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 PROPOSAL REGARDING DISCOVERY
`
`
`
`Case No. IPR2014-00173
`
`I.
`
`INTRODUCTION
`
`In accordance with the Order dated February 10, 2014 (Paper No. 24), the
`
`parties conferred regarding the Patent Owner's discovery requests. The ending
`
`point of these discussions was substantially the same as the starting point -
`
`VimetX's Exhibits 2002-2005, which the Board has already ruled are overly broad.
`
`RPX and Apple presented proposed modifications to the VimetX discovery
`
`requests with the objective of providing responsive infonnation to VimetX while
`
`balancing a variety of other factors. VimetX rejected the RPX and Apple
`
`proposals.
`
`II. RPX'S PROPOSAL REGARDING DISCOVERY
`
`The following reflects the proposal RPX presented to VimetX:
`
`REQUEST FOR PRODUCTION NO. 1:
`
`REQUEST FOR PRODUCTION NO. 2: Documents or things containing
`
`communications occurring on or prior to November 22, 2013, between RPX and
`
`Apple regarding the preparation or filing of the RPX IPRs.
`
`REQUEST FOR PRODUCTION NO. 3:
`
`1
`
`
`
`Case No. IPR2014-00173
`
`REQUEST FOR PRODUCTION NO. 4: Engagement agreements or
`
`retainer agreements and corresponding termination agreements between RPX and
`
`Sidley Austin, RPX and Howison & Arnott, and RPX and ASHE relating to the
`
`RPXIPRs.
`
`WITNESS STATEMENTS/FOLLOW-UP INTERROGATORIES: RPX
`
`will provide written statement(s) by one or more witnesses to testify to
`
`communications in request for production Nos. 2, 3 and/or 4 (above) that were not
`
`reduced to writing. VirnetX may submit a reasonable number of follow-up
`
`interrogatories within the scope of such written statement(s).
`
`MODIFICATION TO INSTRUCTIONS: Delete Instruction Nos. 3 and 4;
`
`add the term "responsive" before each instance of the term "document."
`
`MODIFICATION TO DEFINITIONS: Limit "communications" to tangible
`
`means and limit the terms "RPX", "Apple", "Sidley Austin", "Howison & Arnott"
`
`and "ASHE" to employees (and/or partners) of each entity.
`
`ADDITIONAL REQUIREMENTS: With respect to RFP Nos. 1-4, RPX
`
`proposes that all materials be produced in accordance with the provisions of the
`
`Default Protective Order currently in effect in these proceedings. Also, RPX
`
`proposes that the parties agree that the production of the documents in response to
`
`2
`
`
`
`RFP No. 4 would not be construed as a waiver of any privilege in these or any
`
`Case No. IPR2014-00173
`
`other proceedings.
`
`III. DISCUSSION
`
`RPX believes its proposal strikes the appropriate balance between a number
`
`of potentially competing factors (producing infonnation that is properly focused on
`
`the issues raised in the VimetX motion for discovery; maintaining the current
`
`schedule for the patent owner's preliminary responses; avoiding unnecessarily
`
`delving into privileged infonnation; achieving an efficient and cost-effective
`
`discovery process, etc.). VirnetX only accepted RPX's proposed RFP Nos. 1 and
`
`4, but these RFP's were of the same scope as or broader than the original VimetX
`
`RFPs.
`
`Production in response to proposed RFP Nos. 1-4 would provide VimetX
`
`with the infonnation it sought regarding
`
`-
`
`any documents or things containing communications between Apple and
`
`RPX regarding the preparation and filing of the RPX IPR petitions (including the
`
`filing of corrected petitions);
`
`which Sidley Austin, Howison & Arnott, and ASHE were each retained by RPX.
`
`The Witness Statement/Follow-Up Interrogatories proposal (including an
`
`; and the terms under
`
`3
`
`
`
`Case No. IPR2014-00173
`
`opportunity for follow-up interrogatories) is intended to efficiently provide an
`
`organized and first-hand accounting of any communications encompassed by
`
`proposed RFP Nos. 2, 3 and 4 that were not reduced to writing. VimetX flatly
`
`rejected this proposal and, in discussions, appeared to want to parlay the RPX
`
`proposal into a deposition under FRCP 30(b )( 6), thereby broadening its original
`
`requests for discovery from RPX. VirnetX also flatly rejected an alternative RPX
`
`proposal to allow cross-examination of any Witness Statements, again advocating
`
`for an open-ended 30(b)(6)-style deposition. Frankly, in addition to timing and
`
`expense, RPX's largest concern with presenting any witnesses for live testimony is
`
`that it will be perceived by VimetX as an unfettered opportunity to expand the
`
`scope of any discovery granted by the PT AB which, in tum, will provoke
`
`voluminous disputes regarding scope and privilege that will likely require
`
`significant PTAB involvement for resolution.
`
`The reasonableness ofVirnetX's current position should be viewed in light
`
`of the fact that, after RPX filed its petitions, VirnetX waited 36 days before
`
`seeking access to Exhibits 1072 and 1073 and 4 7 days before raising the issue of
`
`discovery with the PTAB.
`
`Respectfully submitted,
`
`/Oliver R. Ashe Jr./
`Oliver R. Ashe, Jr.
`Registration No. 40,491
`Counsel for Petitioner
`
`4
`
`
`
`Case No. IPR2014-00173
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the paper entitled
`"PETITIONER'S PROPOSAL REGARDING DISCOVERY" was served this
`1 l'h day of February, 2014, by e-mail, on the following counsel of record for Patent
`Owner and Apple, Inc.:
`
`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
`
`Jeffrey P. Kushan
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`E-mail: jkushan@sidley.com
`
`February 11,2014
`
`/Oliver R. Ashe, Jr./
`Oliver R. Ashe, Jr
`
`
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