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` Case IPR2014-00173
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`Paper No.
`Filed: February 11, 2014
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`Filed on behalf of: VirnetX Inc.
`By:
`Joseph E. Palys
`
`Naveen Modi
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
`Telephone: 571-203-2700
`Facsimile: 202-408-4400
`E-mail: joseph.palys@finnegan.com
`
` naveen.modi@finnegan.com
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RPX CORPORATION
`Petitioner
`v.
`VIRNETX INC.
`Patent Owner
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`
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`Case IPR2014-00173
`Patent 7,490,151
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`Patent Owner’s Response to Board’s Order Regarding Discovery
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`Case IPR2014-00173
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`I.
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`Introduction
`In accordance with the Board’s order during the February 7, 2014,
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`teleconference, and Order entered on February 10, 2014 (Paper No. 24)
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`(collectively referred to herein as “Board’s Order”), VirnetX, RPX, and Apple
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`conferred regarding VirnetX’s discovery contained in Exhibits 2002-2005.
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`Although the parties were able to reach agreement with respect to certain issues,
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`the parties were not able to completely resolve all the issues. This paper describes
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`the agreement the parties were able to reach, discovery that VirnetX continues to
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`seek, and other related issues discussed by the parties.
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`II. Agreement Between the Parties
`The parties agreed that RPX will respond to the following requests for
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`production that were contained in Exhibit 2002, and RPX will produce the
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`documents under seal in accordance with the provisions of the Default Protective
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`Order. The parties also agreed that production of agreements in response to
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`request (b) below shall not constitute waiver of any privilege with respect to those
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`agreements.
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`Requests for Production to RPX
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`1
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`Case IPR2014-00173
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`(b) Engagement agreements or retainer agreements and corresponding
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`termination agreements between RPX and Sidley Austin relating to the RPX IPRs.
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`Other Agreement
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`In addition, to reduce redundancy, the parties agreed that in response to
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`requests for production to Apple, Apple would not need to produce any documents
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`that have been already produced by RPX. Accordingly, VirnetX has modified its
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`discovery requests to Apple appropriately. See Section III.
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`III. Revised Discovery Sought By VirnetX
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`The parties discussed VirnetX’s remaining requests and were not able to
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`reach an agreement. In accordance with the Board’s Order regarding the scope of
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`discovery that the Board will allow, VirnetX has narrowed the discovery it is
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`seeking.1 First, VirnetX withdraws Request for Production No. 5 and Interrogatory
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`Nos. 2 and 4 directed to RPX, and Request for Production No. 3 directed to Apple.
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`Second, VirnetX requests that the Board order RPX and Apple to provide the
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`following discovery, which has been narrowed. VirnetX’s original instructions
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`and definitions contained in Exhibits 2002-2005 would apply to these requests.
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`1 VirnetX continues to believe that the discovery contained in Exhibits 2002-
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`2005 is proper and in the interests of justice. Nonetheless, VirnetX has narrowed
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`the discovery it seeks in accordance with the Board’s Order.
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`2
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`Case IPR2014-00173
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`Requests for Production to RPX
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`(a) Communications between you and Apple regarding the RPX IPRs,
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`including communications relating to challenging U.S. Patent Nos. 6,502,135;
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`7,418,504; 7,490,151; and 7,921,211 at the United States Patent and Trademark
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`Office and assistance with, filing, and/or preparation of any papers related to the
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`RPX IPRs. Please note that in response to this request, you do not need to produce
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`any communications that include VirnetX or its counsel.
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`(b) Communications through November 22, 2013 (the date of filing of
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`corrected petitions in IPR2014-00176 and -00177) between you and Apple
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`Interrogatories to RPX
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`(a) Identify communications and/or agreements called for in the Requests
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`for Production to RPX that were not reduced to writing.
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`(b) Identify communications through January 16, 2014 (the date the Board
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`authorized VirnetX to file a motion for additional discovery) between you and
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`Sidley Austin regarding the RPX IPRs, including communications relating to the
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`challenging of U.S. Patent Nos. 6,502,135; 7,418,504; 7,490,151; and 7,921,211 at
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`the United States Patent and Trademark Office and assistance with, filing, and/or
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`3
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`Case IPR2014-00173
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`preparation of any papers related to the RPX IPRs. Please note that in response to
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`this interrogatory, you do not need to identify any communications that include
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`VirnetX or its counsel.
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`Requests for Production to Apple
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`(a) Communications between you and RPX or Sidley Austin regarding the
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`RPX IPRs (other than those produced by RPX), including communications relating
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`to assisting with, filing, and/or preparing any papers related to the RPX IPRs. For
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`the communications between Apple and Sidley Austin, VirnetX only seeks
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`communications
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`through
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`the alleged termination date of Sidley Austin’s
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`representation of RPX.
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`(b) Communications through November 22, 2013 (the date of filing of
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`corrected petitions in IPR2014-00176 and -00177) between you and RPX
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`Deposition Topic to Apple
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`Communications in the Requests for Production to Apple that were not
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`reduced to writing, including identifying those communications.
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`4
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`Case IPR2014-00173
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`IV. Other Issues
`In addition to the scope of the requests, the parties discussed whether in lieu
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`of the interrogatories to RPX, RPX will provide written witness statement(s)
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`followed by written questions or cross examination by VirnetX. The parties were
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`not able to reach an agreement. VirnetX noted that the witness statement(s) are not
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`appropriate but that it is amenable to conducting deposition(s) covering the scope
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`of the topics in the interrogatories.
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`V. Conclusion
`VirnetX understands from the Board’s Order that in this paper, the Board
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`wants the parties to solely identify the discovery and not argue about its scope.
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`(See Exhibit 2027 at 12:8-15, 16:14-17:2.) If, however, Apple or RPX argue about
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`the scope, VirnetX requests that the Board either not consider their arguments or
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`allow VirnetX to respond before the Board decides the scope of the discovery.
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`Dated: February 11, 2014
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`Respectfully submitted,
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`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
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`Counsel for VirnetX Inc.
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`5
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` Case IPR2014-00173
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`Certificate of Service
`I certify that I caused to be served on the counsel identified below a true and
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`correct copy of the foregoing Patent Owner’s Response to Board’s Order
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`Regarding Discovery by electronic means on February 11, 2014:
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`Oliver R. Ashe, Jr.
`Ashe, P.C.
`11440 Isaac Newton Sq. North, Suite 210
`Reston, VA 20190
`
`Gregory M. Howison
`Howison & Arnott, LLP
`Lincoln Centre II
`5420 LBJ Freeway, Suite 660
`Dallas, TX 75240
`
`Jeffrey P. Kushan
`Joseph A. Micallef
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
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`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`
`Counsel for VirnetX Inc.
`
`
`
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`Dated: February 11, 2014
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