Paper No. 33
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`RPX, INC.
`
`Petitioner,
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION INTERNATIONAL
`CORPORATION,
`
`Patent Owner
`
`Patent No. 7,490,151
`Issued: Feb. 10, 2009
`Filed: Sep. 30, 2002
`Inventors: Edmund C. Munger, et al
`Title: Establishment of a Secure Communication Link Based Domain Name
`Service (DNS) Request
`____________________
`
`Inter Partes Review No. IPR2014-00173
`
`__________________________________________________________________
`
`THIRD PARTY APPLE’S PROPOSAL CONCERNING THIRD PARTY
`DISCOVERY
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`RPX, INC.
`
`Petitioner,
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION INTERNATIONAL
`CORPORATION,
`
`Patent Owner
`
`Patent No. 7,490,151
`Issued: Feb. 10, 2009
`Filed: Sep. 30, 2002
`Inventors: Edmund C. Munger, et al
`Title: Establishment of a Secure Communication Link Based Domain Name
`Service (DNS) Request
`____________________
`
`Inter Partes Review No. IPR2014-00173
`
`__________________________________________________________________
`
`THIRD PARTY APPLE’S PROPOSAL CONCERNING THIRD PARTY
`DISCOVERY
`
`
`
`
`
`
`
`
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`Apple Inc. makes the following proposal concerning discovery in IPR2013-
`
`00171 to IPR2013-00177. Pursuant to the Panel’s mandate, Apple met and
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`conferred with VirnetX and RPX in an attempt to reach an agreement on
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`discovery. Apple and RPX each made proposals in those discussions, but those
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`proposals were not accepted by VirnetX. Apple believes certain principles have,
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`however, been agreed upon by the three parties, namely: (i) that provision of a
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`witness for deposition would obviate the need for interrogatories on the same
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`topic; (ii) that Apple would only be required to produce responsive documents that
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`were not independently produced by RPX, (iii) that parties are not be required to
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`produce privileged documents or information, and (iv) that any production made
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`responsive to the discovery would not constitute a waiver of privilege.
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`
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`Apple’s proposed discovery is focused on the issues directly relevant to
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`VirnetX’s theory of privity and or real parties in interest. As this Board has noted,
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`those theories revolve around the question of whether Apple was in control of
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`RPX’s decision to file the IPRs at issue and the substance and parameters of the
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`RPX IPRs. For evidence to be relevant under VirnetX’s theory, that evidence
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`necessarily must concern communications that actually occurred between Apple
`
`and RPX. The discovery proposed below would provide documents or information
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`concerning any relevant communications that actually occurred between Apple and
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`RPX, including both direct communications between Apple employees and RPX
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`- 1 -
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`
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`employees and between agents of Apple or RPX. The proposed discovery
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`excludes communications between Apple and its counsel (in-house or external)
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`that were never conveyed to RPX. Such communications are privileged and are
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`ultimately irrelevant to the question of control, as they could not have an effect on
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`the conduct of RPX.
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`There also is a logical date boundary for any discovery; namely, the date on
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`which the last amended RPX IPR petition was filed (i.e., November 22, 2013).
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`Communications occurring after that date cannot under any reasonable theory be
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`portrayed as influencing the decision of RPX to file its IPRs or to affect the
`
`preparation of those IPRs. VirnetX nonetheless contends it is entitled to discovery
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`without regard to date. But as VirnetX must recognize, Apple and RPX have been
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`forced to communicate about the RPX IPRs in order to respond to the discovery
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`issues VirnetX has raised. Apple thus invites the Board to place an appropriate
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`limitation on any discovery it orders (e.g., communications on or before November
`
`22, 2013 or excluding any discovery concerning scheduling or discovery issues at
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`issue in the proceedings following the filing of the RPX IPRs).
`
`PROPOSED INSTRUCTIONS
`
`1.
`
`In responding to and producing documents and things responsive to these
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`requests, the responding party will comply with instructions in the Patent Trial
`
`Practice Guide.
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`- 2 -
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`
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`2.
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`A responding party shall timely amend its responses if it learns that the
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`response is incomplete or additional responsive information is found.
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`3.
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`All responsive documents must be produced as they are kept in the usual
`
`course of business, in the files or containers in which the responsive documents are
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`maintained, and in the order within each file or container in which such documents
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`are maintained; or all responsive documents shall be organized and labeled to
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`correspond with the requests below.
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`DEFINITIONS AND CONDITIONS
`
`1.
`
`The terms “document” and “thing” have the broadest meaning prescribed in
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`Federal Rule of Civil Procedure 34, including ESI and any physical specimen or
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`tangible item, in your possession, custody, or control.
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`2.
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`“Communications” shall mean the transmission or receipt of information of
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`any kind through any means (e.g., email, voicemail, audio, computer readable
`
`media or oral).
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`3.
`
`The term “RPX” means RPX Corporation, an employee of RPX Corporation
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`or a person acting as an agent of RPX Corporation within the scope of that agency.
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`4.
`
`The term “Apple” means Apple Inc., an employee of Apple Inc. or a person
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`acting as an agent of Apple Inc. within the scope of that agency.
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`5.
`
`“Sidley Austin” means Sidley Austin LLP or an employee or partner of
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`Sidley Austin LLP.
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`- 3 -
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`
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`
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`6.
`
`“RPX IPRs” means inter partes review Case Nos. IPR2014-00171,
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`IPR2014-00172, IPR2014-00173, IPR2014-00174, IPR2014-00175, IPR2014-
`
`00176, and IPR2014-00177.
`
`7.
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`A party is not required to produce documents, things or information subject
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`to a claim of privilege, including attorney work product. A party withholding
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`responsive documents on the basis of privilege shall provide a privilege log
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`identifying the responsive documents or information being withheld.
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`8.
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`The production of responsive documents or information shall not constitute
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`an express or implied waiver of any privilege held by the producing party.
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`I.
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`REQUESTS FOR PRODUCTION OF DOCUMENTS AND THINGS
`AND INTERROGATORY
`REQUEST FOR PRODUCTION NO. 1
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`Documents or things containing communications between Apple and RPX
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`regarding the preparation or filing of the RPX IPRs to the extent such responsive
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`documents are not otherwise produced by RPX.1
`
`
`1
`Apple proposes to produce any responsive documents and to provide its
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`response to the interrogatory 3 business days after the date of service of any
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`production of documents or information is served on the other parties by RPX.
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`This will enable review of the RPX produced documents to identify any other
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`documents or information required to be produced or identified.
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`- 4 -
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`
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`
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`REQUEST FOR PRODUCTION NO. 2
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`Documents or things containing communications between Apple and RPX
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`regarding
`
`
`
`
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` to the extent such responsive documents are
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`not otherwise produced by RPX.
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`INTERROGATORY NO. 1.
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`Identify any communication between Apple and RPX not reduced to a
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`tangible form and not otherwise identified in any document or thing produced in
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`response to RFP No. 1 or RFP No. 2, in which Apple discussed with RPX (i) the
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`preparation or filing of the RPX IPRs or (ii)
`
`
`
` .
`
` For
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`any such communication, describe the topic, the individuals between whom the
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`communications occurred, and the approximate date of the communication.
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`II. DEPOSITION
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`
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`A deposition of an Apple witness is not being proposed as it is not warranted
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`in view of the document requests and interrogatories set forth above, and because it
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`would be duplicative of any deposition ordered of a witness for RPX.
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`- 5 -
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`
`
`
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`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan (Reg No. 43,401)
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`
`Dated: February 11, 2014
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`CERTIFICATE OF SERVICE
`I hereby certify that on this 11th day of February 2014, a copy of this Third
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`Party Apple’s Proposal Concerning Third Party Discovery, has been served in
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`its entirety by e-mail on the following counsel of record for patent owner and on
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`the petitioner in IPR2014-00171, -00172, -00173 -00174, -00175, -00176 and -
`
`00177:
`
`Joseph E. Palys
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
`Phone: (571) 203-2700
`Fax: (202) 408-4400
`E-mail: joseph.palys@finnegan.com
`
`Oliver Ashe
`Ashe P.C.
`11440 Isaac Newton Square North,
`Suite 210
`Reston VA 20190
`Telephone: 703-467-9001
`Facsimile: 703-758-0519
`E-mail: oashe@ashepc.com
`
`Naveen Modi
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4065
`Facsimile: 202-408-4400
`E-mail: naveen.modi@finnegan.com
`
`Gregory M. Howison
`Howison & Arnott, LLP
`Lincoln Centre II
`5420 LBJ Freeway, Suite 660
`Dallas, TX 75240
`Phone: (972) 680-6050
`Fax: (972) 479-0464
`E-mail: ghowison@dalpat.com
`
`
`
`Dated:
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`February 11, 2014
`
`
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
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