throbber
March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`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)
` Monday, March 3, 2014
` 3:00 p.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
`
`VIRNETX EXHIBIT 2055
`RPX v. VirnetX
`Trial IPR 2014-00173
`
`Page 1 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`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. |
`——————————————————————————————
`
` Monday, March 3, 2014
` 3:00 p.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 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`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
`
`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 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`4
`
` A P P E A R A N C E S (Cont'd)
`
` On behalf of Virnetx Inc.:
` 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
` -- 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 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`5
`
` A P P E A R A N C E S (Cont'd)
`
` On behalf of Apple Computers (Cont'd):
` JENNIFER L. YOKOYAMA, ESQ.
` Apple Inc.
` 1 Infinite Loop
` Cupertino, California 95014
` (408) 974-0761
`
` ALSO PRESENT:
` JONATHAN WONNELL, Court Reporter
`
`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 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`6
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` P R O C E E D I N G S
` (3:00 p.m. EST)
` JUDGE TIERNEY: Okay. We'll begin with
`a brief roll call starting with -- let's start with
`the patent owner today.
` MR. MODI: Your Honor, this is Naveen
`Modi, counsel for Virnetx. It's just going to be
`me today. Mr. Palys could not make it because of
`the snowstorm and his traveling, so --
` JUDGE TIERNEY: Understood. Thank you
`for joining us. Now let's turn it over to RPX. Do
`we have counsel for RPX on the line?
` MR. ASHE: Yes, Your honor. This is
`Oliver Ashe.
` JUDGE TIERNEY: Is there anyone joining
`you today?
` MR. ASHE: Mr. Howison may join. I'm
`not sure. But let's proceed without him.
` JUDGE TIERNEY: Okay. And is there a
`representative from Apple on the line today?
` MR. KUSHAN: Yes, Your honor. This is
`Jeff Kushan. And we may be joined by my partner,
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 6 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Joe Micallef, and also one in-house attorney at
`Apple depending on the snow.
` JUDGE TIERNEY: Understood.
` MR. MICALLEF: This is Joe Micallef.
`I'm on the line.
` JUDGE TIERNEY: Thank you. And I'm just
`going to throw this out beginning with the patent
`owner and then we'll go to RPX and Apple. Are
`there any issue we'll be discussing today that are
`going to be subject to a protective order?
`Beginning with the patent owner.
` MR. MODI: Your Honor, there might be.
`I think there are documents that were marked
`confidential under the protective order by RPX. So
`we might get into some of those issues today.
` JUDGE TIERNEY: Do you have any
`objections to the people that were identified by
`RPX or Apple attending this call, given the nature
`of the potential protective order issues?
` MR. MODI: Your Honor, we do not.
`Obviously it's up to RPX because I believe RPX is
`the one that had marked these documents as
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 7 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`confidential under the protective order.
` JUDGE TIERNEY: Okay. Going next to
`RPX, do you have any objections to the additional
`individuals that were identified during the roll
`call?
` MR. ASHE: My understanding is that all
`of them have signed off on being subject to a
`default protective order. So we don't have any
`objection unless that understanding is incorrect.
`There was mention of somebody from Apple joining.
`I don't know who that is and whether they're under
`the protective order or not.
` MS. YOKOYAMA: Hi, Mr. Ashe. This is
`Jennifer Yokoyama from Apple. I was the one who
`signed the protective order in this matter.
` MR. ASHE: Okay.
` JUDGE TIERNEY: Okay. Going lastly to
`Apple are there any individuals that you're
`concerned with regarding protective order issues?
` MR. KUSHAN: No, as long as -- I mean,
`from the last couple of comments it sounded like
`there would be a basis for treating this transcript
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 8 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`as being subject to the protective order, but we
`don't have any problem with the participants in the
`call subject to that.
` JUDGE TIERNEY: Okay. At this point in
`time I'm going to ask that before the transcript be
`filed with the board that the parties confer and
`determine whether or not it needs to be filed under
`seal. If it's going to be filed under seal, also
`see if there is an opportunity to provide a
`redacted copy for public consumption. Any
`objections, beginning with the patent order?
` MR. MODI: No objections, Your Honor.
` JUDGE TIERNEY: RPX?
` MR. ASHE: No, Your Honor.
` JUDGE TIERNEY: Apple?
` MR. KUSHAN: No, Your Honor.
` JUDGE TIERNEY: All right. With that we
`have the procedural matters out of the way. Let's
`begin. My understanding is that patent owner has
`requested this conference call. Is that correct,
`patent owner?
` MR. MODI: Yes, Your Honor.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 9 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`10
`
`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. If you would
`begin by giving us a brief overview of the purpose
`of the call.
` MR. MODI: Thank you, Your Honor, and I
`really appreciate the board holding this call on a
`snow day. But it sounds like that's kind of the
`norm in D.C. now. So we had requested this call,
`Your Honor, because the parties have a disagreement
`over the board's order that defined the scope of
`discovery.
` So that's specifically Paper Number 31
`in the '171 proceeding. As you may recall, that
`order required RPX to respond to the discovery by
`last Thursday and Apple's response is due three
`business days after RPX's response. Now, we did
`receive RPX's response on Thursday and their
`response raised several issues. And I just wanted
`to raise these issues with the board promptly given
`the nature of the issues.
` So with that, we have several issues. I
`thought, Your Honor, it would be best to sort of go
`issue by issue and maybe get everyone's thoughts on
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 10 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`them and sort of move that way if that's acceptable
`to the board.
` JUDGE TIERNEY: Okay. Please begin.
` MR. MODI: Okay. So the first issue we
`have is the parties disagree regarding the scope of
`the request. I think it is best to use one of the
`discovery requests to illustrate the dispute. As
`you may recall, the board ordered RPX and Apple to
`produce documents or things containing
`communications within Apple and RPX regarding the
`preparation or filing of the RPX IPRs.
` The discovery request defined Apple and
`RPX to include their agents. Agents include
`attorneys such as Sidley Austin. When you insert
`this definition back into the request, RPX and
`Apple were to produce documents or things
`containing communication between Apple's agents and
`RPX's agents, including communications between
`Sidley and Apple regarding the Apple IPRs since
`Sidley was acting behalf of Apple and RPX.
` Here's where the dispute arises. First,
`it is not clear to us how Apple and RPX are
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 11 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`interpreting the definition of Apple and RPX.
`We've asked them to clarify it and we have actually
`asked direct questions and they have not given us
`answers.
` Second, Apple and RPX appear to be
`refusing to provide or log any communications
`between Apple's agents and RPX's agents, including
`communications between Sidley and Apple. As you
`may recall, during one of the many calls we have
`had on these issues we had discussed how the
`parties would address privilege concerns and
`everyone seemed to agree that any communications
`that are withheld on the basis of privilege would
`be logged and provided for in-camera review by the
`board.
` But now Apple and RPX appear to be not
`only withholding communications that fall under the
`scope of the board's order; they also do not want
`to provide any log. Accordingly, we seek the
`board's guidance on this issue.
` And maybe, Your Honor, it's appropriate
`for me to stop here and see if the board has any
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 12 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`questions for me.
` JUDGE TIERNEY: Actually let's go back
`to the first point. You had a question about how
`Apple and RPX have interpreted certain provisions?
` MR. MODI: Yes, Your Honor.
` JUDGE TIERNEY: Okay. Could you please
`clarify again what provision you're asking for
`interpretation of?
` MR. MODI: Sure, Your Honor. Sure. So
`in the discovery request Apple and RPX respectively
`were defined to include their agents. So we've
`asked Apple and RPX to tell us when they responded
`to the discovery requests whether they produced any
`communications between Apple's attorneys and RPX's
`attorneys, given their definition of agents, or
`given their definition of Apple and RPX. And they
`have not given us a clear answer to that question.
` JUDGE TIERNEY: Okay. Why don't we stop
`there and turn it over to RPX and Apple to hear
`their views on that point. Beginning with RPX,
`could you please respond to the question that was
`raised?
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 13 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` MR. ASHE: Sure. That question was put
`to us and we referenced the instructions that were
`in the Apple proposal which defined RPX and Apple
`as including its agents, which would presumably
`include their outside counsel, and whether there
`were any communications, using those definitions,
`between Apple and RPX regarding the filing and
`preparation of the IPR petitions.
` And we responded in the paper filed on
`Thursday that there were no tangible communications
`that were responsive to that request given those
`definitions, and we identified two non-written
`communications between Apple and RPX that related
`to the filing and preparation of the petitions.
` And, frankly, we were ordered to produce
`those communications. We did that, so I really
`don't know how to respond to the question of
`whether or not we've responded to the order. We
`did, and the appropriate communications have been
`identified.
` JUDGE TIERNEY: Okay. Before I go over
`to Apple I would like to hear a little more from
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 14 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`15
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Virnetx why that was -- why RPX's response was
`allegedly insufficient.
` MR. MODI: Sure, Your Honor. The reason
`we felt RPX had not given us the information, I
`think Mr. Ashe just responded to the question. We
`had e-mail communications on this point, Your
`Honor, before we scheduled the call with the board
`asking RPX to basically answer this question saying
`whether they had produced communications between
`Apple's attorneys including outside counsel and
`RPX's attorneys including outside counsel, and we
`never got a clear answer as provided by Mr. Ashe.
` JUDGE TIERNEY: Let's stop here. Do we
`have a sufficient answer or is there something more
`that you're requiring at this point?
` MR. MODI: So for that specific issue,
`Your Honor, we do have the answer. But there was a
`second part to my inquiry. But before we go to
`that maybe we can ask Apple to confirm that they
`will also be --
` JUDGE TIERNEY: Okay.
` MR. MODI: To respond that that's their
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 15 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`16
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`understanding of, you know, the instructions.
` JUDGE TIERNEY: Let's stop and let's
`turn it over to Apple. Can you confirm what RPX
`just stated in response to the question or is there
`some additional information we need to be aware of?
` MR. KUSHAN: No. I just have one
`clarification. The definition of agency was a
`person acting as an agent of either party within
`the scope of agency. So it very clearly was
`intended to be communications from an employee or a
`representative of Apple acting in the scope of the
`agency to the other party; for example, Apple to
`RPX or RPX to Apple.
` And I think the very clear boundary we
`tried to draw in the Apple proposal made it clear
`we were aiming at the communications that had went
`from one party to the other, which would logically
`then be produced by any kind of discovery order.
` So as long as we're on the same page as
`far as what that definition is, we have no further
`points to add regarding Mr. Ashe's clarification.
` JUDGE TIERNEY: Okay. Virnetx, as to
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 16 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`17
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`point 1, how Apple and RPX have interpreted, do we
`need any more clarification or can we move on to
`the second point at this point?
` MR. MODI: Your Honor, I think we can
`move on to the second point. And I think it's
`actually tied to what Mr. Kushan mentioned in his
`last point regarding the definition. So maybe it
`is appropriate at this point with Your Honor's
`permission to move on to the second point.
` JUDGE TIERNEY: Yes, please. If you
`could move to the second point.
` MR. MODI: Sure. So our second point,
`Your Honor, is it is our belief that the discovery
`that Apple was ordered to -- Apple and RPX were
`ordered to provide includes communications within
`Apple and Sidley since Sidley was representing both
`Apple and RPX at the same time. So, again, maybe
`with the board's indulgence if I could give an
`example I think that might help frame this issue.
` So, again, as you know, Apple and RPX
`shared counsel, Sidley Austin. And here's the
`example that I wanted to provide for the board.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 17 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`18
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Let's say we have a whiteboard in a conference
`room. Party A comes to the room and writes certain
`things on the whiteboard and leaves the room.
`Party B then comes to the room and reads the
`whiteboard.
` Even though party A and party B never
`talked to each other, they were able to communicate
`with each other using the shared room and the
`whiteboard.
` Given the shared counsel situation here
`the board -- we believe the board's order required
`Apple and RPX to produce a log, communications that
`were between Apple and Sidley. And to the extent
`it sounds like Mr. Kushan may be interpreting the
`board's order differently, or maybe perhaps it was
`Virnetx's misunderstanding if it is, we ask that
`the board now order Apple and RPX to provide such
`communication.
` JUDGE TIERNEY: Let's turn it over to
`Apple first on this issue. Apple could you please
`respond to the allegations raised?
` MR. KUSHAN: Sure. I'm having a hard
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 18 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`19
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`time deciphering the difference between what we
`wrote in our proposal and now this new
`interpretation that Mr. Modi has --
` JUDGE TIERNEY: This is Judge Tierney.
`Let's go to the highest level.
` MR. KUSHAN: Sure.
` JUDGE TIERNEY: Did you comply with the
`order that effectively put in place your discovery
`option?
` MR. KUSHAN: Yes. Well, Your Honor,
`we're producing tomorrow --
` JUDGE TIERNEY: I'm sorry. You're
`right.
` MR. KUSHAN: But I can confirm we will
`comply with the order. I want to just clarify one
`point. As we just flagged, the language of our
`definition of "who is an agent of either party"
`made it very clear that we're not in a shared
`counsel representation here. The mandate for
`production spoke to each party, RPX and Apple, and
`sought discovery of communications from those
`entities to the other party.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 19 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`20
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` It was not an order that sought
`discovery of Apple and its counsel that were never
`communicated to RPX or vice-versa. And that is
`something we spelled out very clearly at pages 1 to
`2 of the Apple proposal. We made it very clear
`that the proposed discovery excludes communications
`between Apple and its counsel that were never
`conveyed to RPX.
` JUDGE TIERNEY: This is Judge Tierney.
`That is my understanding of it too. Judge Siu,
`Judge Easthom, do you have any difference that you
`would like to articulate?
` JUDGE EASTHOM: No. That was my
`understanding. That is Judge Easthom.
` JUDGE TIERNEY: Okay. So the board
`agrees that Apple's interpretation was the
`interpretation of the panel. Virnetx, could you
`please explain what more that we need to provide
`here that has not already been provided or will be
`provided?
` MR. MODI: Sure, Your Honor. And I'm
`sorry to interrupting you. I think the issue here
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 20 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`21
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`is clear, Your Honor, that what Apple tried to do
`with their definitions, it seems to me they are
`reading that in a limited way -- and it sounds like
`the board's understanding is in comport with
`that -- in that they are saying to the extent Apple
`and Sidley had communications regarding the RPX
`IPRs that they claim never made their way on to RPX
`they don't need to produce or log.
` The problem with that, Your Honor, is
`that Sidley -- as you know, the facts are
`undisputed at this point -- represents not only
`RPX; it represents Apple. And it represented Apple
`and RPX during the relevant time frame here.
` From the documents that have been
`produced to us it's clear that Sidley Austin was
`engaged at least as early as October 21st. And as
`you may recall, Your Honor, the Apple IPRs were
`ongoing at that point. And it's not been disputed,
`I don't think, by anyone that Sidley Austin has
`represented Apple and continues to represent Apple.
` So to the extent there were
`communications between Apple and Sidley regarding
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 21 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`the RPX IPRs, even though Sidley Austin claims that
`they may not have made their way to RPX in, let's
`say, a verbal communication, the fact that there
`were common attorneys working on this, on the RPX
`and Apple IPRs, we believe those communications
`should be produced or logged. If they believe
`they're privileged they can certainly log them.
` And as we discussed before they should
`be produced for in-camera review, because
`otherwise, Your Honor, they're essentially --
`what's happening here is they're using this shared
`counsel situation as a sword and a shield and we
`don't think that's proper.
` JUDGE TIERNEY: Okay. Let's take this
`at a high level. Sidley and Apple are going to
`allege attorney-client privilege, correct, patent
`owner?
` MR. MODI: Your Honor --
` JUDGE TIERNEY: That's what they've been
`alleging to date. Do we have any understanding
`that they will waive attorney-client privilege
`between Sidley and Apple?
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 22 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`23
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` MR. MODI: Your Honor, that's my
`understanding, that that's what they might claim.
`But I'm not sure. I think it still has to be
`articulated exactly what the privilege is. But
`yes, I believe that's what they're going to claim.
` JUDGE TIERNEY: So then what are we
`hoping to gain from this measure? You're going to
`get a privilege log, at best, and from the
`privilege log these communications are said not to
`have been given by RPX. So we have an internal --
`a privilege log of internal communications between
`attorney and client. And the need to provide that
`over to Virnetx is -- I'm trying to figure out what
`the need is in this case.
` MR. MODI: Your Honor, I think the issue
`is, again, they're hiding behind the attorney-
`client privilege. We have a unique situation here,
`Your Honor. They are using this shared counsel
`situation to basically hide these communications.
`And we believe it actually -- obviously, if they're
`claiming privilege, Your Honor, we are not able to
`see them unless there is a waiver of privilege or
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 23 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`24
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`there's -- some sort of -- one of the exceptions to
`privilege applies. And of course we don't have --
`we haven't seen the privilege log to make those
`arguments.
` But we think the fact that those
`communications exist and the fact that we're
`fighting so hard over these communications, if they
`don't have any communications, they should just
`tell us.
` JUDGE TIERNEY: Well, now wait. Let's
`back up. You're wanting to hear are there
`communications between the attorney and their
`client. And I think the safe assumption is there's
`going to be communications between an attorney and
`their client.
` MR. MODI: Your Honor, I'm sorry. I
`guess I should have clarified. The communications
`we're talking about are communications between
`Apple and Sidley regarding the RPX IPRs, Your
`Honor. So it's more limited. We're not asking for
`all communications, Your Honor.
` JUDGE TIERNEY: If those communications
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 24 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`25
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`were never provided to RPX, what are we trying to
`learn from that?
` MR. MODI: So, Your Honor, I guess
`maybe -- I guess I could give you another example.
`So let's say -- as you know, Sidley Austin prepared
`these petitions. If there was a draft that Sidley
`Austin prepared for these petitions, that draft
`was, let's say, given to Apple for review. Yet
`there are no communications regarding this draft
`because Sidley was acting as a conduit.
` If that is the case, Your Honor, those
`communications are relevant to the Guan factors and
`they certainly show control, suggestion,
`participation by Apple in these proceedings. They
`cannot hide behind Sidley Austin and participate
`through Sidley Austin as a conduit.
` JUDGE TIERNEY: Again, let's take --
`what my understanding is -- and I want Apple to
`chime in on this. My understanding is what you've
`been asking for is not communications going from
`RPX to Sidley through to Apple, but rather
`communications that were between Sidley and Apple
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 25 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`26
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`that were never communicated back to RPX.
` MR. MODI: Your Honor, yes, I agree with
`you. But I just want to -- I quibble with your
`last part. And I apologize. I just want to make
`sure I'm framing the issue correctly for you. The
`problem that we have is they keep on saying the
`communications don't go back to RPX. But the
`problem is they may not need to because Sidley
`represents RPX. Those are the undisputed facts.
` And one of the reasons Sidley was
`presumably hired is because of their expertise in
`these IPRs. So that's the problem we have, Your
`Honor. And we think it's right -- to the extent
`Your Honor doesn't feel that those communications
`should be logged, they can give them to the board
`for in-camera review and Your Honor can decide for
`yourself whether they go to the issue of control or
`privity.
` But we think they are extremely relevant
`and it would be extremely prejudicial to exclude
`those communications from either a log perspective
`or from having the board look at it from an
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 26 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00171 - IPR2014-00177
`CONFIDENTIAL
`
`Conference Call
`
`27
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`in-camera review perspective.
` JUDGE TIERNEY: Okay. I'd like to hear
`from either Apple or RPX, one of the parties step
`forward. Particularly let's start with Apple.
` MR. KUSHAN: Sure.
` JUDGE TIERNEY: What would be the
`prejudice to providing a privilege log at this
`point in time regarding the communications that are
`in discussion?
` MR. KUSHAN: Well, the prejudice -- let
`me -- I think it's -- I guess I would back up
`before the question gets engaged about a privilege
`log because Mr. Modi's theory rests on an
`assumption that isn't true. He's already been
`given a production from RPX that identifies, I
`think, the single interchange between RPX and Apple
`prior to the filing of the RPX petitions.
` And what Mr. Modi wants to find that
`does not exist is other communications that were
`indirect or some other theory that he's advancing.
`And there's nothing there. That's the problem with
`our reaction to this story.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 27 of 56
`
`

`

`March 3, 2014
`
`IPR2014-00

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket