Paper No. 34
`
`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 RESPONSE TO DISCOVERY
`
`
`
`
`
`VIRNETX EXHIBIT 2054
`RPX v. VirnetX
`Trial IPR2014-00173
`
`Page 1 of 5
`
`
`
`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 RESPONSE TO DISCOVERY
`
`
`
`
`
`VIRNETX EXHIBIT 2054
`RPX v. VirnetX
`Trial IPR2014-00173
`
`Page 1 of 5
`
`
`
`
`
`Pursuant to the Board’s Decision (Paper No. 32), and based on the scope of
`
`discovery identified in Third Party Apple’s Discovery Proposal, Apple Inc.
`
`(Apple) hereby responds as follows. Third Party Apple confirms that it has
`
`complied with the instructions and conditions set forth in the Board’s Order –
`
`Decision – Scope of Discovery (Paper No. 33) in providing this response.
`
`Apple observes that the parties agreed that the provision of information
`
`responsive to the discovery sought by Patent Owner does not constitute waiver of
`
`any attorney client privilege. Apple also observes that the Board’s discovery order
`
`is limited to communications between Apple and RPX, including counsel acting
`
`within the scope of agency of one of those parties.
`
`I.
`
`REQUESTS FOR PRODUCTION OF DOCUMENTS AND THINGS
`AND INTERROGATORY
`REQUEST FOR PRODUCTION NO. 1
`
`Documents or things containing communications between Apple and RPX
`
`regarding the preparation or filing of the RPX IPRs to the extent such responsive
`
`documents are not otherwise produced by RPX.
`
`Third Party Apple’s Response
`
`There are no documents or things responsive to this request.
`
`REQUEST FOR PRODUCTION NO. 2
`
`Documents or things containing communications between Apple and RPX
`
`regarding the First Addendum to the Membership and License Agreement,
`
`- 1 -
`
`Page 2 of 5
`
`
`
`
`
`including communications relating to negotiating the First Addendum to the
`
`Membership and License Agreement to the extent such responsive documents are
`
`not otherwise produced by RPX.
`
`Third Party Apple’s Response
`
`There are no documents or things responsive to this request that have not
`
`already been produced by RPX and identified in Appendix A of Petitioner’s
`
`Response to Discovery, other than those identified in Appendix A to this response.
`
`INTERROGATORY NO. 1
`
`Identify any communication between Apple and RPX not reduced to a
`
`tangible form and not otherwise identified in any document or thing produced in
`
`response to RFP No. 1 or RFP No. 2, in which Apple discussed with RPX (i) the
`
`preparation or filing of the RPX IPRs or (ii) the First Addendum to the
`
`Membership and License Agreement, including communications relating to
`
`negotiating the First Addendum to the Membership and License Agreement. For
`
`any such communication, describe the topic, the individuals between whom the
`
`communications occurred, and the approximate date of the communication.
`
`Third Party Apple’s Response
`
`There are no communications responsive to this interrogatory other than
`
`those that have already been identified in Appendices B and C of Petitioner’s
`
`Response to Discovery.
`
`- 2 -
`
`Page 3 of 5
`
`
`
`
`
`In making this representation, Third Party Apple confirms that it had no
`
`discussions with its counsel at Sidley Austin LLP during the period specified in the
`
`Board’s Order concerning the preparation or filing of the RPX IPRs, other than in
`
`relation to the communication between Apple and RPX identified in the second
`
`row of the table in Petitioner’s Appendix B (i.e., concerning a communication on
`
`or before November 8, 2013 between
`
` (RPX) and
`
`
`
`(Apple) concerning consent to file a copy of the confidential First Addendum to
`
`the Membership and License Agreement Between RPX and Apple to the Patent
`
`Office in connection with the RPX IPR petitions).
`
`
`
`Dated: March 4, 2014
`
`
`
`
`
`
`
`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
`
`
`
`- 3 -
`
`Page 4 of 5
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that on this 4th day of March, 2014, a copy of this Third
`Party Apple’s Response to Discovery, has been served in its entirety by e-mail on
`the following counsel of record for patent owner and on 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
`
`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
`
`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
`
`March 4, 2014
`
`
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`
`- 4 -
`
`
`Dated:
`
`Page 5 of 5
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