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`Case No. IPR2014-00175
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`Paper No. __ _
`Filed: February 11, 2014
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`By:
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`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
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`RPX CORPORATION,
`Petitioner,
`
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION
`INTERNATIONAL CORPORATION,
`Patent Owner
`
`Case IPR2014-0017 5
`Patent 7,921,211
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`PETITIONER'S PROPOSAL REGARDING DISCOVERY
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`Case No. IPR2014-00175
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`I.
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`INTRODUCTION
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`In accordance with the Order dated February 10, 2014 (Paper No. 25), the
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`parties conferred regarding the Patent Owner's discovery requests. The ending
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`point of these discussions was substantially the same as the starting point -
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`VimetX's Exhibits 2002-2005, which the Board has already ruled are overly broad.
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`RPX and Apple presented proposed modifications to the VimetX discovery
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`requests with the objective of providing responsive information to VirnetX while
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`balancing a variety of other factors. VirnetX rejected the RPX and Apple
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`proposals.
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`II. RPX'S PROPOSAL REGARDING DISCOVERY
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`The following reflects the proposal RPX presented to VirnetX:
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`REQUEST FOR PRODUCTION NO. 1:
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`REQUEST FOR PRODUCTION NO. 2: Documents or things containing
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`communications occurring on or prior to November 22, 2013, between RPX and
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`Apple regarding the preparation or filing of the RPX IPRs.
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`REQUEST FOR PRODUCTION NO. 3:
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`1
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`Case No. IPR2014-00175
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`REQUEST FOR PRODUCTION NO. 4: Engagement agreements or
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`retainer agreements and corresponding termination agreements between RPX and
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`Sidley Austin, RPX and Howison & Amott, and RPX and ASHE relating to the
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`RPXIPRs.
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`WITNESS STATEMENTS/FOLLOW-UP INTERROGATORIES: RPX
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`will provide written statement(s) by one or more witnesses to testify to
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`communications in request for production Nos. 2, 3 and/or 4 (above) that were not
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`reduced to writing. VimetX may submit a reasonable number of follow-up
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`interrogatories within the scope of such written statement(s).
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`MODIFICATION TO INSTRUCTIONS: Delete Instruction Nos. 3 and 4;
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`add the term "responsive" before each instance of the tenn "document."
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`MODIFICATION TO DEFINTTTONS: Limit "communications" to tangible
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`means and limit the tenns "RPX", "Apple", "Sidley Austin", "Howison & Amott"
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`and "ASHE" to employees (and/or partners) of each entity.
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`ADDITIONAL REQUIREMENTS: With respect to RFP Nos. 1-4, RPX
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`proposes that all materials be produced in accordance with the provisions of the
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`Default Protective Order currently in effect in these proceedings. Also, RPX
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`proposes that the parties agree that the production of the documents in response to
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`2
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`RFP No. 4 would not be construed as a waiver of any privilege in these or any
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`Case No. IPR2014-00175
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`other proceedings.
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`III. DISCUSSION
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`RPX believes its proposal strikes the appropriate balance between a number
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`of potentially competing factors (producing information that is properly focused on
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`the issues raised in the VimetX motion for discovery; maintaining the current
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`schedule for the patent owner's preliminary responses; avoiding unnecessarily
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`delving into privileged information; achieving an efficient and cost-effective
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`discovery process, etc.). VirnetX only accepted RPX's proposed RFP Nos. 1 and
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`4, but these RFP's were of the same scope as or broader than the original VirnetX
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`RFPs.
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`Production in response to proposed RFP Nos. 1-4 would provide VirnetX
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`with the infonnation it sought regarding
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`-
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`any documents or things containing communications between Apple and
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`RPX regarding the preparation and filing of the RPX IPR petitions (including the
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`filing of corrected petitions);
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`which Sidley Austin, Howison & Arnott, and ASHE were each retained by RPX.
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`The Witness Statement/Follow-Up Interrogatories proposal (including an
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`; and the terms under
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`3
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`Case No. IPR2014-00175
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`opportunity for follow-up interrogatories) is intended to efficiently provide an
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`organized and first-hand accounting of any communications encompassed by
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`proposed RFP Nos. 2, 3 and 4 that were not reduced to writing. VimetX flatly
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`rejected this proposal and, in discussions, appeared to want to parlay the RPX
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`proposal into a deposition under FRCP 30(b)(6), thereby broadening its original
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`requests for discovery from RPX. VirnetX also flatly rejected an alternative RPX
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`proposal to allow cross-examination of any Witness Statements, again advocating
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`for an open-ended 30(b)(6)-style deposition. Frankly, in addition to timing and
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`expense, RPX's largest concern with presenting any witnesses for live testimony is
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`that it will be perceived by VirnetX as an unfettered opportunity to expand the
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`scope of any discovery granted by the PT AB which, in turn, will provoke
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`voluminous disputes regarding scope and privilege that will likely require
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`significant PTAB involvement for resolution.
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`The reasonableness ofVirnetX's current position should be viewed in light
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`of the fact that, after RPX filed its petitions, VimetX waited 36 days before
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`seeking access to Exhibits I 082 and I 083 and 47 days before raising the issue of
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`discovery with the PT AB.
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`Respectfully submitted,
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`/Oliver R. Ashe Jr./
`Oliver R. Ashe, Jr.
`Registration No. 40,491
`Counsel for Petitioner
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`4
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`Case No. IPR2014-00175
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the paper entitled
`"PETITIONER'S PROPOSAL REGARDING DISCOVERY" was served this
`11th day of February, 2014, by e-mail, on the following counsel of record for Patent
`Owner and Apple, Inc.:
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`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
`
`NaveenModi
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York A venue, 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
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`February 11, 2014
`
`/Oliver R. Ashe, Jr./
`Oliver R. Ashe, Jr
`
`