`
`On behalf of: RPX Corporation
`
`
`
`
`
` 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
`
`By:
`
`
`
`
`Paper No. _______
`Served: February 27, 2014
`
`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
`___________________
`
`
`
`RPX CORPORATION,
`Petitioner,
`
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION
`INTERNATIONAL CORPORATION,
`Patent Owner
`
`_____________
`
`Case IPR2014-00177
`Patent 7,418,504
`_____________
`
`PETITIONER’S RESPONSE TO DISCOVERY
`
`
`Page 1 of 17
`
`VIRNETX EXHIBIT 2045
`RPX v. VirnetX
`Trial IPR2014-00177
`
`
`
`
`
`Case No. IPR2014-00177
`
`PETITIONER’S RESPONSE TO DISCOVERY
`
`Pursuant to the Board’s Order – Decision – Scope of Discovery (Paper No.
`
`33), as well as the parties’ agreement identified in Patent Owner’s Response to
`
`Board’s Order Regarding Discovery (Paper No. 28), and in accordance with 37
`
`C.F.R. § 42.51(c), Petitioner hereby provides responses to the requests for
`
`production and interrogatory.
`
`The parties have agreed that the production of such information and
`
`materials does not constitute a waiver of any privilege. See Patent Owner’s
`
`Response to Board’s Order Regarding Discovery, Paper No. 28, p. 1; Third Party
`
`Apple’s Proposal Concerning Third Party Discovery, Paper No. 32, p. 1; and
`
`Petitioner’s Proposal Regarding Discovery, Paper No. 29, pp. 2-3. Moreover, all
`
`information and materials are provided herewith under the provisions of the
`
`Default Protective Order.
`
`An index of the produced documents is attached as Appendix A.
`
`I.
`
`Requests for Production Agreed Upon by Petitioner and Patent Owner
`
`Petitioner hereby responds to the requests for production agreed upon by the
`
`parties as set forth in Patent Owner’s Response to Board’s Order Regarding
`
`Discovery, Paper No. 28, pp. 1-2.
`
`1.
`
`The “Membership and License Agreement” referenced in Exhibit
`
`1083 of inter partes review Case No. IPR2014-00177 (the “First Addendum to the
`
`1
`
`
`Page 2 of 17
`
`
`
`
`
`Case No. IPR2014-00177
`
`Membership and License Agreement”).
`
`Petitioner’s Response: The document responsive to this request is attached
`
`and marked as RPX00001-00013.
`
`2.
`
`Engagement agreements or retainer agreements and corresponding
`
`termination agreements between RPX and Sidley Austin relating to the RPX IPRs.
`
`Petitioner’s Response: The document responsive to this request is attached
`
`and marked as RPX00014-00020.
`
`II.
`
`Petitioner’s Response to Discovery Order
`
`Pursuant to the Decision on scope of discovery (Paper No. 33), Petitioner
`
`hereby responds to the requests for production and the interrogatory identified in
`
`Third Party Apple’s Proposal Concerning Third Party Discovery, Paper No. 32, pp.
`
`4-5.
`
`REQUEST FOR PRODUCTION NO. 1: Documents or things containing
`
`communications on or before November 22, 2013, between Apple and RPX
`
`regarding the preparation or filing of the RPX IPRs.
`
`Petitioner’s Response: There are no documents or things responsive to this
`
`request.
`
`REQUEST FOR PRODUCTION NO. 2: Documents or things containing
`
`communications on or before November 22, 2013, between Apple and RPX
`
`regarding the First Addendum to the Membership and License Agreement,
`
`2
`
`
`Page 3 of 17
`
`
`
`
`
`Case No. IPR2014-00177
`
`including communications relating to negotiating the First Addendum to the
`
`Membership and License Agreement.
`
`Petitioner’s Response: The documents and things responsive to this
`
`request are attached and marked as RPX00021-00131.
`
`INTERROGATORY NO. 1: Identify any communications on or before
`
`November 22, 2013, 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 (a) the preparation or filing of
`
`the RPX IPRs or (b) 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.
`
`Petitioner’s Response: Communications responsive to Interrogatory No.
`
`1(a) are set forth in Appendix B. Communications responsive to Interrogatory No.
`
`1(b) are set forth in Appendix C.
`
`February 27, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /Oliver R. Ashe, Jr./
`Oliver R. Ashe, Jr.
`Registration No. 40,491
`Counsel for Petitioner
`
`
`
`
`
`3
`
`
`Page 4 of 17
`
`
`
`
`
`Case No. IPR2014-00177
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the paper entitled
`“PETITIONER’S RESPONSE TO DISCOVERY” was served this 27th day of
`February, 2014, by e-mail, on the following counsel of record for Patent Owner
`and Apple, Inc.:
`
`
`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
`
`Naveen Modi
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, 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
`
`
`
`February 27, 2014
`
`
`
`
`
`
`
`
`
` /Oliver R. Ashe, Jr./
`Oliver R. Ashe, Jr
`
`
`
`
`
`Page 5 of 17
`
`
`
`— Case N°- IPRZOI4-00177
`
`APPENDIX A
`
`INDEX OF DOCUNIENTS PRODUCED TO VIRNETX ON 2.27.14
`
`Bates No.
`
`Document
`T e
`
`Document
`Date
`
`Author Recipient
`
`Cc/Bcc
`
`Document
`Title
`
`Document
`Descrition
`
`RPX00001— Agreement
`
`December 11,
`2008
`
`License
`Agreement
`
`The “Membership
`and License
`Agreement”
`referenced in
`
`Exhibit 1083 of
`
`inter partes review
`Case No. IPR20l4-
`
`001 77.
`
`RPX00014— Letter
`
`October 21,
`201 3
`
`RPX0002l
`
`
`RPX00022
`
`
`RPX00023 —
`
`
`August 7,
`20 1 3
`
`August 7,
`2013
`
`August 7,
`2013
`
`Engagement
`Letter
`
`Engagement Letter
`between RPX
`
`Corporation and
`Sidle Austin LLP
`
`VimetX
`
`Call arrangement
`
`.
`
`VimetX
`
`Call arrangement
`
`VimetX
`
`Call arrangement
`
`
`
`Bates No.
`
`Document
`T e
`
`Document
`Date
`
`Author Recipient
`
`Cc/Bcc
`
`Document
`Title
`
`Document
`Descri
`tion
`
`Case No. IPR2014—00177
`
`
`
`Case No. IPR2014—00177
`
`
`
`— CaSeN°~1PR2°14-00177
`
`Document
`Document
`Document
`Document
`Descri
`tion
`Title
`Date
`T e
`
`
`
`Author Recipient
`
`Cc/Bcc
`
`Bates No.
`
`
`
`RPX00047—
`
`October 9,
`2013
`
`[Apple]
`
`Follow—up to
`App1e—RPX
`Premium
`Services
`
`Attaching copies of
`documents related
`to Apple-RPX
`Premium Services
`
`discussion
`
`discussion
`
`RPX00080—
`
`October 18,
`2013
`
`[App|e]
`
`[RPX] [ Innovation
`Promotion
`Agreement
`
`[R
`
`Call arrangement
`re: draft
`Amendment to
`Membership and
`License Agreement
`for Innovation
`
`Promotion
`
`
`
`— Case N°- 1PR2014-""177
`
`Bates No.
`
`Document
`T e
`
`Document
`Date
`
`Author Recipient
`
`Cc/Bcc
`
`Document
`Title
`
`Document
`Descri
`tion
`
`
`
`
`
`RPX00091— Email
`
`October 22,
`2013
`
`[R PX]
`
`RPX00096— Email
`
`October 22,
`2013
`
`[App|e]
`
`RPX
`agreement
`modifications
`
`RPX
`agreement
`modifications
`
`Attaching revisions
`to draft
`Amendment to
`
`Membership and
`License Agreement
`for Innovation
`
`Promotion
`
`Attaching revisions
`to draft
`Amendment to
`
`Membership and
`License Agreement
`for Innovation
`
`Promotion
`RPX00101- October22. I [RPX][RPx]
`
`
`
`Bates No.
`
`Document
`T e
`
`Document
`Date
`
`Author Recipient
`
`Cc/Bcc
`
`Case No. IPR2014—00177
`
`Document
`Title
`
`Document
`Descri
`tion
`
`agreement
`modifications
`
`re: revisions to
`draft Amendment
`
`to Membership and
`License Agreement
`for Imiovation
`
`Promotion
`
`
`
`— CaS°N°~1PR2°14-""177
`
`Bates No.
`
`Document
`T e
`
`Document
`Date
`
`Author Recipient
`
`Cc/Bcc
`
`Document
`Title
`
`Document
`Descri
`tion
`
`
`
`RPX00l27
`
`
`October 22,
`20 1 3
`
`[RPX]
`
`[Apple]
`
`[RPX]
`
`[RPX]
`
`Promotion
`
`Attaching fully
`executed
`Amendment to
`
`Membership and
`License Agreement
`for Innovation
`
`Promotion
`
`RPX
`agreement
`modifications
`
`RPX
`agreement
`modifications
`
`A Ie RPX
`
`[ pp ]
`
`RPX00121— Email
`
`October 22.
`
`2013
`
`RPX00124— Email
`
`October 22,
`2013
`
`[
`
`]
`
`RPX
`
`agreement
`
`Attaching executed
`
`Amendment to
`
`modifications Membership and
`License Agreement
`for Innovation
`
`
`
`Bates No.
`
`Document
`T e
`
`Document
`Date
`
`Author Recipient
`
`Cc/Bcc
`
`Document
`Title
`
`Document
`Descri
`tion
`
`
`
`
`
`— CaseN°-1PR2°14-00177
`
`APPENDIX B
`
`COMMUNICATIONS RESPONSIVE TO INTERROGATORY NO. 1(a)
`
`Individuals between whom
`Approximate Date
`communication occurred
`Early November —RPX) and, upon belief, RPX courtesy notification to Apple that RPX
`2013
`—Apple)
`was retaining Michael Allyn Fratto as an expert
`witness to su u on the RPX IPR etitions.
`
`connection with the RPX IPR etitions.
`
`On or before
`November 8, 2013
`
`RPX requested consent from Apple to file a
`copy of the confidential First Addendum To
`The Membership and License Agreement
`between RPX and Apple to the Patent Office in
`
`
`
`— CaSeN°-"R2014-00177
`
`APPENDIX C
`
`COMMUNICATIONS RESPONSIVE TO INTERROGATORY NO. l(b)
`
`Various dates
`between Fall 2010
`and August 2013
`
`communication occurred
`_RPX) and Various RPX
`members (including Apple) and other
`industry representatives
`
`A general RPX proposal to create a program,
`funded by RPX and RPX member contributions,
`to perform prior art searching and to challenge
`patents of questionable quality through post-grant
`proceedings at the U.S. Patent and Trademark
`Office.
`
`August 8, 2013
`
`August 21, 2013
`
`_o le ,
`
`,
`
`Apple informed RPX that Apple had been
`approached by New Bay Capital (“NBC”) and that
`NBC had asked Apple to compensate NBC for
`NBC to continue pursuing its IPRS against
`VimetX_ Apple informed RPX that it was not
`interested in NBC’s offer. Apple inquired about
`the status of the previously—socialized RPX
`program to perform prior art searches and
`challenge patents of questionable quality. RPX
`informed Apple that there was existing internal
`support for such a program and that other
`companies had expressed significant interest in
`supporting such an RPX program. RPX informed
`Apple that RPX would schedule a follow-up
`discussion with A o le.
`Apple),2 RPX infonned Apple that RPX had secured
`RPX
`internal a roval for launchin a ro am focused
`
`
`
`— CaseN°-IPR2014-00177
`
`Approximate Date
`
`Topic
`
`Individuals between whom
`communication occurred
`and—
`
`RPX)
`
`on patent quality. RPX and Apple discussed
`potential contribution levels. RPX advised Apple
`that RPX would be using RPX’s own funds under
`the program, but that RPX would be able to do
`more under the program with larger contributions
`from participating companies. RPX indicated that
`it would follow u with a formal ro osal.
`October 4, 2013 - ,‘ Premium membership services and transparency
`(RPX),
`Apple), and
`program.
`
`October 21, 2013
`
`,
`
`RPX presented its proposal for the Innovation
`Promotion amendment.
`
`October 22, 2013
`
`,
`
`Discussed Apple concern that RPX would not use
`all of the fimds that Apple contributed to the
`program focused on patent quality. RPX
`explained that RPX could not agree to Apple’s
`proposed requirement that activities in the
`program would continue until all funds were used
`because (1) it would be practically impossible for
`RPX to determine when all of the funds were
`
`spent in light of the fact that RPX was devoting its
`own internal resources (for example, employee
`time/salary) and funds to the program and (2)
`trackin use of funds would also have undesirable
`
`
`
`Approximate Date
`
`Individuals between whom
`
`Topic
`
`communication occurred
`
`Case No. IPR2014—00177
`
`accounting implications for RPX because RPX
`would only be able to recognize revenue by tying
`funds to activities and would not be able to use
`
`
`
`much simpler ratable accounting. RPX also
`informed Apple that the reason there was an end
`date to the agreement was that RPX would not be
`able to ratably account for the money unless there
`was an end date. RPX emphasized (1) that it
`would be using its own funds and would likely be
`taking a loss to get the program going and (2) that
`RPX had a strong incentive to do a good job so
`RPX could continue and expand the program.
`A a le acce ted the RPX osition_