`
`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. 7,418,504
`Issued: August 26, 2008
`Filed: November 18, 2003
`Inventors: Victor Larson, et al.
`Title: AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS
`USING SECURE DOMAIN NAMES
`____________________
`
`Inter Partes Review No. IPR2014-00177
`
`__________________________________________________________________
`
`THIRD PARTY APPLE’S RESPONSE TO DISCOVERY
`
`
`
`
`
`VIRNETX EXHIBIT 2060
`RPX v. VirnetX
`Trial IPR2014-00177
`
`Page 1 of 6
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`
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`Pursuant to the Board’s Decision (Paper No. 33), and based on the scope of
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`discovery identified in Third Party Apple’s Discovery Proposal, Apple Inc.
`
`(Apple) hereby responds as follows. Third Party Apple confirms that it has
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`complied with the instructions and conditions set forth in the Board’s Order –
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`Decision – Scope of Discovery (Paper No. 33) in providing this response.
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`Apple observes that the parties agreed that the provision of information
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`responsive to the discovery sought by Patent Owner does not constitute waiver of
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`any attorney client privilege. Apple also observes that the Board’s discovery order
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`is limited to communications between Apple and RPX, including counsel acting
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`within the scope of agency of one of those parties.
`
`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.
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`Third Party Apple’s Response
`
`There are no documents or things responsive to this request.
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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 the First Addendum to the Membership and License Agreement,
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`- 1 -
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`Page 2 of 6
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`including communications relating to negotiating the First Addendum to the
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`Membership and License Agreement to the extent such responsive documents are
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`not otherwise produced by RPX.
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`Third Party Apple’s Response
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`There are no documents or things responsive to this request that have not
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`already been produced by RPX and identified in Appendix A of Petitioner’s
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`Response to Discovery, other than those identified in Appendix A to this response.
`
`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) the First Addendum to the
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`Membership and License Agreement, including communications relating to
`
`negotiating the First Addendum to the Membership and License Agreement. 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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`Third Party Apple’s Response
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`There are no communications responsive to this interrogatory other than
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`those that have already been identified in Appendices B and C of Petitioner’s
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`Response to Discovery.
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`- 2 -
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`Page 3 of 6
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`In making this representation, Third Party Apple confirms that it had no
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`discussions with its counsel at Sidley Austin LLP during the period specified in the
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`Board’s Order concerning the preparation or filing of the RPX IPRs, other than in
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`relation to the communication between Apple and RPX identified in the second
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`row of the table in Petitioner’s Appendix B (i.e., concerning a communication on
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`or before November 8, 2013 between
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` (RPX) and
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`
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`(Apple) concerning consent to file a copy of the confidential First Addendum to
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`the Membership and License Agreement Between RPX and Apple to the Patent
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`Office in connection with the RPX IPR petitions).
`
`
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`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
`
`
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`- 3 -
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`Page 4 of 6
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`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 -
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`
`Dated:
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`Page 5 of 6
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`
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`INDEX OF DOCUMENTS RESPONSIVE TO RE UEST FOR PRODUCTION NO. 2
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`APPENDIX A
`
`Date
`APPLE— E—mail October
`
`0001
`
`22, 2013
`
` T 1: e
`
`Re: RPX
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`E—mail
`
`Agreement
`Modifications
`
`regarding
`RPX fees
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`Page 6 of 6