throbber
Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 9
`
`Entered: January 28, 2014
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.
`Petitioner,
`
`
`
`
`
`v.
`
`VIRNETX INC.
`Patent Owner.
`____________
`
`Case IPR2014-000237 (Patent 8,504,697)
`Case IPR2014-000238 (Patent 8,504,697)1
`____________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
` 37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 This decision addresses an issue that is identical in each case. We, therefore,
`exercise our discretion to issue one Order to be filed in each case. Unless
`otherwise authorized, the parties, however, are not authorized to use this style
`heading for any subsequent papers.
`
`

`

`Case IPR2014-00237(Patent 8,504,697); Case IPR2014-00238 (Patent 8,504,697)
`
`Conference calls were held on January 8, 10 and 16, 2014, involving
`
`Administrative Patent Judges Tierney, Siu and Easthom and representatives from
`Apple, RPX and Virnetx.2 The purpose of the calls was to discuss scheduling and
`concerns regarding identification of real party in interest and privies in the related
`RPX proceedings. A court reporter was present on the calls.3
`
`Scheduling
`1.
`RPX filed its involved petitions challenging Virnetx’s patents on November
`
`20, 2013. Apple filed on December 6, 2013, its petitions challenging a Virnetx
`patent, which claims 35 U.S.C. § 120 benefit of at least two of the RPX challenged
`patents.
`
`The Board inquired as to whether the time for filing a patent owner
`preliminary response should be the same for both the RPX and Apple inter partes
`reviews. Based on the information provided by the parties, the Board concluded
`that the issues raised in the RPX petitions overlapped those raised in previously
`filed petitions and, further, that the issues raised in the RPX petitions overlapped
`those raised in the Apple petitions. Accordingly, the Board held that the time for
`filing patent owner preliminary responses in both the RPX and Apple proceedings
`is set for March 6, 2014.
`
`
`
`
`
`2 Although Apple and RPX filed separate petitions, based on the nature of the
`issues raised by the petitions, the Board exercised its discretion and held a joint
`conference call.
`3 This Order summarizes statements made during the conference call. A more
`complete record may be found in the transcripts, which may be found in the RPX
`record, e.g., IPR2014-00171, Exs. 1075, 1076 and 1077.
`
`
`
`2
`
`

`

`Case IPR2014-00237(Patent 8,504,697); Case IPR2014-00238 (Patent 8,504,697)
`
`
`PETITIONER:
`
`Jeffrey P. Kushan
`Joseph A. Micallef
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`jmicallef@sidley.com
`
`PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`joseph.palys@finnegan.com
`naveen.modi@finnegan.com
`
`
`
`
`3
`
`

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