Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 37
`
`Entered: February 2, 2015
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`
`
`
`
`
`v.
`
`VIRNETX INC.
`Patent Owner.
`____________
`
`Case IPR2014-00237 (Patent 8,504,697)
`Case IPR2014-00238 (Patent 8,504,697)1
`____________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`TIERNEY, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
` 35 U.S.C. § 326(a)(10)
`
`
`
`
`
`
`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)
`
`Petitioner requests that the Board hold a hearing and Patent Owner requests
`
`participation in the hearing the same extent as Petitioner. The requests are granted.
`There is substantial overlap in the issues raised in the two cases. Accordingly,
`each party will have sixty (60) minutes total time to present arguments. Petitioner
`will proceed first to present its case with respect to the challenged claims and
`grounds for which the Board instituted trial in IPR2014-00237 and -00238.
`Thereafter, Patent Owner will respond to Petitioner’s presentation. Both parties
`may reserve some of their argument time for closing arguments.
`
`The hearing for these cases will commence at 2:00 PM Eastern Time, on
`February 9, 2015, and it will be open to the public for in-person attendance, on the
`ninth floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia. In-
`person attendance will be accommodated on a first-come first-served basis. The
`Board will provide a court reporter for the hearing and the reporter’s transcript will
`constitute the official record of the hearing.
`
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served five
`business days prior to the hearing. They shall be filed at the Board two business
`days prior to the hearing, and the parties must initiate a conference call with the
`Board by two business days prior to the hearing to resolve any dispute over the
`propriety of each party’s demonstrative exhibits. Any dispute over the propriety of
`demonstrative exhibits that is not timely presented two business days prior to the
`hearing will be considered waived. The parties are directed to CBS Interactive Inc.
`v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 118 (October 23,
`2013), regarding the appropriate content of demonstrative exhibits.
`
`Questions regarding specific audio-visual equipment should be directed to
`the Board at (571) 272-9797. Requests for audio-visual equipment are to be made
`5 days in advance of the hearing date. The request is to be sent to
`
`
`
`2
`
`

`

`Case IPR2014-00237 (Patent 8,504,697); Case IPR2014-00238 (Patent 8,504,697)
`
`Trials@uspto.gov. If the request is not received timely, the equipment may not be
`available on the day of the hearing.
`The parties are reminded that the presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number) referenced
`during the hearing to ensure the clarity and accuracy of the reporter’s transcript.
`
`The Board expects lead counsel for each party to be present at hearing,
`although any backup counsel may make the actual presentation, in whole or in part.
`If any lead counsel will not be in attendance at hearing, the Board should be
`notified via a joint telephone conference call no later than two days prior to the
`hearing to discuss the matter.
`
`
`
`
`
`3
`
`

`

`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
`
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveen.modi@paulhastings.com
`
`Jason E. Stach
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`jason.stach@finnegan.com
`
`
`
`
`4
`
`