`571-272-7822
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` Paper 11
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`Entered: February 20, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`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.
`
`
`Decision
`Scope of Discovery
` 37 C.F.R. § 42.52
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`
`
`
`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.
`2 This Order is identical in substance to Order (Paper 22), which was entered in
`RPX proceeding IPR2014-00171. This Order is entered into the Apple
`proceedings given the nature of the issues discussed herein.
`
`
`
`Case IPR2014-00237(Patent 8,504,697); Case IPR2014-00238 (Patent 8,504,697)
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`
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`As stated during a February 7, 2014 conference call, the Board reviewed
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`VirnetX’s motion in the RPX proceedings for discovery and oppositions thereto.
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`Based upon the specific facts of this proceeding, the Board determined that
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`VirnetX had demonstrated that it is in the interests of justice that at least some
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`discovery be permitted on the issue of control of the proceeding. To aid the Board
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`in determining the scope of discovery to be permitted, the Board authorized the
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`parties to file briefs by no later than February 11, 2014 where the briefs identified
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`the scope of discovery to be permitted on the issue of control of the proceeding as
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`it relates to questions of real party in interest and privity.
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`
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`The parties have submitted their briefs and the Board concludes that the
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`scope of discovery identified in the Apple proposal is best calibrated to produce
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`useful evidence relevant to VirnetX’s theory of privity and real-parties-in-interest.
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`The Board orders (1) RPX to produce the information and response to the
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`interrogatory identified in the Apple proposal within five business days of the entry
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`this decision, and (2) Apple to produce any responsive documents and its response
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`to the interrogatory three business days after the date of service by RPX of
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`responsive documents or information. No deposition is authorized of any witness
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`at this time.
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`2
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`Case IPR2014-00237(Patent 8,504,697); Case IPR2014-00238 (Patent 8,504,697)
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`
`
`PETITIONER:
`
`Jeffrey P. Kushan
`Joseph A. Micallef
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`jmicallef@sidley.com
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`
`
`PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`joseph.palys@finnegan.com
`naveen.modi@finnegan.com
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`
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`
`3
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`