`571-272-7822
`
`Date Entered: April 13, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-00810 (Patent 8,868,705 B2)
`Case IPR2015-00811 (Patent 8,868,705 B2)
`Case IPR2015-00812 (Patent 8,850,009 B2) 1
`_______________
`
`
`
`Before KARL D. EASTHOM, JENNIFER S. BISK, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)(1)
`
`
`
`
`
`
`1 This Order addresses issues that are identical in all cases. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`
`
`
`IPR2015-00810 (Patent 8,868,705 B2)
`IPR2015-00811 (Patent 8,868,705 B2)
`IPR2015-00812 (Patent 8,850,009 B2)
`
`
`
`
`
`
`I. INTRODUCTION
`In an email dated April 12, 2016, Petitioner, Apple Inc., asked that we
`change the final hearing date of June 8, 2016, set in the Scheduling Order
`(SO, Paper 9, 6) 2 to June 13 or 14, 2016. According to Petitioner’s email,
`Patent Owner, VirnetX Inc., has no objection to the change in hearing date.
`Petitioner’s email represents that its lead counsel in each of the cases
`identified above “must conduct a deposition in Japan on June 6–10, which
`includes the date of the oral hearing in IPR2015-00810, -00811, -00812
`(June 8th).” Lead counsel states this conflict has recently come to his
`attention. Lead counsel represents that scheduling issues prevent it from
`changing the dates of the Japanese depositions.
`Patent Owner’s position in the email is that it is agreeable to having
`backup counsel present argument for Petitioner. Patent Owner states that
`backup counsel has argued for Petitioner in the past. At present, lead
`counsel represents that it is not prepared to proceed with having backup
`counsel represent Petitioner at the hearing. Petitioner, however, has not
`explained why backup counsel is not available for the scheduled oral
`argument date. See 37 C.F.R. § 42.10(a) (“If a party is represented by
`counsel, the party must designate a lead counsel and at least one back-up
`counsel who can conduct business on behalf of the lead counsel.”).
`II. DISCUSSION
`The Scheduling Order does not permit the parties to stipulate to a
`change in the final hearing date (DUE DATE 7). SO, 2.A. The Scheduling
`
`
`2 Unless otherwise noted, we refer to the papers in IPR2015-00811.
`2
`
`
`
`
`
`
`IPR2015-00810 (Patent 8,868,705 B2)
`IPR2015-00811 (Patent 8,868,705 B2)
`IPR2015-00812 (Patent 8,850,009 B2)
`
`
`
`Order also provides that the parties may contact the Board if there is a need
`for changes. Id. at 2.1. The Board may change the final hearing date at its
`discretion. Mere convenience of lead counsel does not, by itself, justify the
`burden on the Office of changing the date of a hearing that was scheduled
`seven months ago. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`48756, 48758 (Aug. 14, 2012) (“The Office expects that lead counsel will,
`and back-up counsel may, participate in all hearings and conference calls
`with the Board . . . . In addition, the role of back-up counsel is to conduct
`business with the Office on behalf of lead counsel when lead counsel is not
`available.”). The schedules of all involved must be considered in
`determining whether to alter a scheduled oral argument date, including the
`resources of the Board.
`With the preceding in mind, we authorize Petitioner to file a motion to
`change the hearing date. The motion should address, at least, the following
`questions in showing why we should change the final hearing date:3
`1. When did lead counsel become aware of the need for his
`participation in the Japanese depositions?
`2.
`Are other attorneys in lead counsel’s law firm representing lead
`counsel’s Japanese client? What has been done to have one or more of the
`other attorneys take the Japanese depositions?
`
`
`3 None of the questions are intended to elicit privileged information or
`communications.
`
`3
`
`
`
`
`IPR2015-00810 (Patent 8,868,705 B2)
`IPR2015-00811 (Patent 8,868,705 B2)
`IPR2015-00812 (Patent 8,850,009 B2)
`
`
`
`
`3.
`Are there any specific reasons that Petitioner would prefer lead
`counsel, as opposed to backup counsel, make the argument at the final
`hearing?
`4.
`In general, what efforts have been made to accommodate the
`current final hearing date?
`We are mindful that Patent Owner’s counsel has planned on a June 8,
`2016, final hearing date. Accordingly, Patent Owner will be provided an
`opportunity to respond.
`
`
`
`III. ORDER
`ORDERED that by April 20, 2016, Petitioner is authorized to file a
`motion, not exceeding seven pages (excluding any attachments), to change
`the final hearing date from June 8, 2016, to June 13 or 14, 2016;
`FURTHER ORDERED that by April 22, 2016, Patent Owner may,
`but is not required to, file a response, not exceeding five pages (excluding
`any attachments), to Petitioner’s motion; and
`FURTHER ORDERED that a copy of this Order shall be filed in
`IPR2015-00810, IPR2015-00811, and IPR2015-00812.
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`4
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`IPR2015-00810 (Patent 8,868,705 B2)
`IPR2015-00811 (Patent 8,868,705 B2)
`IPR2015-00812 (Patent 8,850,009 B2)
`
`
`For Petitioner:
`Jeffrey P. Kushan
`Thomas A. Broughan III
`Scott Border
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`tbroughan@sidley.com
`sborder@sidley.com
`IPRNotices@sidley.com
`
`
`
`For Patent Owner:
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`Jason E. Stach
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`Jason.stach@finnegan.com
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`5
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