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`Filed: October 4, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––––––––––
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`THE MANGROVE PARTNERS MASTER FUND, LTD., APPLE INC., and
`BLACK SWAMP IP, LLC,
`Petitioners,
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`v.
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`VIRNETX INC.,
`Patent Owner.
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`––––––––––––––––––
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`Case Nos. IPR2015-01046,1 -010472
`U.S. Patent Nos. 6,502,135 & 7,490,151
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`––––––––––––––––––
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`PETITIONER MANGROVE’S RESPONSES TO
`PATENT OWNER’S REQUESTS FOR PRODUCTION FROM
`THE MANGROVE PARTNERS MASTER FUND, LTD.
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`
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`1 Apple Inc., who filed a petition in IPR2016-00062, has been joined as a Petitioner
`in IPR2015-01046.
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` Apple Inc. and Black Swamp IP, LLC, which filed a petitions in IPR2016-00063
`and IPR2016-00167, respectively, have been joined as Petitioners in IPR2015-
`01047.
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` 2
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`IPR2015-01046
`Mangrove Partners Master Fund Ltd. & Apple Inc. v. VirnetX Inc.
`IPR2015-01047
`Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC v. VirnetX Inc.
`Exhibit 1048, p. Cover
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`
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`IPR2015-01046
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`
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`U.S. Patent No. 6,502,135
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`Patent Owner VirnetX Inc.’s (“VirnetX”) Requests for Production (“RFP”)
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`of Petitioner The Mangrove Partners Master Fund, Ltd. (“Mangrove”) include four
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`separate requests. Paper 81 (“Mot.”), Appx. C at 1. As explained in Petitioners’
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`concurrently filed Partial Opposition to VirnetX’s motion, Petitioner Mangrove
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`responds as follows.
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`VIRNETX’S MANGROVE RFP NO. 1
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`Communications, documents, or things concerning RPX and VirnetX or
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`VirnetX patents, including communications between Mangrove Partners and RPX,
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`or any documents or things relating to such communications, concerning VirnetX
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`or VirnetX patents. (Mot. Appx. A at 3.)
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`MANGROVE’S RESPONSE TO MANGROVE RFP NO. 1
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`Petitioner Mangrove objects to this RFP for lacking clarity as to whether it
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`should be read “RPX and (VirnetX or VirnetX patents)” or “(RPX and VirnetX) or
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`VirnetX Patents.” See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-
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`00001, Paper 26 at 6–7 (PTAB Mar. 5, 2013) (“Garmin”) (Factor 4). For the
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`purposes of responding to this RFP, and in light of the Federal Circuit’s mandate,
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`Petitioner Mangrove presumes the former interpretation, i.e., “… RPX and
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`(VirnetX or VirnetX patents) ….” Petitioner Mangrove further objects to this RFP
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`as overbroad and unduly burdensome for requesting the production of
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`communications, documents, or things dated on or after the date of institution in
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`1
`
`
`IPR2015-01046
`Mangrove Partners Master Fund Ltd. & Apple Inc. v. VirnetX Inc.
`IPR2015-01047
`Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC v. VirnetX Inc.
`Exhibit 1048, page 1
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`
`
`IPR2015-01046
`
`U.S. Patent No. 6,502,135
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`this proceeding, i.e., October 7, 2015. See Garmin at 6–7 (Factors 1 & 5); Power
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`Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306,
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`1314–15 (Fed. Cir. 2019) (“The focus of § 315(b) is on institution.”); Wi-Fi One,
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`LLC v. Broadcom Corp., 878 F.3d 1364, 1373 (Fed. Cir. 2018) (en banc) (“[T]he
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`time-bar determination may be decided fully and finally at the institution stage.”).
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`Subject to the foregoing objection(s), Petitioner Mangrove has undertaken a
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`reasonable search for communications, documents, or things that existed prior to
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`October 7, 2015, and located no responsive communications, documents, or things
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`concerning RPX and VirnetX or VirnetX patents, including communications
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`between Mangrove Partners and RPX, or any documents or things relating to such
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`communications, concerning VirnetX or VirnetX patents.
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`VIRNETX’S MANGROVE RFP NO. 2
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`Communications, documents, or things concerning RPX and patent office
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`proceedings, including communications between Mangrove Partners and RPX, or
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`any documents or things concerning such communications, concerning patent
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`office proceedings, such as any agreements or discussions between RPX and
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`Mangrove Partners with respect to patent office proceedings, such as IPR2015-
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`01046 or IPR2015-01047, prior art, filing, funding, compensation, and/or
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`preparation of any papers. (Mot. Appx. A at 4.)
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`2
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`IPR2015-01046
`Mangrove Partners Master Fund Ltd. & Apple Inc. v. VirnetX Inc.
`IPR2015-01047
`Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC v. VirnetX Inc.
`Exhibit 1048, page 2
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`
`
`IPR2015-01046
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`
`
`U.S. Patent No. 6,502,135
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`MANGROVE’S RESPONSE TO MANGROVE RFP NO. 2
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`Petitioner Mangrove objects to this RFP as overbroad and unduly
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`burdensome for requesting the production of communications, documents, or
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`things dated on or after the date of institution in this proceeding. See Garmin at 6–
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`7 (Factors 1 & 5); Power Integrations, 926 F.3d at 1314–15; Wi-Fi One, 878 F.3d
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`at 1373. Petitioner Mangrove further objects to this RFP as overbroad and unduly
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`burdensome for requesting production of “[c]ommunications, documents, or things
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`concerning RPX and patent office proceedings” that are not “communications
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`between Mangrove Partners and RPX, or any documents or things concerning such
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`communications, concerning patent office proceedings ….” The former language
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`would encompass, for example, purely internal-to-Mangrove documents describing
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`RPX’s business model that mention post-grant proceedings generically, which
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`would not be relevant to show any relationship between Mangrove and RPX.
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`Subject to the foregoing objection(s), Petitioner Mangrove has undertaken a
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`reasonable search for communications, documents, or things that existed prior to
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`October 7, 2015, and located no responsive communications between Mangrove
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`Partners and RPX, or any documents or things concerning such communications,
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`concerning patent office proceedings, such as any agreements or discussions
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`between RPX and Mangrove Partners with respect to patent office proceedings,
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`3
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`IPR2015-01046
`Mangrove Partners Master Fund Ltd. & Apple Inc. v. VirnetX Inc.
`IPR2015-01047
`Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC v. VirnetX Inc.
`Exhibit 1048, page 3
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`
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`IPR2015-01046
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`
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`U.S. Patent No. 6,502,135
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`such as IPR2015-01046 or IPR2015-01047, prior art, filing, funding,
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`compensation, and/or preparation of any papers.
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`VIRNETX’S MANGROVE RFP NO. 3
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`Communications, documents, or things, concerning Mangrove Partners’
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`acquisition of RPX stock, including communications, documents, or things
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`concerning Mangrove Partners’ reasons for acquiring RPX stock and any
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`underlying agreements surrounding Mangrove Partners’ acquisition of RPX stock.
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`(Mot. Appx. A at 4.)
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`MANGROVE’S RESPONSE TO MANGROVE RFP NO. 3
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`Petitioner Mangrove objects to this RFP as overbroad and unduly
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`burdensome for requesting the production of communications, documents, or
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`things dated on or after the date of institution in this proceeding. See Garmin at 6–
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`7 (Factors 1 & 5); Power Integrations, 926 F.3d at 1314–15; Wi-Fi One, 878 F.3d
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`at 1373. Petitioner Mangrove further objects to this RFP as overbroad and unduly
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`burdensome for requesting the production of all “[c]ommunications, documents, or
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`things, concerning Mangrove Partners’ acquisition of RPX stock,” rather than
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`“[c]ommunications, documents, or things” sufficient to show “Mangrove Partners’
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`reasons for acquiring RPX stock and any underlying agreements surrounding
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`Mangrove Partners’ acquisition of RPX stock.” See Garmin at 6–7 (Factor 5). The
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`4
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`IPR2015-01046
`Mangrove Partners Master Fund Ltd. & Apple Inc. v. VirnetX Inc.
`IPR2015-01047
`Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC v. VirnetX Inc.
`Exhibit 1048, page 4
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`
`
`IPR2015-01046
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`
`
`U.S. Patent No. 6,502,135
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`former language would encompass, for example, needlessly duplicative documents
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`which are not relevant to show any relationship between Mangrove and RPX.
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`Subject to the foregoing objection(s) and with respect to RPX stock that was
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`acquired by Mangrove Partners prior to October 7, 2015, Petitioner Mangrove has
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`undertaken a reasonable search and has produced or identified communications,
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`documents, or things sufficient to show Mangrove Partners’ reasons for acquiring
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`that RPX stock. See Ex. 1049; Ex. 1051; Ex. 1052; Ex. 1055; Ex. 1056; IPR2015-
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`01046, Ex. 2058; IPR2015-01047, Ex. 2055. Mangrove Partners was a passive
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`investor in RPX, had acquired its RPX stock via public trades, and had entered no
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`agreements with RPX regarding its acquisition of RPX stock. See Ex. 1051, 2–3;
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`Ex. 1052.
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`VIRNETX’S MANGROVE RFP NO. 4
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`Communications, documents, or things, relating to Mangrove Partners’
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`decision to pursue and initiate IPR2015-01046 and IPR2015-01047. (Mot. Appx. A
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`at 4.)
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`MANGROVE’S RESPONSE TO MANGROVE RFP NO. 4
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`Petitioner Mangrove objects to this RFP as overbroad and unduly
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`burdensome for requesting the production of all “[c]ommunications, documents, or
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`things, relating to Mangrove Partners’ decision to pursue and initiate IPR2015-
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`01046 and IPR2015-01047,” rather than “[c]ommunications, documents, or things,
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`5
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`IPR2015-01046
`Mangrove Partners Master Fund Ltd. & Apple Inc. v. VirnetX Inc.
`IPR2015-01047
`Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC v. VirnetX Inc.
`Exhibit 1048, page 5
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`
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`IPR2015-01046
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`
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`U.S. Patent No. 6,502,135
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`relating to” both RPX and “Mangrove Partners’ decision to pursue and initiate
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`IPR2015-01046 and IPR2015-01047.” See Garmin at 6–7 (Factor 5). The breadth
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`of this RFP is unduly burdensome due to VirnetX’s threat of separate litigation
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`against Mangrove regarding the filing of these IPRs (see Paper 9, 12–15 (citing Ex.
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`2021)), and also conflicts with VirnetX’s representation that its requests would
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`“narrowly focus on the relationship between Mangrove and RPX” (Mot. 6).
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`Subject to the foregoing objection(s), Petitioner Mangrove has undertaken a
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`reasonable search for communications, documents, or things that existed prior to
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`October 7, 2015, and has located no responsive communications, documents, or
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`things, relating to both RPX and Mangrove Partners’ decision to pursue and initiate
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`IPR2015-01046 and IPR2015-01047.
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`Dated: October 4, 2019
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`Respectfully Submitted,
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`/James T. Bailey/
`James T. Bailey
`Reg. No. 44,518
`The Law Office of James. T. Bailey
`504 W. 136th St. #1B
`New York, NY 10031
`T: 917-626-1356
`Attorney for Petitioner Mangrove
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`6
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`IPR2015-01046
`Mangrove Partners Master Fund Ltd. & Apple Inc. v. VirnetX Inc.
`IPR2015-01047
`Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp IP, LLC v. VirnetX Inc.
`Exhibit 1048, page 6
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`