`571-272-7822
`
`
`
`
`Paper 39
`Date: February 26, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD., APPLE INC.,
`and BLACK SWAMP IP, LLC,
`Petitioner,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`____________
`
`Case IPR2015-010471
`Patent 7,490,151 B2
`____________
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and
`STEPHEN C. SIU, Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`1 Apple Inc. and Black Swamp IP, LLC, who filed petitions in IPR2016-
`00063 and IPR2016-00167, respectively, have been joined as Petitioners in
`the instant proceeding.
`
`
`
`
`
`
`
`IPR2015-01047
`Patent 7,490,151 B2
`
`I.
`
`BACKGROUND
`VirnetX Inc. (“Patent Owner”), in its Request for Rehearing, Paper 27
`(“Req. Reh’g” or “Request”), seeks reversal of the Board’s Decision to deny
`Patent Owner’s Motion for Additional Discovery, filed December 9, 2015,
`Paper 22 (“Motion”). See Req. Reh’g 1. The Board grants the requested
`relief in part.
`
`II. DISCUSSION
`In the Decision dated December 21, 2015, Paper 26 (“Decision”), we
`explained that “Patent Owner has not met its burden in showing additional
`discovery is in the interests of justice as required under 37 C.F.R.
`§ 42.51(b)(2).” Decision 5; see also id. at 1–5. Patent Owner now argues
`that “[s]ince the Motion was directed to improperly omitted RPIs in
`particular, the evidence presented in the Motion only needed to show beyond
`speculation that something useful would be uncovered as to RPI issues. The
`Motion certainly met this standard.” Req. Reh’g 2–3.
`We have considered Patent Owner’s arguments in the Request but,
`with the exception noted below, find them unpersuasive to demonstrate that
`we misapprehended or overlooked any points. For example, we disagree
`with Patent Owner that “[t]he Motion certainly met this standard [of
`showing beyond speculation that something useful would be uncovered as to
`RPI issues]” for at least the reasons previously detailed in the Decision. See
`Decision 1–5.
`However, Patent Owner argues that “Ward Dietrich is Chief
`Operating Officer of the Mangrove Partners Master Fund” and “has no
`public role in petitioner” (Motion 3 (citing Ex. 2002 at 2)) and that “Ward
`
`2
`
`
`
`
`
`
`IPR2015-01047
`Patent 7,490,151 B2
`
`
`Dietrich held himself out as an ‘authorized person’ to sign the Power of
`Attorney on behalf of Petitioner” (Req. Reh’g 6 (quoting Motion 3)).
`Petitioner does not appear to refute this contention. Patent Owner further
`requests “[c]ommunications and documents or things . . . including
`assistance with identification of prior art, filing, funding, compensation,
`and/or preparation of any papers related to the Mangrove IPRs” and the
`identification of “persons and entities . . . involved in the preparation and
`filing of the petitions” and “persons and entities . . . who controlled or had
`the ability to control the preparation and filing of the petitions in the
`Mangrove IPRs.” Ex. 2034, 3; Ex. 2035, 3. In view of Ward Dietrich’s
`alleged role as an officer of Mangrove Partners and the named Petitioner, we
`grant Patent Owner’s motion for additional discovery for the limited purpose
`of providing communications and/or agreements pertaining to Ward
`Dietrich’s involvement in the preparation and filing of the Petition and/or
`control or ability to control the preparation and filing of the Petition.
`Patent Owner requests an “expanded panel that includes the Chief
`Judge” because, according to Patent Owner, an expanded panel “is necessary
`to secure and maintain uniformity” and to “clarify the standard for additional
`discovery.” Req. Reh’g 1–2, 8–9. Discretion to expand a panel rests with
`the Chief Judge, who, on behalf of the Director, may act to expand a panel
`on a suggestion from a judge or panel. AOL Inc. v. Coho Sicensing LLC,
`Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24, 2015)(Paper
`12)(informative). Patent Owner’s suggestion was considered by the Acting
`Chief Administrative Patent Judge, who declined to expand the panel.
`
`
`
`
`3
`
`
`
`
`
`
`IPR2015-01047
`Patent 7,490,151 B2
`
`III. ORDER
`For the reasons given, it is
`ORDERED that Patent Owner’s Motion for Additional Discovery is
`
`granted as to discovery of communications and/or agreements pertaining to
`Ward Dietrich’s involvement in the preparation and filing of the Petition
`and/or control or ability to control the preparation and filing of the Petition;
`and
`
`
`
`FURTHER ORDERED that Patent Owner’s Motion for Additional
`Discovery is denied as to discovery of other materials requested.
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`5
`
`
`IPR2015-01047
`Patent 7,490,151 B2
`
`
`PETITIONER:
`Abraham Kasdan
`WIGGIN AND DANA LLP
`akasdan@wiggin.com
`
`James T. Bailey
`jtb@jtbaileylaw.com
`
`Jeffrey P. Kushan
`Scott M. Border
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`sborder@sidley.com
`
`PATENT OWNER:
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
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