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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`THE MANGROVE PARTNERS )
`MASTER FUND, LTD., et al., )
` )
` Petitioners, ) Case No.
` ) IPR2015-01046
` vs. ) IPR2015-01047
` )
`VIRNETX INC., ) Patent Nos.
` ) 6,502,135
` Patent Owner. ) 7,490,151
`-------------------------- )
`
` PTAB CONFERENCE CALL
` Friday, September 6, 2019
`
`Reported by:
`Stacey L. Daywalt
`JOB NO. 167631
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 1
`
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`Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`THE MANGROVE PARTNERS )
`MASTER FUND, LTD., et al., )
` )
` Petitioners, ) Case No.
` ) IPR2015-01046
` vs. ) IPR2015-01047
` )
`VIRNETX INC., ) Patent Nos.
` ) 6,502,135
` Patent Owner. ) 7,490,151
`-------------------------- )
`
` PTAB CONFERENCE CALL
` Friday, September 6, 2019
`
`Reported by:
`Stacey L. Daywalt
`JOB NO. 167631
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 1
`
`
`
`Page 2
`
` Friday, September 6, 2019
` 11:00 a.m.
`
` PTAB Conference Call, held before
`Administrative Patent Judges Michael Tierney,
`Karl Easthom and Stephen Siu, before Stacey L.
`Daywalt, a Court Reporter and Notary Public of
`the District of Columbia.
`
`TSG Reporting - Worldwide 877-702-9580
`
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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 1047, page 2
`
`
`
`Page 3
`
`A P P E A R A N C E S:
`(All appearances are telephonic)
`
` SIDLEY AUSTIN
` Attorneys for Petitioner Apple
` 1501 K Street, NW
` Washington, DC 20005
` BY: JEFFREY KUSHAN, ESQ.
` SCOTT BORDER, ESQ.
` SAMUEL DILLON, ESQ.
`
` LAW OFFICES OF JAMES BAILEY
` Attorneys for Petitioner Mangrove
` 504 West 136th Street
` New York, NY 10031
` BY: JAMES BAILEY, ESQ.
`
` MARTIN & FERRARO
` Attorneys for Petitioner Black Swamp
` 1557 Lake O'Pines Street, NE
` Hartville, Ohio 44632
` BY: THOMAS MARTIN, ESQ.
` WESLEY MEINERDING, ESQ.
`
`TSG Reporting - Worldwide 877-702-9580
`
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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 1047, page 3
`
`
`
`Page 4
`
`A P P E A R A N C E S (Continued):
`
` PAUL HASTINGS
` Attorneys for Patent Owner
` 875 15th Street, NW
` Washington, DC 20005
` BY: JOSEPH PALYS, ESQ.
` NAVEEN MODI, ESQ.
` DANIEL ZEILBERGER, ESQ.
`
`TSG Reporting - Worldwide 877-702-9580
`
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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 1047, page 4
`
`
`
`Page 5
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` PTAB Conference Call
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`To begin today, this is the conference call for
`IPR2015-01046 and 01047.
` Patent Owner, are you present today?
` MR. PALYS: Good morning, Your
`Honor. This is Joe Palys for VirnetX. We're
`present.
` I believe I have some colleagues
`remote from me as well. I'll let them chime
`in.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay.
` MR. MODI: Good morning, Your Honor.
`This is Naveen Modi on behalf of Patent Owner
`as well.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Welcome to the call.
` MR. ZEILBERGER: Good morning, Your
`Honor. This is also Daniel Zeilberger, also on
`behalf of Patent Owner.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Good. Welcome.
` Anyone else for Patent Owner today?
` MR. ZEILBERGER: No, I believe
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 5
`
`
`
`Page 6
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`that's it.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`All right. Let's turn over to -- we have three
`parties for the Petitioners' side with
`Mangrove.
` So let's start with Mangrove.
` MR. BAILEY: Jim Bailey here for
`Mangrove.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay.
` Anyone else for Mangrove today?
` MR. BAILEY: No.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`All right. Next on our header, I believe we
`have Apple.
` Is there anyone --
` MR. KUSHAN: Yes, this is Jeff
`Kushan on behalf of Apple.
` And with me is my colleague Scott
`Border.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay. Let me write that down. Just a sec.
` And I believe, Apple, did you have a
`court reporter today?
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 6
`
`
`
`Page 7
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` MR. KUSHAN: We did. We sent a note
`over to the Board that we had ordered a court
`reporter, and the court reporter, I believe, is
`on the line.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay.
` And just to confirm, is the court
`reporter on the line?
` THE REPORTER: Yes, I am.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Thank you.
` Okay. Was there anyone else for
`Apple appearing today?
` MR. KUSHAN: I don't believe so, but
`there might be one other person.
` Did Sam get on?
` MR. DILLON: This is Sam Dillon for
`Apple.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Very good.
` MR. KUSHAN: So we have three.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Thank you.
` And last but not least, Black Swamp.
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 7
`
`
`
`Page 8
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` Is Black Swamp present for the call?
` MR. MARTIN: Yes, Your Honor. This
`is Tom Martin.
` I also have with me my business
`partner Wes Meinerding, and we are the only two
`on the line for Black Swamp.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay. We have obviously quite a few people
`here. I haven't double-checked to make sure
`everyone's of record in the case.
` For today's purposes, if -- and
`again, I'll take your word for it -- if you're
`already of record, you can just go ahead and
`speak today. If you're not of record, please
`just stay in the background.
` Any objection to that?
` MALE SPEAKER: No, Your Honor.
` MR. PALYS: Yeah, this is Joe Palys.
` None from Patent Owner.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay.
` And go ahead.
` MR. BAILEY: None from Mangrove.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 8
`
`
`
`Page 9
`
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`Apple?
` MR. KUSHAN: None from Apple.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Black Swan?
` MR. MARTIN: None from Black Swan
`either.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay. So -- and the court reporter is present,
`so we can begin the call.
` Clearly we have a remand here today.
`What I'd like to do, to keep things a little
`bit going forward in an orderly progression,
`I'd like to begin with what Patent Owner is
`requesting for going -- if they have a proposed
`path forward and a proposed schedule.
` After we've heard from Patent Owner,
`we'll then go over to the Petitioners.
` So Patent Owner, if you'd begin
`today.
` MR. PALYS: Sure, Your Honor. This
`is Joe Palys.
` We think the proposed path should
`start with the motion for additional discovery,
`and this relates to the RPI issues associated
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 9
`
`
`
`Page 10
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`with Mangrove and third party RPX.
` So from Patent Owner's perspective,
`we think the proceedings should begin there.
`Patent Owner would file its motion for
`additional discovery, and we believe that
`should take place around three weeks after, I
`guess, Board authorization from this call, you
`know.
` And then three weeks after that,
`after VirnetX's motion, any response to that
`motion could be filed. And then one and a half
`weeks after that response, Patent Owner would
`file a reply to that.
` So that's like the first stage, we
`think, that should take place, and then
`obviously some time to complete the discovery
`should run its course.
` And then at that point, we believe
`that briefing should begin in terms of --
`obviously depending on how the discovery and
`the Board's ruling on that motion kind of takes
`place, but a single briefing schedule for
`issues to address the items from the Federal
`Circuit's decision.
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 10
`
`
`
`Page 11
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` And we believe once the -- well,
`from one perspective, Your Honor, once the
`Board rules on our motion for additional
`discovery -- and then we could meet with the
`Petitioners to come up with a schedule that is,
`I guess, in line to try to get the briefing
`schedule and page limits, et cetera, for the --
`I'll call it merit type briefing. That would
`obviously include the -- any additional
`discovery, if warranted, and then the issues
`relating to the items from the Federal
`Circuit's decision.
` But we think we could probably meet
`and confer after the additional discovery
`issues are -- run its course and then proceed
`with a set of briefing. And if briefing
`follows that way, we think it should be
`simultaneous, with each side getting separate
`briefing for the 1046 and 1047 cases,
`simultaneous opening briefs, and then each side
`gets an opposition brief and no reply briefs.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay. And I think what you -- basically, the
`direction you're going here is the scheduling
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 11
`
`
`
`Page 12
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`of 1046 and 1047 would be the same?
` MR. PALYS: Yes.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay. I just wanted to confirm that. Thank
`you.
` Is there anything else you'd like to
`point out before we hear from the other side?
` MR. PALYS: Yes, Your Honor.
` So as we work through the schedule
`and the briefing and page limits, et cetera,
`one thing we wanted to point out about this is
`the -- put the Board -- put that on the Board's
`radar that the '135 patent that's at issue in
`the 1046 matter, that's expiring in October.
` And so Patent Owner's position is
`that we should be allowed to at least address
`the issue of that patent expiring and then
`should lean to the Phillips standard for claim
`construction for that patent, so we intended to
`raise that in our briefing.
` And --
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Is it your position it's going to have a
`different construction?
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 12
`
`
`
`Page 13
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` MR. PALYS: Well, we'd like to
`address that in the briefing under the Phillips
`standard.
` We think that the construction
`itself will probably be in line with the same
`construction but still be considered under the
`Phillips standard.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`I just wanted to see if that was -- if it's not
`going to differ, isn't it somewhat of a moot
`point?
` MR. PALYS: Well, I mean, the basis
`of the standard, I don't think would be a moot
`point, Your Honor, whether the construction's
`the same or not, in how it's being considered.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`I mean, once the patent's expired, I
`understand -- okay. I see where you're going.
` For purposes of appeal, I guess
`you're saying there could be a difference in
`how it gets -- but if there's no disagreement
`on the construction -- all right. I look
`forward to your briefing and seeing whether
`that makes a difference in the case. Let's put
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 13
`
`
`
`Page 14
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`that way.
` Okay. Anything else?
` MR. PALYS: I think -- oh, yeah, one
`other point is -- and we can hold this in
`abeyance until the Board rules on our motion
`for additional discovery and sees the briefing,
`but Patent Owner's view is that we think oral
`argument might be appropriate here.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`All right. Understood.
` So broad brush, just a couple
`questions: Do you have a timeline in your
`general sense of about how long you think this
`is going to take from beginning to end?
` MR. PALYS: Yeah. I think if --
`again, I think we could -- in terms of the
`briefing schedule, I mean, I already mentioned
`the additional discovery briefing.
` So if you're looking at three weeks,
`three weeks, 1.5 weeks as we propose. That's
`seven and a half weeks to get through the
`briefing and then some time for the discovery
`to play its course, so maybe a month for that,
`for any written discovery, et cetera, and other
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 14
`
`
`
`Page 15
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`types of requests, assuming the Board grants
`that.
` And then once that hits, we start
`our briefing schedule. And we think that that
`could probably be completed -- oh, I think if
`we'd go something along the lines of a similar
`schedule, like once discovery is completed,
`maybe three weeks or so for the simultaneous
`opening briefs and three weeks after there for
`the responsive briefs, I believe that would
`probably get us somewhere in the range of six
`months, or maybe it's a little bit past that,
`if my math is correct.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay.
` MR. PALYS: Don't hold me to it,
`Your Honor.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`No problem. I just was trying to see if you
`had a sense of where you were going on the
`totality of the proceedings.
` Okay. And then we have an oral
`argument at the end, so we'd have to add time
`for that too.
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 15
`
`
`
`Page 16
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` MR. PALYS: Right.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay. And do you view this as a case where
`there's going to be additional evidence
`presented, or is this purely the discovery --
`sorry. The discovery clearly is going to be
`the additional evidence coming into the case.
` So beyond the information or the
`discovery in regard to the real parties in
`interest, do you view there are any what I'll
`call more of the 102/103 argument expert type
`of evidence coming into the case?
` MR. PALYS: Yeah, this is one area I
`think the parties -- we have met and conferred
`on this.
` Where we had an agreement, I think,
`from Patent Owner's perspective is we don't
`think any new additional evidence beyond the
`additional discovery evidence is needed.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay. Is there anything else you'd like to
`discuss before I turn it over to the
`Petitioners' side?
` MR. PALYS: Yeah, let me check with
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 16
`
`
`
`Page 17
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`my colleagues.
` Naveen or Dan, is there anything
`else?
` MR. MODI: Nothing from me.
` MR. ZEILBERGER: Nothing from me
`either. This is Dan.
` MR. PALYS: All right then. So
`that's it from us, Your Honor.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay. There is one -- I do want to go back to
`one question. I don't know if it's time to
`bring it up now or later.
` You did mention after authorizing
`the motion for additional discovery. I saw
`language in the Federal Circuit case that
`implied that additional discovery did not
`require additional authorization.
` MR. PALYS: No, I agree with that.
` I think what I said, Your Honor --
`and I'm sorry if I misspoke, but I thought I
`was trying to be careful in my language.
` What I meant was, by "Board
`authorization," after this call, like once we
`agree on a schedule, we can start with the
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 17
`
`
`
`Page 18
`
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` PTAB Conference Call
`three weeks from -- whether that's today or
`whenever the Board decides to say, okay, we
`have a final authorization on our remand
`schedule -- three weeks after that date.
` Yeah, I have the same view as you
`do.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`So I do want to understand a little bit further
`though for purposes of this proceeding to make
`sure that we're able to accomplish this in a
`timely fashion.
` Is it your view that the rules allow
`for any party to file an additional motion --
`additional discovery motion without
`preauthorization?
` MR. PALYS: I think from our
`perspective reading the Federal Circuit
`opinion, I think that's the case. I think from
`viewing the Federal Circuit opinion, we're
`allowed to file that motion.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`No, I understand in this particular case that
`particular motion, and I'm not going to dispute
`that.
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 18
`
`
`
`Page 19
`
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` PTAB Conference Call
` What I'm asking though is: For
`purposes of additional discovery in this case
`and all cases before the Board, is any party
`who wishes to file additional discovery motion
`able to file it without prior authorization?
` MR. PALYS: Well, that's a sweeping
`question, Your Honor.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`That's what --
` MR. PALYS: This is not
`precedential. I would say I think the Federal
`Circuit's guidance on what they've said in
`terms of Rule 42.51(b)(2)(i), yeah. But that's
`a -- you're asking a question beyond the scope
`of this --
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Well, someone argued this in the Federal
`Circuit, and I'm trying to understand what your
`position is.
` Is it your position that Apple could
`go ahead and file -- sorry -- the Petitioner.
`We'll say there's one Petitioner here -- could
`file an additional discovery motion at will
`without authorization based upon your
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 19
`
`
`
`Page 20
`
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` PTAB Conference Call
`understanding of the rules?
` MR. PALYS: I believe that would be
`our position, Your Honor.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`So then I think we need clarification here.
` MR. MODI: Your Honor, this is
`Naveen Modi. Can I chime in perhaps just to
`clarify and make sure we're all on the same
`page?
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Yeah, please.
` MR. MODI: Yeah. So I think what
`just -- what happened, Your Honor, just to
`remind the Board -- so our appeal, if you
`recall, during the original proceedings, when
`they were going on before the Board, we had
`actually asked for authorization to file a
`motion on this issue. The Board had denied us
`authorization.
` So we took an appeal on that issue.
`That was one of the issues we raised on appeal,
`that the Board should have allowed us to file a
`motion for additional discovery on this issue.
`And the Federal Circuit agreed.
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 20
`
`
`
`Page 21
`
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` PTAB Conference Call
` So I don't think -- if I'm
`understanding your question correctly, I think
`the Federal Circuit order here on remand
`applies to only this case. Given what the
`record we have establish and shown, the Court
`said, yes, VirnetX should be allowed to file
`the motion for additional discovery. I don't
`think it certainly went beyond that scope, you
`know, as I'm reading the decision.
` So I hope that addresses your
`question. I don't think --
` MR. PALYS: Yeah, I'd defer to that.
` MR. MODI: -- Apple, for example,
`will be able to file a motion. I apologize.
` (Simultaneous crosstalk.)
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay. Thank you. I appreciate the
`clarification, because I think there's some
`language in the decision which implies that a
`party may not need prior authorization for an
`additional discovery motion, and I wanted to
`make it clear that -- at least for purposes of
`this case, I wanted to find out what the
`parties' views were.
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 21
`
`
`
`Page 22
`
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` PTAB Conference Call
` And so your view, I think, is
`consistent with the Board's, which is you would
`normally require additional authorizat- --
`you'd require preauthorization, but in this
`particular case, you've been given that
`authorization via the Federal Circuit
`effectively.
` MR. MODI: That's right, Your Honor.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay. That way we aren't going to be seeing
`everybody filing additional discovery motions
`without prior authorization. I just wanted to
`make sure we're all clear on that then.
` MR. PALYS: All right. Now I
`understand where you were going, Your Honor.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Yeah, otherwise, it would be a very messy
`situation.
` MR. PALYS: It's a Pandora's box.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`Okay. Got it. Thank you. I appreciate the
`clarification.
` Is there anything else you'd like --
` MR. MODI: Yeah, Your Honor, if I
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 22
`
`
`
`Page 23
`
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` PTAB Conference Call
`could just add one more thing on the timing
`issue.
` From our perspective, I totally
`understand that the Board wants to normally
`finish with the proceedings within the six
`months, right, that are allotted, or that's
`sort of the goal. And we're certainly willing
`to do our best to try to meet that. I just
`wanted just to throw that out there. I know we
`talked about timing before.
` So you know, we're very sensitive to
`that, and -- but at the same time, we of course
`want to be able to limit within sort of the
`purview of the Federal Circuit's decision. So
`I just wanted to make sure I just added that.
` ADMINISTRATIVE PATENT JUDGE TIERNEY:
`No. Understood.
` I mean, we have the six month goal,
`and we will try to meet it. But at the same
`time, we want to afford both parties due
`process and of course follow the guidance given
`to us by the Federal Circuit on the case, so
`that's a balancing act.
` And I appreciate your looking into
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 23
`
`
`
`Page 24
`
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` PTAB Conference Call
`it and just being willing to look at the
`scheduling order with an eye to the six months,
`with the understanding that if it needs to go
`past, we may have to go past. If we can go
`shorter, obviously that's better, but...
` Again, I'd like to hear from
`Mangrove, Apple, Black Swamp, one party from
`the Petitioners' side, to give me an idea and
`my co-colleagues an idea of what you're
`proposing today.
` I believe there's apparently
`disagreement between the parties as to
`scheduling and what should be done in the case?
` MR. KUSHAN: Your Honor, this is
`Jeff Kushan on behalf of Apple.
` And we -- Petitioners consulted
`before this call, and they've asked me to kind
`of present the initial views of Petitioners on
`the remand procedure.
` In broad scope, in broad strokes,
`there are two sets of independent issues that
`are coming back to the Board on remand. One
`set relates to the merits issues on
`patentability, and the second set of issues
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 24
`
`
`
`Page 25
`
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` PTAB Conference Call
`relate to the motion for additional discovery
`that you've already discussed.
` The parties -- well, at least the
`Petitioners believe that it would be more
`efficient for the briefing to proceed in
`parallel, because there are no issues relating
`to additional discovery that actually bear on
`the merits of patentability. That's kind of a
`freestanding issue of RPI that Mr. Palys had
`identified and that was addressed in the
`Federal Circuit's decision.
` And so the way we look at it, it
`would be much more efficient for the briefing
`to commence on the merits in parallel with the
`motion for additional discovery.
` And I want to make a couple comments
`about the motion for additional discovery. But
`before I get to that, the way we would propose
`this is that we would -- the parties would --
`Petitioners would file an opening brief on the
`remanded merits issues three weeks or less, no
`later than three weeks from the date of the
`call today.
` And then whatever -- three weeks
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 25
`
`
`
`Page 26
`
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` PTAB Conference Call
`from the date of service of that brief, the
`Patent Owner can file its opposition.
` And then the -- within a week after
`that, the Petitioners would file a response,
`their reply to the Patent Owner's opposition
`and move -- the Petitioners are prepared to
`file one brief, kind of a common shared brief
`in the two proceedings, so there's not
`duplicative briefing from the three
`Petitioners.
` In parallel, like I said, with that,
`we would envision that the Patent Owner could
`file its motion for discovery, let's say, three
`weeks from today's call, or earlier if they
`already know what they want. And then the
`Petitioners, again, would file a joint response
`to that motion, and then the Patent Owner would
`have its opportunity to file a reply to that
`motion or that opposition.
` And again, we would follow the same,
`you know, three weeks from today -- within
`three weeks of the service date of the motion
`for the opposition, and then within a week of
`that opposition, a filing of the reply.
`
`TSG Reporting - Worldwide 877-702-9580
`
`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 1047, page 26
`
`
`
`Page 27
`
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` I want to make just a couple of
`comments about the additional discovery topic.
`We reached out to VirnetX to see if there was
`someway we could agree, the parties, the
`Petitioners, could agree to voluntary discovery
`on the issues they want to get discovery of,
`and unfortunately that didn't yield anything of
`benefit.
` We asked VirnetX to identify the
`specific topics of discovery that they were
`seeking and whether they would agree to written
`discovery on those topics.
` And on both of those counts, they
`didn't give us an answer, other than they had
`discovery on th
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