`Paper No.
`Filed: September 13, 2019
`
`Filed on behalf of: VirnetX Inc.
`By:
`
`Joseph E. Palys
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: josephpalys@paulhastings.com
`
`Naveen Modi
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: naveenmodi@paulhastings.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`THE MANGROVE PARTNERS MASTER FUND, LTD., APPLE INC., AND
`BLACK SWAMP, LLC,
`Petitioner
`v.
`VIRNETX INC.,
`Patent Owner
`
`Case IPR2015-010471
`Patent No. 7,490,151
`
`Patent Owner’s Brief Regarding Procedure on Remand
`
`1 Apple Inc. and Black Swamp, LLC, who filed petitions in IPR2016-00063 and
`IPR2016-00167, respectively, have been joined as Petitioners in the instant
`proceeding.
`
`
`
`Pursuant to the Board’s instructions during the September 6, 2019 telephone
`
`conference (see Ex. 1047), Patent Owner VirnetX Inc. (“Patent Owner”)
`
`respectfully submits its proposed schedule for the remand proceedings. Patent
`
`Owner continues to believe that a briefing sequence where additional discovery
`
`regarding the threshold real-parties-in-interest (“RPI”) issues is conducted first,
`
`and all the remand issues are briefed together, would be the most efficient way to
`
`structure the remand proceedings. At the same time, based on the Board’s
`
`suggestion, Patent Owner also developed an alternative schedule where briefing on
`
`the merits proceeds simultaneously with discovery. In both instances, Patent
`
`Owner sought to propose a discovery and briefing schedule that enables the
`
`remand proceedings to progress expeditiously while preventing unfair prejudice.
`
`Patent Owner endeavored to reach an agreement with Petitioners The
`
`Mangrove Partners Master Fund, Ltd., Apple Inc., and Black Swamp, LLC
`
`(“Petitioners”). The parties, however, have been unable to reach an agreement.
`
`Patent Owner’s Proposal for Sequential Briefing:
`
`Patent Owner proposes that the briefing on remand proceed in two stages:
`
`First, the Board should consider and resolve Patent Owner’s motion for additional
`
`discovery into the RPI issues, and allow any discovery to take place. Second, upon
`
`the conclusion of discovery, the parties should brief both the merits issues
`
`(including applicable claim construction standard, see Ex. 1047 at 12:16-14:2) and
`
`1
`
`
`
`
`
`issues arising from additional discovery. Patent Owner proposes that the parties
`
`Case No. IPR2015-01047
`
`
`
`file simultaneous opening briefs and, subsequently, simultaneous responsive briefs.
`
`Patent Owner also believes that the Board would benefit from oral argument,
`
`particularly since there may be disputed issues arising from the additional
`
`discovery into the RPI relationship. See SOP 9 at 7 (“in those situations where
`
`new evidence is permitted, the panel may authorize additional oral argument”).
`
`This proposed briefing sequence enables the parties (and the Board) to
`
`address the threshold RPI discovery issues first, which follows the typical
`
`approach in Board proceedings where discovery is conducted before briefing, and
`
`allows the merits and the RPI issues to be addressed in a single set of briefs for
`
`consideration by the Board. Thus, the proposed briefing sequence and submission
`
`of simultaneous opening and responsive briefs would streamline the schedule
`
`without prejudicing any party. Petitioners’ proposal, by contrast, would necessitate
`
`multiple sets of briefs to be submitted at different times, each requiring an
`
`additional exchange of briefs to accommodate reply and possible sur-reply briefs.
`
`Patent Owner’s proposed schedule promotes expeditious conclusion of
`
`discovery and briefing, while affording the benefit of oral argument to discuss
`
`issues raised by the papers, within six months from the issuance of the Federal
`
`Circuit’s mandate. Patent Owner recognizes the Board would need additional time
`
`to prepare its final written decision on remand, but respectfully submits that the
`
`
`
`
`2
`
`
`
`Case No. IPR2015-01047
`
`posture of this proceeding—which envisions the possibility of additional
`
`discovery—warrants a modest extension of the Board’s general goal of issuing
`
`decisions on remanded cases within six months of the receipt of the Federal
`
`Circuit’s mandate. As the Board’s Standard Operating Procedures provide,
`
`“certain scenarios may necessitate an extension of the six-month goal for issuing a
`
`remand decision.” SOP 9 at 2. That is particularly so where the evidentiary record
`
`is re-opened for additional evidence, as would be the case if Patent Owner’s
`
`motion for additional discovery is granted or if Petitioners provide voluntary
`
`discovery. Cf. SOP 9 at 6-7.
`
`Patent Owner’s proposed schedule is reflected below, and is also contained
`
`in the attached proposed scheduling order. This schedule takes into account the
`
`overlap with the holidays in the December-January timeframe.
`
`Paper
`Patent Owner’s Motion for Additional
`Discovery
`Petitioners’ Response to Motion for
`Additional Discovery
`Patent Owner’s Reply in Support of
`Motion for Additional Discovery
`Close of Discovery
`
`Due Date
`September 27, 2019
`
`October 4, 20192
`
`October 18, 2019
`
`December 6, 2019 (approximately one
`month from any Board order granting
`additional discovery, assuming issued
`within two weeks of Patent Owner’s
`
`2 Patent Owner proposed a longer period for Petitioners’ Response, but Petitioners
`indicated they did not need more than one week.
`3
`
`
`
`Case No. IPR2015-01047
`
`Parties’ Opening Briefs
`discovery and merits issues)
`Parties’ Response Briefs
`discovery and merits issues)
`Oral Argument
`
`(on both
`
`Reply)
`December 20, 2019
`
`(on both
`
`January 24, 2020
`
`February 2020
`
`Patent Owner proposes that the parties’ opening and response briefs shall
`
`address both RPI and merits issues and be limited to 7,500 words each. The
`
`briefing on the motion for additional discovery should be governed by the Board’s
`
`rules (15 pages for the motion and the response and 5 pages for the reply).
`
`Patent Owner’s Alternative Proposal for Parallel Briefing:
`
`The Board also suggested the parties consider a schedule where the briefing
`
`on the merits issues “runs in parallel with the process for getting the additional
`
`discovery,” so as to provide “more time for briefing on the merits” while also
`
`“getting the time necessary to get additional discovery on the RPI issue.” (Ex.
`
`1047 at 36:11-23, 38:21-39:2.) Patent Owner accordingly proposes an alternative
`
`schedule, where the discovery process runs in parallel with the merits briefing.
`
`Patent Owner submits its primary proposal above is the more reasonable and fair
`
`schedule, but nonetheless provides this alternate proposal for consideration.
`
`Paper
`Patent Owner’s Motion for Additional
`Discovery
`
`Due Date
`September 27, 2019
`
`4
`
`
`
`Petitioners’ Response to Motion for
`Additional Discovery
`Patent Owner’s Reply in Support of
`Motion for Additional Discovery
`Close of Discovery
`
`(RPI
`
`Parties’ Opening Briefs (merits issues
`only)
`Patent Owner’s Motion/Brief
`issues)
`Petitioners’ Response (RPI issues)
`Patent Owner’s Reply (RPI issues)
`Parties’ Response Briefs (merits issues
`only)
`Oral Argument
`
`Case No. IPR2015-01047
`
`October 4, 20193
`
`October 18, 2019
`
`December 6, 2019 (approximately one
`month from any Board order granting
`additional discovery (assuming issued
`within two weeks of Patent Owner’s
`Reply)
`November 22, 2019
`
`December 20, 2019
`
`January 10, 2020
`January 24, 2020
`February 14, 2020
`
`February-March 2020
`
`Patent Owner’s alternative proposed schedule takes into account the overlap
`
`of the multiple briefing occurring in parallel and the holidays in the December-
`
`January timeframe. Patent Owner proposes that the parties’ opening and response
`
`briefs on the merits be limited to 6,000 words each, and that the briefing on the
`
`motion for additional discovery and the briefing on the RPI issues be subject to the
`
`page limits set by the Board’s rules for motions.
`
`Patent Owner respectfully requests that the Board adopt its proposal for
`
`sequential briefing and enter the proposed scheduling order.
`
`3 As noted above, Petitioners indicated they did not need more than one week.
`5
`
`
`
`
`
`
`Dated: September 13, 2019
`
`
`
`Case No. IPR2015-01047
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
`
`Counsel for VirnetX Inc.
`
`
`
`
`
`
`6
`
`
`
`
`
`
`
`
`
`Appendix
`Appendix
`
`
`
`
`
`
`Case No. IPR2015-01047
`Patent No. 7,490,151
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`THE MANGROVE PARTNERS MASTER FUND, LTD., APPLE INC., AND
`BLACK SWAMP, LLC,
`Petitioner
`v.
`VIRNETX INC.,
`Patent Owner
`
`Case IPR2015-010471
`Patent No. 7,490,151
`
`Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`PROPOSED SCHEDULING ORDER
`
`1 Apple Inc. and Black Swamp, LLC, who filed petitions in IPR2016-00063 and
`IPR2016-00167, respectively, have been joined as Petitioners in the instant
`proceeding.
`
`
`
`Case No. IPR2015-01047
`Patent No. 7,490,151
`
`This order sets forth the schedule and other requirements for this proceeding
`
`following a remand from the United States Court of Appeals for the Federal
`
`Circuit. The following shall be the due dates for the parties to take action:
`
`Paper
`Patent Owner’s Motion for Additional
`Discovery
`Petitioners’ Response to Motion for
`Additional Discovery
`Patent Owner’s Reply in Support of
`Motion for Additional Discovery
`Close of Discovery
`Parties’ Opening Briefs
`discovery and merits issues)
`Parties’ Response Briefs
`discovery and merits issues)
`Oral Argument
`
`(on both
`
`(on both
`
`Due Date
`September 27, 2019
`
`October 4, 2019
`
`October 18, 2019
`
`December 6, 2019
`December 20, 2019
`
`January 24, 2020
`
`February 2020 (specific date to be
`determined)
`
`
`The parties’ opening and response briefs shall be limited to 7,500 words
`
`each. The briefing on the motion for additional discovery should be governed by
`
`the Board’s rules for motions, which provide for a limit of 15 pages for the motion
`
`and the response and 5 pages for the reply.
`
`The due date for the Close of Discovery shall be approximately one month
`
`from any order granting additional discovery. If necessary, the Board shall issue
`
`an order providing for a different date. The Board will issue a separate order
`
`setting the date for oral argument regarding the remand issues in this proceeding.
`
`
`
`
`
`
`Case No. IPR2015-01047
`Patent No. 7,490,151
`
`PETITIONERS:
`
`Abraham Kasdan
`James T. Bailey
`akasdan@wiggin.com
`jtb@jtbaileylaw.com
`IP@wiggin.com
`WIGGIN AND DANA LLP
`
`Jeffrey P. Kushan
`Scott Border
`Thomas A. Broughan III
`SIDLEY AUSTIN LLP
`iprnotices@sidley.com
`
`Thomas H. Martin
`Wesley C. Meinerding
`MARTIN & FERRARO, LLP
`tmartin@martinferraro.com
`docketing@martinferraro.com
`
`PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`Daniel Zeilberger
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`danielzeilberger@paulhastings.com
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on
`
`the counsel for Petitioner a true and correct copy of the foregoing Patent
`
`Owner’s Brief Regarding Procedure on Remand by electronic means on the
`
`date below at the following addresses of record:
`Abraham Kasdan (akasdan@wiggin.com)
`James T. Bailey (jtb@jtbaileylaw.com)
`IP@wiggin.com
`
`Jeffrey P. Kushan
`Scott Border
`Thomas A. Broughan III
`iprnotices@sidley.com
`
`Thomas H. Martin
`Wesley C. Meinerding
`tmartin@martinferraro.com
`docketing@martinferraro.com
`
`Dated: September 13, 2019
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
`
`Counsel for VirnetX Inc.
`
`
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