Filed: September 13, 2019
`
`
`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,
`Petitioners,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2015-010471
`U.S. Patent No. 7,490,151
`
`––––––––––––––––––
`
`PETITIONERS’ REMAND SCHEDULING BRIEF
`
`
`
`1 Apple Inc. and Black Swamp IP, LLC, which filed petitions in IPR2016-00063
`and IPR2016-00167, respectively, have been joined as Petitioners in the instant
`proceeding.
`
`
`
`
`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,
`Petitioners,
`
`v.
`
`VIRNETX INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2015-010471
`U.S. Patent No. 7,490,151
`
`––––––––––––––––––
`
`PETITIONERS’ REMAND SCHEDULING BRIEF
`
`
`
`1 Apple Inc. and Black Swamp IP, LLC, which filed petitions in IPR2016-00063
`and IPR2016-00167, respectively, have been joined as Petitioners in the instant
`proceeding.
`
`
`
`IPR2015-01047
`
`U.S. Patent No. 7,490,151
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`INTRODUCTION ......................................................................................... 1
`PETITIONERS’ PROPOSED REMAND SCHEDULE ........................... 1
`A. VirnetX’s Motion for Additional Discovery ......................................... 1
`B.
`Briefing on Remanded Issues ................................................................ 3
`III. CONCLUSION .............................................................................................. 5
`Attachment A - Petitioners’ Proposed Remand Schedule .................................. 7
`Certificate Of Service............................................................................................... 8
`
`
`
`
`i
`PETITIONERS’ REMAND SCHEDULING BRIEF
`
`
`
`IPR2015-01047
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 7,490,151
`
`The mandate in VirnetX Inc. v. The Mangrove Partners Master Fund, Ltd.,
`
`Nos. 2017-1368, -1383 (Fed. Cir. July 8, 2019) issued on August 14, 2019. During
`
`a conference call on September 6, 2019, the Board ordered the parties to submit, by
`
`September 13, 2019, briefs setting forth their respective proposals regarding
`
`conduct of the proceedings on remand, along with proposed scheduling orders. Ex.
`
`1047, 42:10-25, 51:8-25. Petitioners submit the Board should adopt the schedule
`
`proposed below, as it will conclude briefing by December 13, 2019, and provide
`
`the Board with two months to issue a decision, thereby enabling it to complete the
`
`remanded proceedings within six months of the Federal Circuit’s mandate.
`
`II.
`
`PETITIONERS’ PROPOSED REMAND SCHEDULE
`
`A. VirnetX’s Motion for Additional Discovery
`The Board set the due date for VirnetX’s motion for additional discovery as
`
`September 27. Petitioners propose that their opposition be due on October 4, and
`
`that VirnetX’s reply be due on October 11. Petitioners also propose that if the
`
`Board authorizes any additional discovery, it be completed by November 8.
`
`Petitioners believe this schedule is appropriate. First, VirnetX is (or should
`
`be) fully familiar with the additional discovery it is seeking and its supposed
`
`relevance to VirnetX’s real-party-in-interest theory. VirnetX has also had ample
`
`time to prepare for briefing, as the Federal Circuit issued its decision authorizing
`
`1
`PETITIONERS’ REMAND SCHEDULING BRIEF
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`
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`IPR2015-01047
`
`U.S. Patent No. 7,490,151
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`VirnetX’s desired motion on July 8, 2019, more than two months ago. Second,
`
`Petitioners do not require more than one week to prepare and file their opposition
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`to VirnetX’s motion.2 Third, as Petitioners indicated on the call with the Board,
`
`they are prepared to agree to a reasonable scope of written discovery. The issues
`
`in dispute (that potentially require resolution by the Board), thus, are narrow.
`
`Petitioners have repeatedly asked VirnetX to identify the precise nature of
`
`the additional discovery being sought and from whom VirnetX seeks it. Petitioners
`
`explained to VirnetX that, if the parties could agree on the scope of additional
`
`discovery, it would obviate the need for briefing of a motion. Unfortunately,
`
`VirnetX has refused to provide Petitioners with the specific discovery requests it is
`
`asking the Board to authorize, or to even conclusively identify the parties or non-
`
`parties that are the target(s) of its discovery. VirnetX’s refusal to meaningfully
`
`engage with Petitioners on the scope of additional discovery it is seeking is
`
`unreasonable and imposes unnecessary burdens on the Board and on Petitioners.
`
`
`
`2
`
`In a meet and confer on September 12, VirnetX opposed this date, stating
`
`that Petitioners’ opposition should be due three weeks after VirnetX files its
`
`motion. VirnetX were unable to identify a reason—other than VirnetX’s own wish
`
`to delay this proceeding—for postponing Petitioners’ opposition due date to two
`
`weeks after the date Petitioners indicated they would be prepared to file that brief.
`
`2
`PETITIONERS’ REMAND SCHEDULING BRIEF
`
`
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`IPR2015-01047
`
`U.S. Patent No. 7,490,151
`
`Briefing on Remanded Issues
`
`B.
`With respect to the substantive issues remanded by the Federal Circuit, the
`
`parties appear to agree on the following: (i) the parties will simultaneously file
`
`opening briefs, and will simultaneously file responses;3 (ii) the briefs will not
`
`exceed 7,500 words;4 and (iii) the parties will not introduce new evidence
`
`concerning the remanded merits issues. The parties disagree on when briefing
`
`should occur or whether an oral hearing is necessary.
`
`Petitioners propose that opening briefs be filed on November 22, 2019, and
`
`that responses be filed December 13, 2019. Petitioners submit this schedule
`
`reflects the best balance of interests between the parties and the Board. First, it
`
`will provide the Board with approximately two months following briefing to issue
`
`a decision before the Board’s six-month target date for completion of remanded
`
`proceedings (i.e., February 14, 2020).5 Second, Petitioners’ proposed briefing
`
`
`
`3
`
`4
`
`Petitioners will file a single joint brief and a single joint responsive brief.
`
`VirnetX indicated it could agree to 7,500 word briefs if they addressed both
`
`the patentability and RPI issues.
`
`5
`
`“The Board has established a goal to issue decisions on cases remanded …
`
`within six months of the Board’s receipt of the Federal Circuit’s mandate,” Trial
`
`Practice Guide Update (July 2019) at 45, and “will consider the time and expense
`
`3
`PETITIONERS’ REMAND SCHEDULING BRIEF
`
`
`
`IPR2015-01047
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`U.S. Patent No. 7,490,151
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`schedule provides sufficient time to resolve any contested aspects of VirnetX’s
`
`motion for additional discovery and to complete any discovery that is ordered.6
`
`Finally, Petitioners’ proposed schedule provides the parties with more than two
`
`months to prepare opening briefs and three weeks to prepare their response briefs,
`
`consistent with conventional briefing practices in contested proceedings.
`
`Petitioners were informed by VirnetX that it may propose that opening briefs
`
`not be filed until December 20, 2019, and oppositions not be filed until January 24,
`
`2020. That schedule unreasonably delays the commencement of briefing and,
`
`because it spans the winter holiday, unreasonably extends the duration of
`
`opposition briefing. It also all but ensures that the Board will not meet its six-
`
`month target for completing the remanded proceedings—it would require the
`
`
`
`that permitting additional briefing and new evidence will add to the proceeding,
`
`consistent with the expression of Board policy … ‘… to secure the just, speedy,
`
`and inexpensive resolution of every proceeding.” Trial Practice Guide Update (July
`
`2019) at 47-48 (quoting 37 C.F.R. § 42.1(b)); Standard Operating Procedure 9.
`
`6
`
`If delays are encountered incidental to additional discovery, the Board can
`
`consider requests to revisit this schedule. Delaying the schedule based on
`
`speculation about potential discovery is not warranted, given the mandate for IPR
`
`proceedings to be concluded expeditiously.
`
`4
`PETITIONERS’ REMAND SCHEDULING BRIEF
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`
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`IPR2015-01047
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`U.S. Patent No. 7,490,151
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`Board to render a decision within three weeks, and even less time if VirnetX’s
`
`request for an oral hearing is also granted.
`
`VirnetX’s rationale to justify a delayed briefing schedule is at best
`
`speculative—it rests on the assumption that additional evidence will be produced
`
`and that such evidence will support VirnetX’s unfounded real-party-in-interest
`
`theory, contrary to the evidence already in this record. See Paper 71, 28-29.
`
`VirnetX’s proposed schedule will instead frustrate the objective of a just, speedy,
`
`and inexpensive resolution of this proceeding and prevent the Board from meeting
`
`its goal of a decision within six months of the Federal Circuit’s mandate.
`
`Finally, there is no need for an additional oral hearing. The Board’s
`
`guidance explains that, “[i]n most cases, an additional oral hearing will not be
`
`authorized, as the existing record and previous oral argument normally will be
`
`sufficient.” Trial Practice Guide Update (July 2019) at 47. Because no new merits
`
`evidence will be permitted and any arguments based on additional discovery can
`
`be considered on the papers, an oral hearing is unnecessary to resolve the
`
`remanded issues.
`
`III. CONCLUSION
`
`For all these reasons, the Board should adopt Petitioners’ proposed schedule.
`
`
`
`
`
`5
`PETITIONERS’ REMAND SCHEDULING BRIEF
`
`
`
`IPR2015-01047
`
`U.S. Patent No. 7,490,151
`
`Dated: September 13, 2019
`
`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`T: 202-736-8000
`Attorney for Petitioner Apple Inc.
`
`/Thomas H. Martin/
`Thomas H. Martin
`Reg. No. 34,383
`Martin & Ferraro, LLP
`Attorney for Petitioner Black Swamp
`
`/James T. Bailey/
`Abraham Kasdan
`Reg. No. 32, 997
`Wiggin & Dana LLP
`450 Lexington Avenue
`New York, NY 10017
`T: 212-551-2841
`Email: IP@wiggin.com
`
`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
`Attorneys for Petitioner Mangrove
`
`
`
`6
`PETITIONERS’ REMAND SCHEDULING BRIEF
`
`
`
`IPR2015-01047
`
`U.S. Patent No. 7,490,151
`
`ATTACHMENT A -
`PETITIONERS’ PROPOSED REMAND SCHEDULE
`
`REMAND DUE DATE 1 ........................................................... September 27, 2019
`Patent Owner’s Motion for Additional Discovery
`
`
`REMAND DUE DATE 2 ................................................................. October 4, 2019
`Petitioners’ Opposition to PO’s Motion for Additional Discovery
`
`
`REMAND DUE DATE 3 ................................................................ October 11, 2019
`Patent Owner’s Reply ISO its Motion for Additional Discovery
`
`
`REMAND DUE DATE 4 .............................................................. November 8, 2019
`Close of Remand Fact Discovery (if Ordered)
`
`REMAND DUE DATE 5 ............................................................ November 22, 2019
`Petitioners’ Opening Remand Brief (7,500 words)
`Patent Owner’s Opening Remand Brief (7,500 words)
`
`
`REMAND DUE DATE 6 ............................................................ December 13, 2019
`Petitioners’ Reply Remand Brief (7,500 words)
`Patent Owner’s Reply Remand Brief (7,500 words)
`
`
`
`
`
`
`
`PETITIONERS’ REMAND SCHEDULING BRIEF
`
`
`
`IPR2015-01047
`
`U.S. Patent No. 7,490,151
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 13th day of
`
`September, 2019, I caused to be served a true and correct copy of the foregoing by
`
`electronic mail on the following counsel:
`
`Joseph E. Palys
`josephpalys@paulhastings.com
`
`Naveen Modi
`naveenmodi@paulhastings.com
`
`
`
`Dated: September 13, 2019
`
`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`T: 202-736-8000
`Attorney for Petitioner Apple Inc.
`
`/Thomas H. Martin/
`Thomas H. Martin
`Reg. No. 34,383
`Martin & Ferraro, LLP
`Attorney for Petitioner Black Swamp
`
`/James T. Bailey/
`Abraham Kasdan
`Reg. No. 32, 997
`Wiggin & Dana LLP
`450 Lexington Avenue
`New York, NY 10017
`T: 212-551-2841
`Email: IP@wiggin.com
`
`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
`Attorneys for Petitioner Mangrove
`
`
`
`
`
`
`PETITIONERS’ REMAND SCHEDULING BRIEF
`
`
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