throbber
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
`
`
`
`
`
`
`Paper No.
`Filed: September 27, 2019
`
`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 Motion for Additional Discovery
`
`
`
`
`
`
`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
`
`I.
`II.
`
`Table of Contents
`Introduction and Precise Relief Requested ...................................................... 1
`Background ...................................................................................................... 2
`A. Apple’s Initial Attempts to Avoid Section 315(b)’s Time Bar ............. 2
`B. Apple’s Proxy, RPX Corporation, Files IPR Petitions, but the
`Board Denies Review When Discovery Reveals that
`Relationship ........................................................................................... 2
`C. Mangrove Files New IPR Petitions Against the Same Patents ............. 4
`III. Reasons for the Requested Relief .................................................................... 5
`A. More Than a Possibility and Mere Allegation ...................................... 6
`B.
`Litigation Positions and Underlying Basis ..........................................13
`C. Ability to Generate Equivalent Information by Other Means ............13
`D.
`Easily Understandable Instructions .....................................................14
`E.
`Requests Not Overly Burdensome ......................................................14
`IV. Conclusion .....................................................................................................15
`
`
`
`
`i
`
`

`

`
`
`I.
`
`
`
`Case No. IPR2015-01047
`
`Introduction and Precise Relief Requested
`Patent Owner VirnetX Inc. (“VirnetX”) respectfully files this motion pursuant
`
`to the Board’s authorization during the September 6, 2019 telephone conference (see
`
`Ex. 1047), and based on the Federal Circuit’s holding that VirnetX should be
`
`allowed to file a motion for additional discovery into the relationship between
`
`Petitioner The Mangrove Partners Master Fund, Ltd. (“Mangrove”) and RPX
`
`Corporation (“RPX”), “an entity that purports to help companies mitigate and
`
`manage patent risk and expense by serving as an intermediary through which they
`
`can participate more efficiently in the patent market.” VirnetX Inc. v. Mangrove
`
`Partners Master Fund, Ltd., No. 2017-1368, 2019 WL 2912776, at *3, 4 (Fed. Cir.
`
`July 8, 2019) (internal quotation marks omitted). RPX, which has extensive ties to
`
`Mangrove, had previously challenged the very same patents Mangrove challenges
`
`here—U.S. Patent Nos. 6,502,135 (“the ’135 patent”) and 7,490,151 (“the ’151
`
`patent”). The Board terminated RPX’s inter partes reviews when discovery revealed
`
`RPX to be affiliated with time-barred Petitioner Apple Inc. (“Apple”). Id., at *1.
`
`As explained below, the evidence of record more than satisfies VirnetX’s
`
`burden of demonstrating why additional discovery is appropriate and needed. As
`
`such, VirnetX respectfully requests that the Board authorize the discovery contained
`
`in Appendices A-E. See 37 C.F.R. §§ 42.51(b)(2), 42.52(a).
`
`
`
`1
`
`

`

`Case No. IPR2015-01047
`
`
`II. Background
`A. Apple’s Initial Attempts to Avoid Section 315(b)’s Time Bar
`In 2010, VirnetX sued Apple for infringement of the ’135 and ’151 patents
`
`(among others) in district court. That lawsuit trigged a two-pronged response. In
`
`the district court, Apple challenged both patents as invalid in light of Kiuchi.
`
`VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1315 (Fed. Cir. 2014). The district
`
`court, however, upheld the validity of the patents, and the Federal Circuit affirmed
`
`that holding. Id. at 1313.
`
`Meanwhile, in June 2013—almost three years after VirnetX’s original
`
`complaint—Apple filed the first of numerous inter partes review challenges to the
`
`’135 and ’151 patents at the Patent Office: IPR2013-00348, IPR2013-00349, and
`
`IPR2013-00354. The Board denied these petitions as time-barred under 35 U.S.C.
`
`§ 315(b) because Apple had been served with an infringement complaint more than
`
`one year earlier. See Apple Inc. v. VirnetX Inc., IPR2013-00348, Paper 14 at 5
`
`(Dec. 13, 2013); Apple Inc. v. VirnetX Inc., IPR2013-00349, Paper 14 at 5 (Dec. 13,
`
`2013); Apple Inc. v. VirnetX Inc., IPR2013-00354, Paper 20 at 5 (Dec. 13, 2013).
`
`B. Apple’s Proxy, RPX Corporation, Files IPR Petitions, but the
`Board Denies Review When Discovery Reveals that Relationship
`On November 20, 2013, just before Apple’s time-barred petitions were
`
`denied, RPX filed three petitions challenging the ’135 and ’151 patents (IPR2014-
`
`00171; IPR2014-00172; and IPR2014-00173), once again relying (in part) on
`
`
`
`2
`
`

`

`
`Kiuchi. RPX is not in the business of technological invention or manufacturing and
`
`Case No. IPR2015-01047
`
`VirnetX has never asserted its patents against RPX. Instead, RPX purports to
`
`provide “patent risk management solutions” for clients by “efficiently remov[ing]
`
`threatening patents from the market.” (Ex. 2046 at 1; Ex. 2047 at 8-10; Ex. 2048
`
`at 1.) Ostensibly, RPX was unconnected to Apple. RPX did not include Apple when
`
`listing all real parties-in-interest, as required by 35 U.S.C. § 312(a)(2), and Apple
`
`represented that it had no pre-filing communications with RPX. But VirnetX later
`
`uncovered evidence to the contrary, including metadata demonstrating that Apple’s
`
`counsel was involved in the preparation or review of RPX’s filings in those
`
`proceedings. See, e.g., RPX Corp. v. VirnetX Inc., IPR2014-00171, Paper 55 at 5-7
`
`(July 14, 2014).
`
`Based on this evidence, the Board concluded that “RPX [was] acting as a
`
`proxy” for the time-barred Apple and that RPX had failed to list “all real parties in
`
`interest,” in violation of 35 U.S.C. § 312(a)(2). The Board then denied the petitions
`
`as time-barred under section 315(b). See RPX Corp. v. VirnetX Inc., IPR2014-
`
`00171, Paper 57 at 3, 10 (July 14, 2014); RPX Corp. v. VirnetX Inc., IPR2014-00172,
`
`Paper 57 at 3, 10 (July 14, 2014); RPX Corp. v. VirnetX Inc., IPR2014-00173,
`
`Paper 56 at 3, 10 (July 14, 2014).
`
`
`
`3
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`

`

`
`
`Case No. IPR2015-01047
`
`C. Mangrove Files New IPR Petitions Against the Same Patents
`In April 2015, Mangrove filed new IPR petitions challenging the ’135 and
`
`’151 patents based on the same Kiuchi reference that Apple and RPX had previously
`
`invoked. Like RPX, Mangrove is not in the business of technological invention or
`
`manufacturing, and VirnetX has never asserted its patents against Mangrove. Both
`
`petitions named only Mangrove as the real party-in-interest (“RPI”). As the Federal
`
`Circuit observed, however:
`
`VirnetX learned that Mangrove gained equity in RPX, an entity that
`purports to help “companies mitigate and manage patent risk and
`expense by serving as an intermediary through which they can
`participate more efficiently in the patent market.” [Ex. 2047 at 8.]
`After institution, Mangrove disclosed that it owned about five percent
`of RPX, which made it RPX’s fifth largest shareholder. [Ex. 2054 at
`15; Ex. 2055 at 1.] In a March 2016 letter, Mangrove stated that it
`recently met with management from RPX. [Ex. 2055 at 2.] VirnetX
`requested authorization to move for additional discovery to explore the
`relationship between Mangrove and RPX, which had previously filed
`time-barred petitions because Apple was found to be a real party in
`interest. During a conference call, VirnetX conveyed this evidence to
`the Board and asserted that Mangrove’s attorney had only previously
`represented RPX. [Ex. 2032 at 7, 12-13.]
`
`Mangrove Partners, 2019 WL 2912776, at *3 (joint appendix citations replaced with
`
`citations of IPR exhibits).
`
`
`
`4
`
`

`

`
`III. Reasons for the Requested Relief
`VirnetX requests discovery that will further show that RPX is an unnamed
`
`Case No. IPR2015-01047
`
`RPI and/or privy of Mangrove. VirnetX moves for the following focused discovery:
`
`1.
`
`Requests for production from Mangrove directed to communications
`
`between Mangrove and RPX (as described in Appendix A, RFP Nos. 1-2),
`
`Mangrove’s acquisition of RPX stock (as described in Appendix A, RFP No. 3), and
`
`Mangrove’s decision to initiate the present IPR proceeding (as described in
`
`Appendix A, RFP No. 4).
`
`2.
`
`A deposition, limited to four hours, of Nathaniel August (Mangrove’s
`
`Founder and President) on topics consistent with those contained in VirnetX’s
`
`requests for production from Mangrove (as described in Appendix B).
`
`3.
`
`A deposition, limited to four hours, of a corporate representative of
`
`Mangrove on topics consistent with those contained in VirnetX’s requests for
`
`production from Mangrove (as described in Appendix C).2
`
`4.
`
`Requests
`
`for production
`
`from
`
`third-party RPX directed
`
`to
`
`
`2 VirnetX agrees that if Mangrove designates Nathaniel August as its corporate
`
`representative, it can proceed with a single four-hour deposition focused on
`
`Mr. August’s testimony in his personal capacity and as the designated corporate
`
`representative for Mangrove.
`
`
`
`5
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`

`

`
`communications between Mangrove and RPX (as described in Appendix D, RFP
`
`Case No. IPR2015-01047
`
`Nos. 1-2) and Mangrove’s acquisition of RPX stock (as described in Appendix D,
`
`RFP No. 3).
`
`5.
`
`A deposition, limited to four hours, of a corporate representative of
`
`RPX on topics consistent with those contained in VirnetX’s requests for production
`
`from RPX (as described in Appendix E).
`
`The requested discovery is important because RPX has previously been found
`
`to be time-barred under section 315(b) with respect to the patent at issue in this
`
`proceeding. (Supra Section II.B.) As discussed below, VirnetX’s discovery
`
`requests meet the factors set forth in Garmin International, Inc. v. Cuozzo Speed
`
`Technologies LLC, IPR2012-00001, Paper 26 at 6 (Mar. 5, 2013) (precedential).
`
`A. More Than a Possibility and Mere Allegation
`VirnetX’s discovery narrowly focuses on the relationship between Mangrove
`
`and RPX. The discovery is based on known aspects of that relationship, and is
`
`calculated to render useful information as to VirnetX’s position that RPX is an
`
`unnamed RPI and/or privy.
`
`At the outset, the requested discovery must be considered in the context of
`
`RPX’s past actions. As discussed above, RPX previously acted as Apple’s proxy in
`
`an effort to challenge the patents at issue here, but attempted to hide its connection
`
`to Apple and Apple’s involvement. (Supra Section II.B.) Moreover, RPX is not a
`
`
`
`6
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`

`

`
`run-of-the-mill company that decided to support Apple’s efforts to invalidate the
`
`Case No. IPR2015-01047
`
`patents at issue out of an altruistic motive. Rather, RPX advertises to potential
`
`clients that it provides “patent risk management solutions” by “efficiently
`
`remov[ing] threatening patents from the market.” (Ex. 2046 at 1; Ex. 2047 at 8-10;
`
`Ex. 2048 at 1.) Indeed, consistent with VirnetX’s view of RPX, the Federal Circuit
`
`recently found that
`
`RPX, unlike a traditional trade association, is a for-profit company
`whose clients pay for its portfolio of “patent risk solutions.” … These
`solutions help paying members “extricate themselves from NPE
`lawsuits.” … The company’s SEC filings reveal that one of its
`“strategies” for transforming the patent market is “the facilitation of
`challenges to patent validity,” one intent of which is to “reduce
`expenses for [RPX’s] clients.” … [T]hese facts … taken together,
`imply that RPX can and does file IPRs to serve its clients’ financial
`interests, and that a key reason clients pay RPX is to benefit from this
`practice in the event they are sued by an NPE.
`
`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351-52 (Fed. Cir.
`
`2018), cert. denied, 139 S. Ct. 1366 (2019) (citations omitted). The Federal Circuit
`
`also observed that RPX may be strategically structuring its conduct so as to disguise
`
`its connection to entities it services, in an effort to avoid section 315(b)’s time bar.
`
`See id. at 1355 (“The evidence might actually indicate that RPX worked to ascertain,
`
`with a strong degree of confidence, its client’s desires, while taking last-minute
`
`
`
`7
`
`

`

`
`efforts to avoid obtaining an express statement of such desires. The law has a label
`
`Case No. IPR2015-01047
`
`for this: willful blindness.”).
`
`In addition to RPX’s goal of invalidating patents on behalf of its clients, and
`
`its past attempts to do just that on Apple’s behalf against the very patents at issue
`
`here, the evidence of record shows extensive links between Mangrove and RPX. As
`
`an initial matter, there is one critical background similarity between the two sets of
`
`proceedings—those previously brought by RPX and those initiated by Mangrove.
`
`Neither Mangrove nor RPX is in the business of practicing VirnetX’s patented
`
`technology, or in the business technological invention or manufacturing. Neither
`
`Mangrove nor RPX has ever been accused of infringing the patents at issue (nor did
`
`VirnetX ever indicate it would assert these patents against either Mangrove or RPX).
`
`Neither Mangrove nor RPX is a public-interest entity outwardly concerned with
`
`“‘improv[ing] the quality of patents.’” In re Cuozzo Speed Techs., LLC, 793 F.3d
`
`1268, 1289 (Fed. Cir. 2015) (quoting H.R. Rep. No. 112-98, at 46 (2011)). Rather,
`
`each is “a for-profit company,” and so its IPR challenges to VirnetX’s patents are
`
`presumptively motivated by a “financial interest[].” RPX Corp., 897 F.3d at 1351-
`
`52. In RPX’s case, its intentions have already been ascertained through discover in
`
`the prior proceedings: RPX was improperly acting as Apple’s proxy. (Supra Section
`
`II.B.) Mangrove’s motives in seeking to invalidate the same two patents have never
`
`
`
`8
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`

`

`
`been adequately explained. The evidence suggests, however, that Mangrove did not
`
`Case No. IPR2015-01047
`
`initiate the IPRs on its own volition, but rather to support RPX’s efforts.
`
`Throughout this proceeding, Mangrove gradually gained equity in RPX, at
`
`one point becoming its fifth largest shareholder. (Ex. 2055 at 2; see also Ex. 2006;
`
`Ex. 2043; Ex. 2044; Ex. 2045; Ex. 2054 at 15.) Mangrove is not a run-of-the-mill
`
`investor; it was one of RPX’s largest investors, and thus had a strong interest in
`
`RPX’s success (including RPX’s success in any services it had previously offered to
`
`Apple). Moreover, Mangrove was not a silent investor. Mangrove nominated a slate
`
`of three individuals—including Nathaniel August, Mangrove’s Founder and
`
`President—to RPX’s Board of directors. (Ex. 2054 at 15; Ex. 2055 at 1-2.)
`
`Critically, Mr. August sent a letter to RPX describing meetings with RPX’s
`
`management, and even encouraged RPX to “work with [Mangrove] behind the
`
`scenes.” (Ex. 2055 at 1-2.) Furthermore, at the time Mangrove filed its IPR petition,
`
`its counsel (James Bailey) had only ever previously represented only one entity in
`
`IPR proceedings—and it was RPX.3 Given RPX’s public representation that its
`
`operational model is to “serve as an extension of a client’s in-house legal team,” (Ex.
`
`2046; Ex. 2048; Ex. 2047 at 3, 9.), that fact further suggests connection between
`
`
`3 Those proceedings were IPR2014-00946, IPR2014-00947, IPR2014-00948, and
`
`IPR2014-01107.
`
`
`
`9
`
`

`

`
`Mangrove and RPX with respect to these IPR proceedings—the only inter partes
`
`Case No. IPR2015-01047
`
`review proceedings Mangrove had ever initiated.
`
`This evidence strongly suggests that Mangrove and RPX have an RPI or
`
`privity relationship with respect to these IPRs. The Board, however, does not need
`
`to resolve that issue conclusively to grant additional discovery. In fact, discovery is
`
`a necessary step in enabling the Board to make that determination. Rather, the
`
`relevant inquiry is whether there is “a threshold amount of evidence or reasoning
`
`tending to show beyond speculation that something useful will be uncovered.”
`
`Garmin at 7. Here, VirnetX has brought forth evidence amply satisfying such a
`
`threshold showing. Specifically, the evidence discussed above demonstrates beyond
`
`mere speculation that the additional targeted discovery requested by VirnetX is
`
`reasonably calculated to produce information helpful to the RPI/privity inquiry. For
`
`instance, the evidence already available shows, beyond mere speculation, that the
`
`relationship between Mangrove and RPX confers RPI and/or privy status to RPX.
`
`This is particularly so given the Federal Circuit’s recent guidance (when considering
`
`another case involving RPX) that “[d]etermining whether a non-party is a ‘real party
`
`in interest’ demands a flexible approach that takes into account both equitable and
`
`practical considerations, with an eye toward determining whether the non-party is a
`
`clear beneficiary that has a preexisting, established relationship with the petitioner.”
`
`RPX, 897 F.3d at 1351. And, as in RPX, “the point [of the ultimate RPI inquiry] is
`
`
`
`10
`
`

`

`
`not to probe [Mangrove’s] interest (it does not need any); rather, it is to probe the
`
`Case No. IPR2015-01047
`
`extent to which [RPX] … has an interest in and will benefit from [Mangrove’s]
`
`actions, and inquire whether [Mangrove] can be said to be representing that interest
`
`after examining its relationship with [RPX].” Id. at 1353.
`
`Indeed, record evidence demonstrates that non-public information concerning
`
`the relationship between Mangrove and RPX does exist. Nathaniel August
`
`specifically described the existence of such information in his March 17, 2016 letter
`
`to RPX by referencing a “meeting with [RPX’s] CEO” (Ex. 2058 at 1) and “with
`
`management” (id. at 2). And Mr. August suggested in that letter that Mangrove
`
`“work with [RPX] behind the scenes.” (Id.) The existence of any “behind the
`
`scenes” connection is precisely what VirnetX’s discovery request is designed to
`
`probe—particularly given RPX’s record of subterfuge and “willful blindness.” RPX,
`
`897 F.3d at 1352.4
`
`Each of VirnetX’s discovery requests is specifically targeted at obtaining
`
`
`4 Mangrove may argue that Mr. August’s letter to RPX is irrelevant because it post-
`
`dates institution of these IPRs. But the letter was sent approximately 11 months after
`
`Mangrove filed its IPR petitions and 5 months after institution (see Ex. 2058 at 1)—
`
`and thus at least suggests a relationship between the two entities at the time of
`
`institution.
`
`
`
`11
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`

`

`
`information that available evidence, and not mere speculation, suggests exists:
`
`Case No. IPR2015-01047
`
`First, VirnetX’s discovery
`
`requests seek
`
`information
`
`relating
`
`to
`
`communications between Mangrove Partners and RPX concerning VirnetX or
`
`VirnetX patents (see Appendix A, RFP No. 1; Appendix D, RFP No. 1; Appendix
`
`B; Appendix C; Appendix E) and patent office proceedings (see Appendix A, RFP
`
`No. 2; Appendix D, RFP No. 2; Appendix B; Appendix C; Appendix E). It is well
`
`beyond mere speculation that such information exists given (1) RPX’s role as a for-
`
`profit company that seeks to invalidate patents on behalf of its clients, (2) RPX’s
`
`past known attempts to do just that for Apple, (3) Mangrove’s extensive ties to RPX,
`
`including its communications with RPX and its position as one of RPX’s largest
`
`shareholders that came to be precisely as the IPR proceeding here initiated, (4)
`
`Mangrove’s decision to hire RPX’s former counsel to help try to invalidate the
`
`patent-at-issue here, and (5) that Mangrove, like RPX (but unlike Apple), was never
`
`charged with infringing the patent-at-issue. (Supra at 2-4, 6-10.) Moreover,
`
`additional information into each of these issues would be highly relevant to the
`
`RPI/privity inquiry.
`
`Second, VirnetX’s discovery requests seek
`
`information relating
`
`to
`
`Mangrove’s acquisition of RPX stock. (See Appendix A, RFP No. 3; Appendix D,
`
`RFP No. 3; Appendix B; Appendix C; Appendix E.) It is at least beyond mere
`
`speculation that such information exists. Indeed, as discussed above, the evidence
`
`
`
`12
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`

`
`confirms that Mangrove at least at one point was one of RPX’s largest shareholders.
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`Case No. IPR2015-01047
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`(Supra at 4, 9.) Moreover, additional information behind Mangrove’s acquisition of
`
`RPX stock (e.g., why it was acquired precisely as the IPR proceeding here initiated)
`
`would again be highly relevant to the RPI/privity inquiry.
`
`Third, VirnetX’s discovery requests seek information relating to Mangrove’s
`
`decision to initiate IPR2015-01046 and IPR2015-01047. (See Appendix A, RFP No.
`
`4; Appendix B; Appendix C.) It is at least beyond mere speculation that such
`
`information exists given that Mangrove is an investment fund that seeks to make its
`
`clients money. (See generally Ex. 2001.) And such information would again be
`
`highly relevant to the RPI/privity inquiry.
`
`Litigation Positions and Underlying Basis
`B.
`VirnetX, Mangrove, and RPX are not in district-court litigation, and none of
`
`VirnetX’s requests implicate litigation positions or strategies of Mangrove. VirnetX
`
`also does not seek to prematurely learn Mangrove’s positions in these IPRs.
`
`C. Ability to Generate Equivalent Information by Other Means
`VirnetX’s discovery requests narrowly target information about the
`
`relationship between Mangrove and RPX that is not publicly available. Indeed,
`
`Mangrove itself has previously suggested to RPX that some of their work together
`
`should be done “behind the scenes.” (Ex. 2055 at 1-2.) Because the information
`
`sought concerns any such coordination between Mangrove and RPX, VirnetX
`
`
`
`13
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`cannot obtain equivalent information through other means.
`
`Case No. IPR2015-01047
`
`D. Easily Understandable Instructions
`VirnetX’s instructions (see Exs. 2039-2040 at 1-2) are easily understandable
`
`and are based on the instructions already approved by the Board in Garmin.
`
`E. Requests Not Overly Burdensome
`The requested discovery is “sensible and responsibly tailored according to a
`
`genuine need.” See Garmin at 14-16. Mangrove and RPX’s compliance with the
`
`requested discovery will not require significant expenditure of resources or place a
`
`significant burden on meeting deadlines in this proceeding. VirnetX acknowledges
`
`that there may be some overlap in its requests. Nevertheless, the multi-pronged
`
`approach proposed in this motion, with requests for production and depositions from
`
`both Mangrove and RPX, is critical here given the interest and right to cross-check
`
`and corroborate any such communications and the significant passage of time from
`
`when VirnetX first wanted to move for discovery nearly four years ago.
`
`Specifically, the four-year wait has introduced substantial risk that documents that
`
`may have once existed no longer exist, making it important to try to obtain such
`
`documents from both Mangrove and RPX, and to obtain information from
`
`documents that may no longer exist, or that was never memorialized in a document,
`
`through deposition.
`
`
`
`14
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`

`
`
`Case No. IPR2015-01047
`
`In an attempt to streamline discovery, VirnetX has made several concessions.
`
`For instance, VirnetX’s motion does not seek any interrogatories. Specifically,
`
`interrogatories would likely result in delays as disputes are likely to arise over any
`
`answers submitted by Mangrove and/or RPX. VirnetX’s requested depositions
`
`allow for the similar, albeit more trustworthy, information to be obtained in a more
`
`efficient manner. VirnetX believes that depositions are a critical and essential
`
`element to any discovery given the unique circumstances of this case.5
`
`IV. Conclusion
`Based on the above, VirnetX respectfully requests that the Board grant this
`
`motion for additional discovery.
`
`Dated: September 27, 2019
`
`Respectfully submitted,
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Registration No. 46,508
`
`Counsel for VirnetX Inc.
`
`
`
`
`5 Prior to filing this motion, VirnetX conferred with Mangrove (and the other
`
`petitioners) in an effort to reach an agreement on some of the requested discovery.
`
`After the parties were unable to reach an agreement, VirnetX proposed to continue
`
`the discussion after Mangrove had an opportunity to review VirnetX’s present
`
`motion. If the parties are able to agree on at least a subset of the requested discovery,
`
`they will inform the Board accordingly.
`
`
`
`15
`
`

`

`
`
`
`
`
`Appendix A
`Appendix A
`
`

`

`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 Requests for Production From
`Petitioner The Mangrove Partners Master Fund, Ltd.
`
`
`
`
`
`
`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.
`
`

`

`Patent Owner requests that Petitioner The Mangrove Partners Master Fund,
`
`Ltd. respond and produce the following documents and things.
`
`INSTRUCTIONS
`
`In responding to and producing documents and things responsive to these
`
`requests, please comply with the instructions in the Office Patent Trial Practice
`
`Guide.
`
`1.
`
`Please timely amend your responses if you learn that your response is
`
`incomplete or additional responsive information is found.
`
`2.
`
`All documents must be produced as they are kept in the usual course of
`
`business, in the files or containers in which the responsive documents are
`
`maintained, and in the order within each file or container in which such documents
`
`are maintained; or all documents shall be organized and labeled to correspond with
`
`the requests below.
`
`3.
`
`Identify any responsive documents and things you are aware of but cannot
`
`produce because they have been lost or destroyed or are no longer in your possession
`
`and the reason you cannot produce them.
`
`4.
`
`If, in answering these requests, you encounter any ambiguities when
`
`construing a request, instruction, or definition, your response shall set forth the
`
`matter deemed ambiguous and the construction used in responding.
`
`5.
`
`For any document or thing withheld based upon a claim of privilege, please
`
`
`
`1
`
`

`

`identify the ground of the asserted privilege and provide a privilege log according to
`
`the requirements of Federal Rule of Civil Procedure 26.
`
`DEFINITIONS
`
`1.
`
`The terms “document” and “thing” have the broadest meaning prescribed in
`
`Federal Rule of Civil Procedure 34, including ESI and any physical specimen or
`
`tangible item, in your possession, custody, or control.
`
`2.
`
`“Communications” refers to all conversations, agreements, inquiries, or
`
`replies, whether in person, by telephone, in writing, or by means of electronic
`
`transmittal devices, and includes, but is not limited to, all correspondence, emails,
`
`recordings, transmittal slips, memoranda, telephone communications, voice
`
`messages, or notes.
`
`3.
`
`“Mangrove Partners” includes The Mangrove Partners Master Fund, Ltd. and
`
`all affiliated people and entities, including Mangrove Partners, The Mangrove
`
`Partners Fund, L.P., The Mangrove Partners Fund (Cayman), Ltd., Mangrove
`
`Capital, any of their present and former employees, representatives, consultants,
`
`contractors, attorneys, agents, and all other persons or entities acting or purporting
`
`to act on behalf of any of the foregoing, such as Nathaniel August, Ward Dietrich,
`
`Jeffrey Kalicka, Brian Steck, Philp Lee, David Bree, and Kevin Phillip.
`
`4.
`
`“RPX” includes RPX Corporation, any of its present and former employees,
`
`representatives, consultants, contractors, attorneys, agents, and all other persons or
`
`
`
`2
`
`

`

`entities acting or purporting to act on behalf of any of the foregoing.
`
`5.
`
`“VirnetX patents” refers to any patent assigned to VirnetX Inc., including U.S.
`
`Patent No. 6,502,135, U.S. Patent No. 7,490,151, as well as any references to patents
`
`associated with VirnetX generally.
`
`6.
`
`“Apple Inc.” means Apple Inc., any of its present and former employees,
`
`representatives, consultants, contractors, attorneys, agents, and all other persons or
`
`entities acting or purporting to act on behalf of any of the foregoing.
`
`7.
`
`“Concerning” means in any way, directly or indirectly, regarding,
`
`considering, constituting, comprising, covering, defining, describing, involving,
`
`underlying, modifying, amending, confirming, mentioning, endorsing, recording,
`
`evidencing, pertaining to, referring to, reflecting, relating to, representing,
`
`supporting, qualifying, terminating, revoking, canceling.
`
`DOCUMENTS AND THINGS REQUESTED
`
`REQUEST FOR PRODUCTION NO. 1
`
`Communications, documents, or things concerning RPX and VirnetX or
`
`VirnetX patents, including communications between Mangrove Partners and RPX,
`
`or any documents or things relating to such communications, concerning VirnetX or
`
`VirnetX patents.
`
`
`
`
`
`3
`
`

`

`REQUEST FOR PRODUCTION NO. 2
`
`Communications, documents, or things concerning RPX and patent office
`
`proceedings, including communications between Mangrove Partners and RPX, or
`
`any documents or things concerning such communications, concerning patent office
`
`proceedings, such as any agreements or discussions between RPX and Mangrove
`
`Partners with respect to patent office proceedings, such as IPR2015-01046 or
`
`IPR2015-01047, prior art, filing, funding, compensation, and/or preparation of any
`
`papers.
`
`
`
`REQUEST FOR PRODUCTION NO. 3
`
`Communications, documents, or things, concerning Mangrove Partners’
`
`acquisition of RPX stock, including communications, documents, or things
`
`concerning Mangrove Partners’ reasons for acquiring RPX stock and any underlying
`
`agreements surrounding Mangrove Partners’ acquisition of RPX stock.
`
`
`
`REQUEST FOR PRODUCTION NO. 4
`
`Communications, documents, or things, relating to Mangrove Partners’
`
`decision to pursue and initiate IPR2015-01046 and IPR2015-01047.
`
`
`
`4
`
`

`

`
`
`
`
`
`Appendix B
`Appendix B
`
`

`

`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 NOTICE OF DEPOSITION OF
`NATHANIEL AUGUST
`
`
`
`
`
`
`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 37 C.F.R. § 42.53, Patent Owner VirnetX Inc. hereby provides
`
`notice that it will take the deposition, upon oral examination, under oath, of Mr.
`
`Nathaniel August at a date, time, and location to be agreed upon, but is to be
`
`completed no later than November 8, 2019. The deposition wil

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