`
`Filed: October 4, 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 Nos. IPR2015-01046,1 -010472
`U.S. Patent Nos. 6,502,135 & 7,490,151
`
`––––––––––––––––––
`
`PETITIONER MANGROVE’S RESPONSES TO
`PATENT OWNER’S REQUESTS FOR PRODUCTION FROM
`THE MANGROVE PARTNERS MASTER FUND, LTD.
`
`
`
`1 Apple Inc., who filed a petition in IPR2016-00062, has been joined as a Petitioner
`in IPR2015-01046.
`
` Apple Inc. and Black Swamp IP, LLC, which filed a petitions in IPR2016-00063
`and IPR2016-00167, respectively, have been joined as Petitioners in IPR2015-
`01047.
`
` 2
`
`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 1048, p. Cover
`
`
`
`IPR2015-01046
`
`
`
`U.S. Patent No. 6,502,135
`
`Patent Owner VirnetX Inc.’s (“VirnetX”) Requests for Production (“RFP”)
`
`of Petitioner The Mangrove Partners Master Fund, Ltd. (“Mangrove”) include four
`
`separate requests. Paper 81 (“Mot.”), Appx. C at 1. As explained in Petitioners’
`
`concurrently filed Partial Opposition to VirnetX’s motion, Petitioner Mangrove
`
`responds as follows.
`
`VIRNETX’S MANGROVE RFP 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. (Mot. Appx. A at 3.)
`
`MANGROVE’S RESPONSE TO MANGROVE RFP NO. 1
`
`Petitioner Mangrove objects to this RFP for lacking clarity as to whether it
`
`should be read “RPX and (VirnetX or VirnetX patents)” or “(RPX and VirnetX) or
`
`VirnetX Patents.” See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-
`
`00001, Paper 26 at 6–7 (PTAB Mar. 5, 2013) (“Garmin”) (Factor 4). For the
`
`purposes of responding to this RFP, and in light of the Federal Circuit’s mandate,
`
`Petitioner Mangrove presumes the former interpretation, i.e., “… RPX and
`
`(VirnetX or VirnetX patents) ….” Petitioner Mangrove further objects to this RFP
`
`as overbroad and unduly burdensome for requesting the production of
`
`communications, documents, or things dated on or after the date of institution in
`
`1
`
`
`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 1048, page 1
`
`
`
`IPR2015-01046
`
`U.S. Patent No. 6,502,135
`
`this proceeding, i.e., October 7, 2015. See Garmin at 6–7 (Factors 1 & 5); Power
`
`Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306,
`
`1314–15 (Fed. Cir. 2019) (“The focus of § 315(b) is on institution.”); Wi-Fi One,
`
`LLC v. Broadcom Corp., 878 F.3d 1364, 1373 (Fed. Cir. 2018) (en banc) (“[T]he
`
`time-bar determination may be decided fully and finally at the institution stage.”).
`
`Subject to the foregoing objection(s), Petitioner Mangrove has undertaken a
`
`reasonable search for communications, documents, or things that existed prior to
`
`October 7, 2015, and located no responsive 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.
`
`VIRNETX’S MANGROVE RFP 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. (Mot. Appx. A at 4.)
`
`2
`
`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 1048, page 2
`
`
`
`IPR2015-01046
`
`
`
`U.S. Patent No. 6,502,135
`
`MANGROVE’S RESPONSE TO MANGROVE RFP NO. 2
`
`Petitioner Mangrove objects to this RFP as overbroad and unduly
`
`burdensome for requesting the production of communications, documents, or
`
`things dated on or after the date of institution in this proceeding. See Garmin at 6–
`
`7 (Factors 1 & 5); Power Integrations, 926 F.3d at 1314–15; Wi-Fi One, 878 F.3d
`
`at 1373. Petitioner Mangrove further objects to this RFP as overbroad and unduly
`
`burdensome for requesting production of “[c]ommunications, documents, or things
`
`concerning RPX and patent office proceedings” that are not “communications
`
`between Mangrove Partners and RPX, or any documents or things concerning such
`
`communications, concerning patent office proceedings ….” The former language
`
`would encompass, for example, purely internal-to-Mangrove documents describing
`
`RPX’s business model that mention post-grant proceedings generically, which
`
`would not be relevant to show any relationship between Mangrove and RPX.
`
`Subject to the foregoing objection(s), Petitioner Mangrove has undertaken a
`
`reasonable search for communications, documents, or things that existed prior to
`
`October 7, 2015, and located no responsive 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,
`
`3
`
`
`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 1048, page 3
`
`
`
`IPR2015-01046
`
`
`
`U.S. Patent No. 6,502,135
`
`such as IPR2015-01046 or IPR2015-01047, prior art, filing, funding,
`
`compensation, and/or preparation of any papers.
`
`VIRNETX’S MANGROVE RFP 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.
`
`(Mot. Appx. A at 4.)
`
`MANGROVE’S RESPONSE TO MANGROVE RFP NO. 3
`
`Petitioner Mangrove objects to this RFP as overbroad and unduly
`
`burdensome for requesting the production of communications, documents, or
`
`things dated on or after the date of institution in this proceeding. See Garmin at 6–
`
`7 (Factors 1 & 5); Power Integrations, 926 F.3d at 1314–15; Wi-Fi One, 878 F.3d
`
`at 1373. Petitioner Mangrove further objects to this RFP as overbroad and unduly
`
`burdensome for requesting the production of all “[c]ommunications, documents, or
`
`things, concerning Mangrove Partners’ acquisition of RPX stock,” rather than
`
`“[c]ommunications, documents, or things” sufficient to show “Mangrove Partners’
`
`reasons for acquiring RPX stock and any underlying agreements surrounding
`
`Mangrove Partners’ acquisition of RPX stock.” See Garmin at 6–7 (Factor 5). The
`
`4
`
`
`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 1048, page 4
`
`
`
`IPR2015-01046
`
`
`
`U.S. Patent No. 6,502,135
`
`former language would encompass, for example, needlessly duplicative documents
`
`which are not relevant to show any relationship between Mangrove and RPX.
`
`Subject to the foregoing objection(s) and with respect to RPX stock that was
`
`acquired by Mangrove Partners prior to October 7, 2015, Petitioner Mangrove has
`
`undertaken a reasonable search and has produced or identified communications,
`
`documents, or things sufficient to show Mangrove Partners’ reasons for acquiring
`
`that RPX stock. See Ex. 1049; Ex. 1051; Ex. 1052; Ex. 1055; Ex. 1056; IPR2015-
`
`01046, Ex. 2058; IPR2015-01047, Ex. 2055. Mangrove Partners was a passive
`
`investor in RPX, had acquired its RPX stock via public trades, and had entered no
`
`agreements with RPX regarding its acquisition of RPX stock. See Ex. 1051, 2–3;
`
`Ex. 1052.
`
`VIRNETX’S MANGROVE RFP NO. 4
`
`Communications, documents, or things, relating to Mangrove Partners’
`
`decision to pursue and initiate IPR2015-01046 and IPR2015-01047. (Mot. Appx. A
`
`at 4.)
`
`MANGROVE’S RESPONSE TO MANGROVE RFP NO. 4
`
`Petitioner Mangrove objects to this RFP as overbroad and unduly
`
`burdensome for requesting the production of all “[c]ommunications, documents, or
`
`things, relating to Mangrove Partners’ decision to pursue and initiate IPR2015-
`
`01046 and IPR2015-01047,” rather than “[c]ommunications, documents, or things,
`
`5
`
`
`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 1048, page 5
`
`
`
`IPR2015-01046
`
`
`
`U.S. Patent No. 6,502,135
`
`relating to” both RPX and “Mangrove Partners’ decision to pursue and initiate
`
`IPR2015-01046 and IPR2015-01047.” See Garmin at 6–7 (Factor 5). The breadth
`
`of this RFP is unduly burdensome due to VirnetX’s threat of separate litigation
`
`against Mangrove regarding the filing of these IPRs (see Paper 9, 12–15 (citing Ex.
`
`2021)), and also conflicts with VirnetX’s representation that its requests would
`
`“narrowly focus on the relationship between Mangrove and RPX” (Mot. 6).
`
`Subject to the foregoing objection(s), Petitioner Mangrove has undertaken a
`
`reasonable search for communications, documents, or things that existed prior to
`
`October 7, 2015, and has located no responsive communications, documents, or
`
`things, relating to both RPX and Mangrove Partners’ decision to pursue and initiate
`
`IPR2015-01046 and IPR2015-01047.
`
`Dated: October 4, 2019
`
`Respectfully Submitted,
`
`/James T. Bailey/
`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
`Attorney for Petitioner Mangrove
`
`6
`
`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 1048, page 6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
